What are the potential issues with using trademarks in patent claims?

Using trademarks or trade names in patent claims can lead to several issues:

• Indefiniteness: The claim scope becomes uncertain since trademarks identify the source of goods, not the goods themselves.
• Improper use: Using a trademark to describe a material or product in a claim is considered improper use of the trademark.
• Potential rejection: Claims with trademarks used as limitations may be rejected under 35 U.S.C. 112(b).

The MPEP 2173.05(u) states:

“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 guidance emphasizes the potential problems that can arise when trademarks are used in patent claims.

To learn more:

• trademark issues
• patent claim indefiniteness
• improper trademark use
• 35 U.S.C. 112(b)