Q) Velcro (MPEP 700, Trademarks in Claims)

by patentbar on December 13, 2007 · 28 comments

in Exam Questions

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)).

Fact Pattern

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.

1 drkyeNo Gravatar January 30, 2008 at 10:24 am

Small correction: With regards to the fact pattern above, I’m sure the examiner would have “rejected the claim” rather than “rejected the application”.

2 NightB4ExamNo Gravatar June 5, 2008 at 6:47 am

Also see MPEP 2173.05(u)

3 dgspambotNo Gravatar July 31, 2008 at 8:17 am

I agree with the answer, but disagree with the explanation. The use of a trademark does not result in an automatic rejection. Rather, the issue is that a trademarked item might change without notice (Tide detergent may change its formulation). So a claim that says:
Claim 5. The method of claim 1, wherein clothes are washed with Tide detergent. Would be rejected.
However:
Claim 5. The method of claim 1, wherein clothes are washed with a detergent such as Tide. Would not be rejected.

Agree? Disagree?

4 MattNo Gravatar September 23, 2010 at 10:47 pm

Disagree, since the use of “such as” is considered indefinite per chapter 700.

5 giniNo Gravatar October 25, 2010 at 9:44 pm

I think a more appropriate distinction would be:

Unacceptable Claim: …using Jack Daniels.
v.
Acceptable Claim: using Jack Daniels 100 proof rye whiskey.

6 infantejNo Gravatar July 31, 2008 at 3:40 pm

I’m not sure I agree. Your example seems okay because the formula for Tide might change, but how would Velcro change?

7 dgspambotNo Gravatar July 31, 2008 at 10:00 pm

Velcro could legally and practically change in any way imaginable. A company has no obligation to assign a trademark name to a specific structure, compound, or article of manufacture. Whoever owns the trademark velcro could stop fashioning the “hooks” of polystyrene and begin using polyacrylate for example. The key to this exact question (apparently there are variations so watch out) is that the claim “doesn’t describe the structure of such a fastener”. In that case, the only description is the trademark name Velcro, which as discussed is not a static object. If the claim had mentioned velcro, but then gone ahead and described a specific structure, then it would not be rejected.

8 chrismcneitNo Gravatar August 6, 2008 at 8:14 pm

Dgspambot is partly correct; however, I do not believe:

“Claim 5. The method of claim 1, wherein clothes are washed with a detergent such as Tide. Would not be rejected.”

is correct.

796.03(d):
Claim [1] contains the trademark/trade name [2]. Where a 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 35 U.S.C. 112, second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe [3] and, accordingly, the identification/description is indefinite.

The example dgspambot uses is applicable to the specification. Here one needs to add info to make the trademark ref enabling.

That said, I think something more definite like “a phosphate based synthetic surfactant detergent, such as Tide” would be more appropriate for the specification.

9 chrismcneitNo Gravatar August 6, 2008 at 8:27 pm

Perhaps I am incorrect:
Trademarks or Trade Names in a Claim MPEP 2173.05(u)

The presence of a trademark or trade name in a claim is not, per se, improper under 35 U.S.C. §112, second paragraph.
2100-29 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, second paragraph.

Still, I believe something like “a phosphate based synthetic surfactant detergent” is needed to make it definite.

10 dgspambotNo Gravatar August 7, 2008 at 8:13 pm

I’ll agree with you that my example is perhaps on the borderline of definite. The point remains that a claim can contain a trademark, it just can’t be “integral” to describing the structure or composition or method of the claim. In other words you should be able to take it out without losing meaning. In which case, why is there in the first place:)

11 chrismcneitNo Gravatar August 7, 2008 at 8:48 pm

True. I think we have the issue under control now and will be prepared when and if we see it on the exam…

12 matt30No Gravatar May 10, 2009 at 11:47 am

I got this question yesterday on my exam… I chose rejected under 112 second paragraph.

13 ChadNo Gravatar October 24, 2009 at 12:00 pm

Re #6 above – Reciting “a detergent such as TIDE” in the claims may not proper.

2173.05(d) Exemplary Claim Language (“for example,” “such as”) [R-1]

Description of examples or preferences is properly set forth in the specification rather than the claims. If stated in the claims, examples and preferences >may< lead to confusion over the intended scope of a claim. In those instances where it is not clear whether the claimed narrower range is a limitation, a rejection under 35 U.S.C. 112, second paragraph should be made.

14 GoJacketsNo Gravatar December 16, 2009 at 11:15 am

Let’s run this up the flag pole and see who salutes it:

Assume Shell gasoline is, as of today, composed of chemicals A, B, and C. Assume further that today I claim a new type of engine that runs on “Shell Gasoline,” and that using trademarks in claims is OK (again, just for explanation’s sake).

What I’ve really invented is an engine that runs on a gasoline made of A, B, and C, and that’s all I should be entitled to in a patent. But I haven’t claimed an engine that runs on ABC gasoline, I’ve claimed an engine that runs on “Shell” gasoline. So what if, two years from now, Shell changes their formula to A, B, C, and D. Assuming my engine also runs on the new ABCD Shell Gasoline, I will have become entitled to a broader invention than I actually conceived of by virtue of Shell changing its product. When I filed my app, all I had invented was a machine that ran on ABC Shell gasoline, but now my invention covers other types of gas because I described it in the claims as “Shell Gasoline,” which would theoretically cover ABC Shell gasoline and also ABCD gasoline.

