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

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

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.