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.

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

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.

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.

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.