I think that’s why they don’t let you use trademarks in claims. They only identify the producer and not the particular product. The producer can change the product, so when you claim “Shell gasoline,” it is indefinite under 112, 2nd as to what you are claiming.

15 AnExaminerNo Gravatar January 13, 2010 at 12:06 am

For the patent bar exam if the question deals with trademarks or trade names in the claim the answer will always be that it is indefinite under 112 2nd and citing to 2173.05(d).

That being said, in practice it is more nuanced. Claims are considered to be definite, as required by the second paragraph of 35 U.S.C. § 112, when they define the metes and bounds of a claimed invention with a reasonable degree of precision and particularity. See In re Venezia, 530 F.2d 956,958, 189 USPQ 149, 151 (CCPA 1976). The issue then becomes whether a PHOSITA would have understood, as of the time of the filing of the application, what the scope of the claim was and what the trademark stood for.

For example, say you have the following claim:
A method comprising: sending an email to a computer, wherein said computer is running Windows. (poorly drafted just to show point).

This is clearly indefinite because there are a large number of goods that sell under the umbrella of the Windows trademark (95, 98, Me, XP, Vista, 7) and likely includes future unknown and undefined versions of Windows.

Now what distingishes good practitioners/examiners is how they argue the harder question of when the claim is for Windows 7.

16 RodneyNo Gravatar January 25, 2011 at 5:19 pm

I got this question today on my exam. I looked up the correct rejection in the MPEP, since its a fast look up. (MPEP 2173.05(u) )

17 maggieNo Gravatar October 23, 2011 at 8:53 pm

2173.05(u) Trademarks or Trade Names in a Claim

The presence of a trademark or trade name in a claim is not, per se, improper under 35 U.S.C. 112, second paragraph, but the claim should be carefully analyzed to determine how the mark or name is used in the claim. It is important to recognize that a trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. See definitions of trademark and trade name in MPEP § 608.01(v). A list of some trademarks is found in Appendix I.

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, second paragraph. Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. In fact, the value of a trademark would be lost to the extent that it became descriptive 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 identify or 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.

If a trademark or trade name appears in a claim and is not intended as a limitation in the claim, the question of why it is in the claim should be addressed. Does its presence in the claim cause confusion as to the scope of the claim? If so, the claim should be rejected under 35 U.S.C. 112, second paragraph.

18 VeNo Gravatar January 27, 2011 at 7:09 pm

Got the Velcro in claims one today. Went with the reject the claim based on 112

19 maggieNo Gravatar October 23, 2011 at 8:51 pm

Thx

20 DannyNo Gravatar September 15, 2011 at 12:54 pm

For clarities sake, it is clear that trademarks in a claim are not per se rejected. It must be determined exactly what purpose the trademark is being used for as per 2173.05(u)

21 passedatlastNo Gravatar June 19, 2012 at 5:31 pm

Got this 6/19/12.

22 IndiJonesNo Gravatar June 30, 2012 at 1:39 am

got this 6/29/12.

23 Mike01ciNo Gravatar August 8, 2012 at 1:36 pm

Got this 8/7/12

24 mimiNo Gravatar August 29, 2012 at 11:02 pm

How about a specific item with trademark in claim?
For example, like a semi onducter chip having a specific number with Samsung.
Is it still rejected under 112?

25 mimiNo Gravatar August 29, 2012 at 11:03 pm

How about a specific item with trademark in claim?
For example, like a semi conducter chip having a specific number with Samsung.
Is it still rejected under 112?

26 TakingittomorrowNo Gravatar September 23, 2012 at 6:33 pm

Got this question 9/21/12

27 TakingittomorrowNo Gravatar January 10, 2013 at 12:18 am

Can Velcro be used in a claim? Under 2173(u) in the MPEP, it says it is not per se improper. Also, VELCRO appears in appendix I or the MPEP. So, should your answers to the questions say that the rejection can be over come? I think this questions is NOT a reject under 112 P2. Rather, the rejection can be overcome, if the definition in appendix I is used. Agree?

28 BfusionNo Gravatar January 10, 2013 at 6:04 am

Good question.

So, 706.03(d) says this:
¶ 7.35.01 Trademark or Trade Name as a Limitation in the Claim

Claim [1] contains the trademark/trade name [2]. Where a 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 35 U.S.C. 112, second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe [3] and, accordingly, the identification/description is indefinite.

I know what chapter 2173(u) says…but, based on the fact pattern of the question at hand:
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
So what we have is a claim, where a fastner is claimed, but no sufficient structure is given. All that’s mentioned is a “velcro fastner”. EVEN THOUGH velcro is in the appendix, when it comes to writing a claim, you still cannot use a tradmark name to describe the claim/invention.

Again, as chapter 2173 states: It is important to recognize that a trademark or trade name is used to identify a source of goods, and not the goods themselves.

Going back to our question at hand, in this claim, the trademark name was used to try and describe the good. Whoever wrote the claim was NOT using the trademark name to identify the source of a good….they were using it as an example of a TYPE of good (meaning, their fastner was similar to a velcro-type-fastener…this is identifying velcro as a a good.)

Hope that helps!

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