As a trademark attorney, one often hears businesspeople talk about domain names, trademarks, and trade names as if they were really the same thing. They are not. Each has different rules and different implications for your legal rights. Reviewing the summary below should help you distinguish which is which.

A trade name is the name used to register a business as a legal entity in the state where is operates. Usually this is done at the Secretary of State or the Department of Corporations, or a similar state-run agency. The trade name is also registered with the Internal Revenue Service for purposes of federal tax laws.

Your trade name is used on contracts and other legal documents where your legal business name is needed. For example, when the officer of a corporation signs an agreement, he signs it as “CFO of XYZ Corporation.” Anyone who wants to check the legal status of that legal entity can investigate XYZ Corporation on the records of its state. For that reason, contracts normally will state the party to the contract and include something like this: “A Delaware limited liability company” because that information allows someone to research the legal status of the business.

To search for someone’s trade name, try an Internet search for “[State name] business entity search”. Then use the government database to search for the trade name.

A trade name must be unique within the state where it is registered. But an identical name might be used in other states. And a very similar name could be used in the same state. That does not cause a problem because only the specific trade name—the precise legal entity name—is what matters in legal documents.

Companies may use their trade name—the legal entity that they operate through—as the public name of their business. But they don’t have to.

A trademark is a word or design that represents a source of goods or services in the minds of customers. A trademark is what we normally think of as a brand. A trademark can be registered at the United States Patent and Trademark Office and at the national trademark offices in countries where you do business. (Trademarks can be registered at the state level but that is rarely a wise choice.)

A trademark might be the same as the trade name of a company (that is, the name of its legal entity, but often a company will use a different word for its trademark. A carpenter might register a legal entity called Dave Anderson Carpentry, LLC. But on his work truck he uses the moniker “Dave’s Fix-it-all Carpentry.” The public sees Dave’s Fix-it-all Carpentry as the trademark for Mr. Anderson’s services. No one knows the trade name Dave Anderson Carpentry, LLC except his accountant. And that is fine. Because Dave’s Fix-it-all Carpentry is what the public sees as a representation of Mr. Anderson’s services, that is the trademark that he should register—it is the public-facing name of his business and the term that represents the goodwill of his business in the minds of his customers.

Sometimes businesses want to use a trade name—a legal entity name— that people will recognize. Perhaps they plan to sell multiple products or services, each under a different name. The trade name becomes the umbrella that ties multiple product names together in the minds of customers. In that situation, the trade name is also being also used as a trademark.

Consider a widely known example: Amazon, the giant online retailer. Most people know about Amazon. They also know where to find it, at amazon.com. But if you enter into contracts with Amazon, you will see that the “company” uses many different trade names (legal entities) depending on what it is doing. For example, you might sign a contract with Amazon Web Services, Inc., Amazon.com Auctions, Inc., Amazon.com Baby, Inc., Amazon Payments, Inc., Amazon Overseas Holdings, Inc., and many more. All of these are registered legal entities in the state of Washington or in other states where Amazon operates.  Yet all of these related legal entities are known to the public under the brand (the trademark) of Amazon. There is no need to protect Amazon.com Baby, Inc. as a trademark, although there may be reason to protect Amazon Baby if that phrase is presented to customers to represent some of the goods or services offered by the company.

A trademark is a word or design that represents a source of goods or services in the minds of customers. A trademark is what we normally think of as a brand. A trademark can be registered at the United States Patent and Trademark Office and at the national trademark offices in countries where you do business. (Trademarks can be registered at the state level but that is rarely a wise choice.)

A trademark might be the same as the trade name of a company (that is, the name of its legal entity, but often a company will use a different word for its trademark. A carpenter might register a legal entity called Dave Anderson Carpentry, LLC. But on his work truck he uses the moniker “Dave’s Fix-it-all Carpentry.” The public sees Dave’s Fix-it-all Carpentry as the trademark for Mr. Anderson’s services. No one knows the trade name Dave Anderson Carpentry, LLC except his accountant. And that is fine. Because Dave’s Fix-it-all Carpentry is what the public sees as a representation of Mr. Anderson’s services, that is the trademark that he should register—it is the public-facing name of his business and the term that represents the goodwill of his business in the minds of his customers.

Sometimes businesses want to use a trade name—a legal entity name— that people will recognize. Perhaps they plan to sell multiple products or services, each under a different name. The trade name becomes the umbrella that ties multiple product names together in the minds of customers. In that situation, the trade name is also being also used as a trademark.

Consider a widely known example: Amazon, the giant online retailer. Most people know about Amazon. They also know where to find it, at amazon.com. But if you enter into contracts with Amazon, you will see that the “company” uses many different trade names (legal entities) depending on what it is doing. For example, you might sign a contract with Amazon Web Services, Inc., Amazon.com Auctions, Inc., Amazon.com Baby, Inc., Amazon Payments, Inc., Amazon Overseas Holdings, Inc., and many more. All of these are registered legal entities in the state of Washington or in other states where Amazon operates.  Yet all of these related legal entities are known to the public under the brand (the trademark) of Amazon. There is no need to protect Amazon.com Baby, Inc. as a trademark, although there may be reason to protect Amazon Baby if that phrase is presented to customers to represent some of the goods or services offered by the company.

The short answer is “Usually quite a bit.” The longer answer involves the question, “How much is it worth,” because a “do-it-yourself” patent or one handled by an inexperienced patent attorney usually is not worth the fancy paper it’s printed on.

But you probably want some details.

The process of obtaining a patent involves several stages:

1. Research and analysis of the technology (including interviewing the inventor)
2. Writing the patent specification
3. Writing the claims (which define the legal rights granted by the patent)
4. Filing the application
5. Filing corresponding applications in foreign countries (or reserving the right to do so later)
6. Dealing with rejections (office actions) from the patent examiner
7. Receiving a Notice of Allowance
8. Considering strategy for continuation patents
9. Paying the Issue Fee
10. Receiving and checking the issued patent
11. Paying annuity fees to maintain the validity of the patent

If we focus on the first three steps, a skilled patent attorney will normally charge between $5,000 and $25,000 to research and prepare the patent application for filing. If an “average” could be given, it would be in the range of $9,000 to $ 15,000. Stand-alone patent attorneys will sometimes charge less, but they present significant risks because they usually lack docketing systems and may not be following the latest legal developments.  The cost depends on several factors, including:

1. The technology involved. Applications to protect mechanical devices are usually easier to prepare, unless your invention has very little innovation.  In that case, the patent attorney needs to be creative to find a way to protect your idea. Pharmaceutical patents require special knowledge, as do many other fields.  If you really need someone with a Ph.D (few do), expect to pay more.
2. How prepared you are. If you have good documentation of your invention, if you are concise in talking with your attorney, if you respond quickly and effectively to questions and to reviews of the patent application, then you will save money.
3. The size of your law firm. Larger law firms typically charge more because they simply have more overhead and more staff to assist with keeping track of things.  If you have a large patent portfolio, that may make sense. If you don’t, we obviously think small firms are more cost-effective.

The government fees associated with filing a patent application depends on the number of claims and the size of the entity that owns the patent.  Larger entities pay full price, small entities pay half price, and “micro” entities pay even less, but must meet a more challenging set of requirements to qualify. Typical fees for a small entity are about _______.

Dealing with rejections (office actions) can be as expensive as preparing the initial application, because office actions require significant time to analyze and prepare legal briefs.  Every patent application will receive at least one office action and it is not unusual to receive 2-4 of them.  An application that received no office actions was probably very poorly drafted because the claims are too narrow to be useful.  The cost of responding to each office action can be $ 1,500 to $ 4,500.

Once the patent is allowed, you have several weeks to pay the issue fee to the U.S. Patent and Trademark Office.  That fee is $ 960 (or $ 480 for a small entity).

The above information does not include the cost of protecting your patent in other countries, assigning the patent to new owners, extending deadlines to give more time for analysis by your attorney or your staff, or several other possible expenses.

Returning to what I said above, if you don’t use a skilled patent attorney, you are likely to save a lot of money and end up with a poorly done patent that looks nice on the wall but is worthless to your business.

A provisional patent is a patent application that acts as a “place holder” when you invent something new but are not ready to start the process of obtaining an issued patent.

A provisional patent is not examined by the U.S. Patent and Trademark Office. It merely reserves your right to claim legal ownership of the innovations that are disclosed in the provisional patent application.

When you file a provisional patent application, you start a statutory clock that runs for 12 months.  If you file a standard utility patent application during that twelve month period and claim “priority” to the provisional patent application, then the two are linked, and you can claim ownership of the innovations in the provisional application as part of your non-provisional utility patent application.

If you fail to file a utility patent application during the 12-month period, then everything in the provisional patent application is considered part of the public domain—you can no longer claim ownership of it in a utility patent application.

Why would someone file a provisional application if it is not examined and has a 12-month deadline to prepare another application (at additional cost)? There are several reasons:

1. A provisional application does not require claims. Claims are the formalistic legal terms at the end of a utility patent application that define the legal rights that the patent holder is trying to secure.  They are very difficult to prepare well.  If you are in a hurry, or uncertain how you want to approach the patenting process, then a provisional application is a way to start the process.
2. A provisional application is typically less expensive. Because it is not examined, the level of scrutiny and care needed for a provisional application is lower than a utility patent application. Avoiding time needed to prepare claims also reduces the cost of a provisional application.
3. Provisional applications are never published. If you never file a utility patent application, the contents of your provisional patent application remains confidential.  It does become part of the public domain in that you can’t claim legal rights in it—but others do not have the chance to research provisional applications.
4. Provisional applications are a convenient way to claim rights in a series of related innovations during a 12-month period, and then roll those up into a single utility patent application. For example, you might file a first provisional application related to a new technology, and then file a second provisional application 3 months later with additional things that you have learned or developed, a third provisional might be warranted a few months later.  In this way, you can secure the earliest date possible for each innovation—right after you develop it.  But then you can file a single utility patent application within 12 months of the first provisional application and claim priority to all of the provisional applications that you filed during the year.

A few years ago, provisional applications were treated differently. Sometimes people would file a brochure or a PowerPoint presentation, simply to make a record of their innovation, even if the details were sketchy. But when the United States switched to a First to File system under the America Invents Act, the importance of filing a well-done provisional application increased significantly.  This is because only the actual contents of the provisional are counted as your innovation, rather than the things that you invented but did not disclose (under previous laws, you could still claim protection on what you invented but had not filed a patent for).

Provisional patent application continue to play an important role in most patent portfolios, though the specific strategy depends on factors such as the size of your portfolio, the pace of your technical developments, your legal services budget, and the timing of your patent filings in multiple countries.

In 2014, the United States Supreme Court issued a seminal decision setting forth guidelines on how to ascertain patent eligibility.  In Alice Corp. v. CLS Bank Int’l, 134 S.Ct. 2347 (2014), the court instructed that one should first determine if the patent claims are directed to one of the three unpatentable categories: laws of nature, natural phenomena, and abstract ideas.  If so, then the second step of the analysis is to determine it the elements of each patent claim, both individually and as an ordered combination, transform the nature of the patent claim into a patent-eligible application.  This second step is a search for what the court calls an “inventive concept” sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.

The Alice decision is the guiding standard for assessing the patentability of software or business methods, both of which are viewed by the courts as abstract ideas.  Since abstract ideas alone are not patentable, the key test in assessing the patentability of software is determining whether the technology meets the second step of the Alice analysis: “inventive concept.”  The Supreme Court declared that the inventive concept requires something more than simply stating the abstract idea while adding the words “apply it” or “apply it with a computer.”  Not surprisingly, in the three years since the Alice decision the courts have rejected or invalidated nearly 70% of all software and business methods patents brought up for review.  The challenge for most patent owners is now convincing the courts or the United States Patent Office that there is something more or something especially inventive about the software.  The Alice decision is widely seen as a repudiation of many of the business method and vague software patents that had previously been allowed by the United States Patent Office.

At the end of that same year, the United States Court of Appeals for The Federal Circuit issued one of the few decisions post-Alice that upheld a software patent.  In DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), the Federal Circuit ruled a patent valid that was directed to generating a composite web page that combined visual elements of the host website with content from a third party vendor website.  The Federal Circuit’s analysis in DDR Holdings is instructive in how the courts may determine a software patent to be valid.  In the DDR Holdings decision, the court acknowledged that mathematical algorithms, including those executed on a generic computer, are abstract ideas.  The court pointed out that a common thread in cases where the software patent was invalidated was that the software patent claims were recited too broadly and generically to be considered sufficiently specific and meaningful applications of the underlying abstract ideas.  In deciding to uphold the patent at issue, the court noted that the software proposed a specific solution rooted in a particular technology rather than reciting the performance of some business practice known from the pre-Internet age along with the requirement to perform it on the Internet.  Finally, the court noted that the patent claims included additional features to ensure that the claims were not designed to monopolize an abstract idea.

In short, although the United States Supreme Court’s Alice decision significantly narrowed the range of potential software patents, it did not entirely foreclose the possibility of obtaining a software patent in all circumstances.  The Federal Circuit’s DDR Holdings decision set forth acceptable parameters for a properly drafted software patent application:

• The patent claims must be narrow and specifically directed to a meaningful application.
• The patent must address a specific problem in a particular technology.
• There must be additional features in the claims to avoid presenting a general claim to an abstract concept.

Following the 2014 ground-breaking Alice decision, the DDR Holdings decision, and other subsequent decisions based on this new precedent, patents relating to software and software applications have still been issued by the United States Patent Office. It is instructive to examine an example of such an issued patent.

On September 16, 2016, the Patent Office issued a patent titled “Gaming System Having Wagering Features Funded by Extra-Casino Activities” to Bally Gaming, Inc. (U.S. Pat. No. 9,443,389 (the “ ‘389 Patent.”))  This patent was carefully designed to adhere to the precedent of the Alice and DDR Holdings decisions.  Figure 2 of the ‘389 Patent shows a computer I/O system with a computer CPU, system memory, and general input/output mechanisms typical for software applications.  Figure 3 shows general parameters for a software solution involving online activities and internal and external computer networks.  The essence of the ‘389 Patent is that the casino uses a separate gambling fund sourced from activities outside of the casino to apply to the gambler’s in-casino account, mostly sourced from online gaming activities.  Under this patent disclosure, the gambler can participate in online gaming and have the credits from this activity transfer to his in-casino activity.  In this way, the gambler can maintain enthusiasm toward bonus games and jackpots and still enjoy mobility of applications.

The presentation of the claims in the ‘389 Patent exemplify the standards of the Alice and DDR Holdings decisions.  Claim 1 does not recite software per se.  Instead, the claim is directed to a “gaming system” comprising “a regulated gaming machine [ ] dedicated to playing a casino wagering game, … including a cabinet … and one or more electronic input devices coupled to the cabinet.”  The claim then recites “game-logic circuitry” that sets forth the parameters that are all accomplished through software application.  By careful drafting, the patent practitioner accomplished a software-type claim by emphasizing a physical device (the gaming machine), with narrow claims addressing a specific need (application of extra-casino activity to in-casino game enthusiasm) and additional features that preclude the general abstract concept (displaying gambling outcomes, applying gambling credits, activating game features, etc.).  The patent was allowed while still claiming the broad concept of applying extra-casino rewards obtained through online activity to an in-casino gaming feature.

Although the United States Supreme Court’s Alice decision made it significantly more difficult to obtain and to enforce broadly written software patent claims, there is guidance from subsequent case law that sets forth understandable parameters for drafting software-type claims of an appropriate scope.  It is reasonable to believe that software patents are attainable if the invention is directed to inventive concepts that are narrowly tailored and specific to solving a problem within a certain field of technology.

