Can trademarks or trade names be used in patent claims?
While trademarks or trade names can appear in patent claims, their use to identify or describe a particular material or product generally renders the claim indefinite under 35 U.S.C. 112(b). According to MPEP 2173.05(u):
“If the trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of the 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.”
This is because trademarks identify the source of goods, not the goods themselves. The scope of the claim becomes uncertain since a trademark cannot properly describe any particular material or product. If a trademark appears in a claim but is not intended as a limitation, it may still cause confusion and lead to a rejection under 35 U.S.C. 112(b).
To learn more: