What is the difference between a trademark and a generic term in patent claims?

The distinction between trademarks and generic terms is crucial in patent claims:

• Trademark: Identifies the source of goods, not the goods themselves.
• Generic term: Describes the goods or materials directly.

The MPEP 2173.05(u) explains:

“It is important to recognize that a trademark or trade name is used to identify a source of goods, and is not the name of the goods themselves. Thus a trademark or trade name does not define or describe the goods associated with the trademark or trade name.”

Using a generic term instead of a trademark in a claim can help avoid indefiniteness issues. However, when replacing a trademark with a generic term, the examiner must ensure there’s sufficient support in the application for the generic term, as noted in MPEP § 2163, subsection II.A.3(b).

To learn more:

• trademarks
• generic terms
• patent claims
• claim clarity
• indefiniteness