TAKEAWAY: While trademarks offer a useful shorthand to refer to well-known goods, patent practitioners should recognize the pitfalls of referencing trademarks in patent claims.

While complementary, patents and trademarks offer distinct IP protection. Utility and design patents protect functional and aesthetic aspects, respectively, of a product. Patent claims must particularly point out and distinctly claim the subject matter claimed in order to inform the public of the boundaries of protected subject matter. Trademarks and trade names are associated with the brand under which various products may be identified. Features of any given product may change while being represented by the same trademark or trade name.

Trademarks can immediately evoke specific product features, but incorporating trademarks in patent claims risk rendering the claims indefinite. The presence of a trademark or trade name in a patent claim is not, per se, improper under U.S. patent law (specifically 35 U.S.C. §112(b) or pre-AIA 35 U.S.C. §112, second paragraph). But USPTO guidelines explain that using trademarks and trade names as limitations to identify or describe a particular material or product is improper; see M.P.E.P. 2173.05(u).

There are few court decisions providing examples of permissible uses of trademarks in claims. In a 2007 district court case, PolyVision Corp. v. Smart Technol. Inc. (501 F. Supp.2d 1042 (W.D. Mich. 2007)), the court held that using the trademark Windows™ did not render the claims indefinite. The court referred to guidance from the Federal Circuit that “claims are generally construed so as to sustain their validity,” and determined that the claims at issue could be construed as limited to Microsoft Windows Version 3.0, the most recent version of Windows™ software and the only example described in the specification. Still, the patentee was warned that Windows™ “includes a number of programs that were not known or released until after [the patent application was filed] . . . [and patentee] may not claim the benefit of those programs.”

There are more examples of improper uses of trademarks. In a 2021 post grant review (PGR) proceeding Galderma S.A. v. Medy-Tox, Inc. (PGR2019-00062), the USPTO Patent Trial and Appeal Board (PTAB) commented on a patentee’s motion to amend the claims to include the trademark BOTOX®. Galderma filed a petition challenging the validity of Medy-Tox’s patent US 10,143,728, in part arguing insufficient written description support for the claimed “animal-free botulinum composition” exhibiting a “longer lasting effect.” During the trial proceeding, Medy-Tox filed a motion that sought to cancel the claims in favor of substitute claims adding BOTOX® to the independent claim. The PTAB issued a rare sua sponte order giving notice that using a trademark to identify a particular material or product provided potential grounds for finding the claims indefinite. The PTAB ultimately denied Medy-Tox’s motion to amend on grounds that the proposed substitute claims did not satisfy written description and enablement requirements, without addressing the trademark. This case is currently under appeal before the Federal Circuit.

When drafting claims, patent practitioners should determine whether using a trademark or trade name is necessary, and if so, whether its meaning is sufficiently definite to inform the public the bounds of the claim. Even in cases where a trademark or trade name appears to have a specific, well known meaning, it may be helpful to consider including a definition in the patent specification and/or claim the subject matter in a different way as a back-up position.