In the United States, the ornamental shape of an object can be protected by a design patent.  A design patent differs from a more common utility patent in several ways:

1. The legal rights granted by a design patent are defined by a set of drawings rather than written claims
2. A design patent lasts 15 years but does not require paying annuity fees
3. A design patent can only be used to protect “articles of manufacture” rather than processes and other things that utility patents can protect.

In many other countries, different systems are used to protect the shape or features of “articles of manufacture.” In fact, in many countries, a broader variety of things can be protected under the name of “industrial designs.”  As one example, the European Union allows protection under a Registered Community Design.

The Hague Convention is a treaty that allows the owner of an industrial design registration or a U.S. Design Patent to submit that registration or patent to the World Intellectual Property Organization (WIPO—see www.wipo.int) and ask WIPO to submit it to many countries.

For example, a U.S. company that owned a design patent on a model of show could use the Hague Convention to submit that shoe design to 50 other countries to obtain protection in each of those countries.  The application would be reviewed by the legal authorities in each country, but—importantly—the application can be submitted through WIPO without the use of a local attorney in each country, using a standardized form, in English.  This can save a tremendous amount of money.

Of course, because the laws differ in each country, this process is not a panacea.  Applications submitted through WIPO can still be rejected.  In that case, it will normally be necessary to hire a local attorney to deal with the rejection and try to overcome it.  But the economies of using WIPO are considered a great advantage.

The United States joined the Hague Convention only very recently. Final rules have just been issued that permit a person from another country to submit an industrial design, through WIPO, as an application for a U.S. Design Patent.

However, the U.S. criteria for design patents are particularly rigorous, and foreign applicants who rely on the Hague Convention can expect that rejections will be common.  The following list shows a few basic rules to be aware of to reduce the chance of rejections:

1. An application for a design patent can contain only a single design. If an application includes multiple variations, the application will be refused and the applicant will need to separate it into multiple applications, with additional fees for each.
2. The U.S. Patent and Trademark Office requires formal drawings, typically of 7 views of the design to be registered. Photographs are rarely acceptable.
3. The drawings themselves define the claim for legal protection; textual descriptions are considered helpful but not legally relevant. Similarly, the title of the application will be considered by the patent examiner.
4. Design patent applications are examined for novelty. If a similar design is found, an application will be rejected.

The Hague Convention can be a great way for owners of a design in one country to obtain protection in many countries through a process that is typically faster and less expensive than the traditional model of starting with a lawyer in each country.  But the process may still require adjustments based on the requirements of each jurisdiction where protection is sought.

We expect that most Hague Convention applications will be rejected by the U.S.P.T.O.

The most common rejections are for multiple designs (Embodiments) and unacceptable figures.

The Hague Convention provides a convenient path for patent holders outside the United States to submit a design patent application to the U.S. Patent and Trademark Office directly through the World Intellectual Property Organization (WIPO), without using the services of a U.S. patent attorney. This can save money on U.S. lawyer fees and also allows the patent owner to submit the design to multiple countries at the same time.

However, the Hague Convention was only recently adopted by the United States. There may be confusion among non-U.S. inventors about how U.S. design patent requirements differ from requirements in other countries. We expect that a high percentage of designs filed in the United States under the Hague Convention will be refused. This article describes the two most likely reasons for refusals.

When a U.S. design patent is refused, a U.S patent examiner issues an Office Action—an official letter that gives the detailed reasons for the refusal and the possible remedies to the refusal.

The language of an Office Action is highly specialized. It is difficult to understand, except for U.S. lawyers who are registered patent attorneys. (Only registered patent attorneys are permitted to communicate with the patent office on behalf of the inventor.)

In most cases, you will have two months after the date of filing in which to file a formal response to the Office Action at the U.S.P.T.O. This date can be extended to a total of six months, but with additional fees that will total hundreds of dollars.

In many countries—and in the European Union IP Office— an industrial design registration can include multiple versions of the same product.  Thus, a design filed at WIPO will often include multiple sets of figures that reference variations on a product.

But a U.S. design patent can only include a single version, which we call a single embodiment.  If the design patent application includes figures that appear to describe more than one design, each of which could be separately patented, then the patent examiner will refuse the application.

