608.01(v)   Trademarks and Trade Names [R-11.2013]

The expressions "trademarks" and "trade names" as used below have the following meanings:

Trademark: a word, letter, symbol, or device adopted by one manufacturer or merchant and used to identify and distinguish his or her product from those of others. It is a proprietary word, letter, symbol, or device pointing distinctly to the product of one producer.

Trade Names: a nonproprietary name by which an article or product is known and called among traders or workers in the art, although it may not be so known by the public, generally. Trade names do not point to the product of one producer, but they identify a single article or product irrespective of producer.

I.   PERMISSIBLE USE IN PATENT APPLICATIONS

A trademark or trade name may be used in a patent application to identify an article or product if:

    • (A) its meaning is established by an accompanying definition in the specification which is sufficiently descriptive, enabling, precise and definite such that a claim including the trademark or trade name complies with the requirements of 35 U.S.C. 112, or
    • (B) its meaning is well-known to one skilled in the relevant art and is satisfactorily defined in the literature.

See, e.g., United States Gypsum Co. v. National Gypsum Co., 74 F3d 1209, ____ n.6, 37 USPQ2d 1388, 1392 n. 6 (Fed. Cir. 1996). Condition (A) or (B) must be met at the time of filing of the complete application.

The relationship between a trademark or trade name and the product it identifies is sometimes indefinite, uncertain, and arbitrary. The formula or characteristics of the product may change from time to time and yet it may continue to be sold under the same trademark or trade name In patent specifications, every element or ingredient of the product should be set forth in positive, exact, intelligible language, so that there will be no uncertainty as to what is meant. Arbitrary trademarks which are liable to mean different things at the pleasure of manufacturers do not constitute such language. Ex Parte Kattwinkle, 12 USPQ 11 (Bd. App. 1931).

If the product to which a trademark refers is set forth in such language that its identity is clear, examiners are authorized to permit the use of the trademark if it is distinguished from common descriptive nouns by capitalization. See subsection II, below. If a trademark or trade name has a fixed and definite meaning, it constitutes sufficient identification unless some physical or chemical characteristic of the article or material is involved in the invention such that further description is necessary to comply with the requirements of 35 U.S.C. 112. In that event, as also in those cases where the trademark or trade name has no fixed and definite meaning, identification by scientific or other explanatory language is necessary. See, e.g., United States Gypsum Co. v. National Gypsum Co., 74 F3d 1209, ____ n.6, 37 USPQ2d 1388, 1392 n. 6 (Fed. Cir. 1996); In re Gebauer-Fuelnegg, 121 F.2d 505, 50 USPQ 125 (CCPA 1941).

The matter of sufficiency of disclosure must be decided on an individual case-by-case basis. In re Metcalfe, 410 F.2d 1378, 161 USPQ 789 (CCPA 1969).

Where the identification of a trademark or trade name is introduced by amendment, it must be restricted to the characteristics of the product known at the time the application was filed to avoid any question of new matter.

If proper identification of the product sold under a trademark, or a product referred to only by a trade name, is omitted from the specification and such identification is deemed necessary under the principles set forth above, the examiner should hold the disclosure insufficient and reject on the ground of insufficient disclosure any claims based on the identification of the product merely by trademark or trade name. If the product cannot be otherwise defined, an amendment defining the process of its manufacture may be permitted unless such amendment would result in the introduction of new matter. Such amendments must be supported by satisfactory showings establishing that the specific nature or process of manufacture of the product as set forth in the amendment was known at the time of filing of the application.

II.   PROPRIETARY NATURE OF TRADEMARKS

Although the use of trademarks having definite meanings is permissible in patent applications, the proprietary nature of the marks should be respected. Trademarks should be identified by capitalizing each letter of the mark (in the case of word or letter marks) or otherwise indicating the description of the mark (in the case of marks in the form of a symbol or device or other nontextual form). Every effort should be made to prevent their use in any manner which might adversely affect their validity as trademarks.

Examiners may conduct a trademark search by using the Trademark Electronic Search System (TESS) which is available on the USPTO Web site to determine whether an apparent or identified trademark in the patent application is a registered trademark or to what particular goods a registered trademark applies.

Form paragraph 6.20 may be used to inform applicant of the proprietary nature of trademarks.

¶ 6.20    Trademarks and Their Use

The use of the trademark [1] has been noted in this application. It should be capitalized wherever it appears and be accompanied by the generic terminology.

Although the use of trademarks is permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as trademarks.

Examiner Note:

1. Capitalize each letter of the word in the bracket or include a proper trademark symbol, such as ™ or ® following the word.

2. Examiners may conduct a trademark search by using the Trademark Electronic Search System (TESS) which is available on the USPTO website to determine whether a trademark identified in the patent application is a registered trademark or not.

The examiner should not permit the use of language such as "the product X (a descriptive name) commonly known as Y (trademark)" since such language does not bring out the fact that the latter is a trademark. Language such as "the product X (a descriptive name) sold under the trademark Y" is permissible.

The use of a trademark in the title of an application should be avoided as well as the use of a trademark coupled with the word "type", e.g., "Band-Aid type bandage."

In the event that the proprietary trademark is a "symbol or device" depicted in a drawing, either the brief description of the drawing or the detailed description of the drawing should specify that the "symbol or device" is a registered trademark of Company X. The owner of a trademark may be identified in the specification.

Technology Center Directors should reply to all trademark misuse complaint letters and forward a copy to the Office of the Deputy Commissioner for Patent Examination Policy. Where a letter demonstrates a trademark misuse in a patent application publication, the Office should, where the application is still pending, ensure that the trademark is replaced by appropriate generic terminology.