This article is a reminder for patent attorneys and in-house counsel who manage IP. When you are drafting a patent application or responding to an office action, are you mindful of your client’s trademarks? If not, read on. Using your client’s trademark in your work might hurt your client’s trademark rights.
In the 1930’s the U.S. Supreme Court decided a trademark dispute between Kellogg’s and Nabisco over the trademark SHREDDED WHEAT. Nabisco claimed that it owned the mark, and that Kellogg’s was infringing. Nabisco lost because it could not establish that it used the designation SHREDDED WHEAT as a trademark. Among other things, Nabisco had obtained several patents for the technology used to make the cereal and, unfortunately for Nabisco, the patents used the word “shredded” to describe the invention. The Court cited the patents as evidence that the name did not function as a trademark.
Nabisco’s patent lawyers are not the only ones to who have damaged their client’s trademarks by using them descriptively in patent filings. More recent examples exist in the case law and in everyday practice. When you are pursuing a patent for a client, make sure you know what trademark your client uses or wants to use and avoid using any portion of the mark to describe the invention.