The Velcro trademark question deals with the rules about including trademarked names in an application. Trademarks are not allowed in claims (see 706.03(d)) but they ARE allowed in the specification (see 608.01(v)).
A claim in a pending application was amended to define “a VELCRO fastener” as one of the elements. The specification describes the use of a VELCRO fastener in the invention, but doesn’t describe the structure of such a fastener. The examiner rejected the application because of the usage. How should the examiner address the claim? Among the answer choices are:
(A) maintain the VELCRO rejection because sufficient structure is not recited
(B) maintain the rejection because VELCRO is a recognized prior art fastener, and this fastener would be obvious to replace with the current fastener
(C) do not object/reject
(D) object to the trademark for being a trademark and request the applicant to modify the specification to include further structure
(E) (don’t remember)
The answer should be (A) because trademarks used in claims are indefinite under 112 paragraph 2, pursuant to section 706.03(d) of the MPEP. Thus, anytime a Velcro trademark is used in a claim, it fails to recite sufficient structure and should be rejected. The applicant is relying solely on the trademark to define the element, without reciting any specific structural limitations.
*Note: Test takers report that answer choices change, so know the rule not the letter for the exam.