The patent examiner will normally describe the different embodiments that are contained within the application and state that the inventor must choose one of the embodiments.  For example, text in the office action may look something like this:

Embodiment 1: Figures 1-7

Embodiment 2: Figures 8-12

Embodiment 3: Figures 13-17

As the inventor, you have two choices:  Choose one of the embodiments and delete the other figures, or divide the application into multiple applications, so that each application can proceed as a separate application for one of the embodiments.  Creating multiple applications obviously means you must pay more official fees.

The second common problem with design patents arriving from WIPO is that they do not have acceptable figures.

Many countries (and the European Union) permit registration of industrial designs based on a single photograph or on several photographs that show a product design.  The requirements under U.S. patent law are much more demanding.

The normal procedure is that a design patent application must include 7 views of the product design:  front, back, top, bottom, right, left, and perspective.  It is true that the regulations permit use of photographs, but they are very rarely found to be acceptable by the patent examiner.  Because the Hague Convention is new to the U.S., foreign inventors should expect that the U.S.P.T.O. will still be reluctant (perhaps for several years) to accept photographs rather than computer-rendered mechanical drawings such as those shown in the examples below, which are taken from an issued U.S. design patent:

Because of these norms, we expect that many design applications filed with WIPO through the Hague Convention will be rejected by the U.S.P.T.O. because of problems with the figures.

The solution to this is simple but can be costly:  New figures are required that match the scope of the original figures submitted to WIPO, but that also comply with U.S.P.T.O. requirements.  This usually involves hiring an experienced patent drafting person who can prepare the figures for you, and then submitting them in response to an Office Action.

Although problems with multiple embodiments and unacceptable figures can delay processing and increase costs, the Hague Convention may still be a useful approach for many non-U.S. inventors to apply for design protection in the United States.

You’ve probably seen many products marked with “Patent Pending” or “Pat. Pending”—on everything from dishwashers to ballpoint pens to software programs.

The words Patent Pending have a special meaning under the patent laws of the United States and most other countries.  “Patent Pending” simply means that the product contains some feature that is the subject of a patent application that is currently active (pending) at a national trademark office.

In sum, it means that you came up with an innovation, you prepared a patent application to seek legal protection for that innovation, and you submitted that patent application to the patent office (in the U.S., this would be the U.S. Patent and Trademark Office—the USPTO).

“Patent Pending” does not mean that any innovation is actually protected by a patent, or that the owner of the patent application can sue for patent infringement (yet).  That is not possible until a patent has issued.  But because getting a patent can take several years, the words Patent Pending act like a warning—a public notice—that a product may be subject to patent protection.

The U.S. Patent Act (including the most recent revisions, the America Invents Act) includes language that requires a patent owner to “mark” the products that include patent features.  You can’t hide the fact that something has patent protection and then sue someone for copying it.  That’s why you will see long lists of patent numbers on many products.  Of course, this get complicated when we talk about optical disc drives and software and airplanes, which are covered by thousands of different patents issued over many decades (many of which have now expired, but someone has to keep track).  The newest version of the law allows you to reference an Internet address where all patents are listed.  Anyway, the idea is the same with Patent Pending: to let people know that legal rights may be involved.

You may be familiar with the three types of patents: 1. provisional patent applications, which are not “real” patents because they are not examined and do not become issued patents; they just record your claim of first rights in an invention; 2. Utility patents that protect many different types of inventions, methods of making things, processes, etc.; and 3. Design patents, which protect the ornamental features of an “article of manufacture.”  If you have filed any of these three types of patent applications, then you can (and must) state “Patent Pending” or “Pat. Pending” somewhere on your product.

If you have filed a patent application and you do not say Patent Pending, you may be unable to enforce your patent rights.

What if you file a patent application but the patent never issues?  (That is, the application eventually goes abandoned.)  During the period when it is active at the patent office—which is typically at least 18 months but may be four or more years—you should label your product with Patent Pending.  After the patent application goes abandoned, you need to remove Patent Pending from your product.