What is the impact of using a trademark as a generic term in a patent claim?

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 a trademark as a generic term in a patent claim can have significant negative consequences:

1. It may render the claim indefinite under 35 U.S.C. 112(b).
2. It constitutes improper use of the trademark.
3. It can potentially lead to the loss of trademark rights.

The MPEP 2173.05(u) states:

“In fact, the value of a trademark would be lost to the extent that it became the generic name of a product, rather than used as an identification of a source or origin of a product. Thus, the use of a trademark or trade name in a claim to describe a material or product would not only render a claim indefinite, but would also constitute an improper use of the trademark or trade name.”

This guidance emphasizes the importance of avoiding the use of trademarks as generic terms in patent claims to maintain both claim clarity and trademark protection.