When building a consumer product, questions about intellectual property are bound to arise.
During a recent episode of the Pitch to Product Podcast, 52Launch sat down with Robert McConnell, a Los Angeles–based patent and trademark attorney with roughly two decades of experience working with Silicon Valley startups and high-tech companies, to walk through exactly what the process looks like from the first consultation to a registered trademark or issued patent.
Should You Form an LLC Before Filing a Trademark or Patent?
One of the first questions that comes up in almost every consultation is whether to set up a business entity, such as an LLC or corporation, before doing anything else. The short answer is that it depends on your risk exposure and your timeline, but for most consumer products, it's worth doing before you start selling.
The main reason to form an entity is liability protection. If you sell a product as an individual and something goes wrong (e.g. a customer is injured, a product turns out to be defective, etc.) a personal injury attorney can come after your personal assets, including your bank accounts and home equity. If that same product is sold through a properly maintained LLC or corporation, then a lawsuit targets the entity and not you personally.
There's also a trademark-specific wrinkle: when you file an "intent to use" trademark application, the owner listed on that application can't be changed until the trademark actually registers. So you need to decide upfront whether the applicant will be you personally or a company you've formed.
That said, forming an entity isn't free. In California, for example, there's an $800/year minimum corporate tax regardless of revenue. If your product is still early-stage and might not make it to launch, it can make sense to delay entity formation and revisit it later; reassigning a trademark application to an entity afterward isn't an expensive process.
For patents, the timing pressure is lower. Patent assignment typically doesn't need to happen until a patent is close to issuing, so the entity decision isn't as time-sensitive on that side.
The Trademark Process: What to Expect
Step 1: The initial consultation
Expect a call during which the attorney asks for a high-level "elevator pitch" of your product and figures out where you are in the development process. Trademark work can start early, well before your product is finalized, because your brand name and logo are usually locked in long before the final product design is.
Step 2: The two big tests - descriptiveness and likelihood of confusion
Before you fall in love with a name, it needs to clear two hurdles:
- Is it descriptive or generic? Trademark law intentionally makes it hard to protect names that simply describe what a product is or does. A name like "Red Apple" for apples will never be trademarked. This surprises a lot of first-time founders who assume a highly descriptive name is a marketing advantage.
- Is it likely to be confused with an existing trademark? This requires an actual search of the trademark office's database for similar marks tied to similar goods or services.
Trademark strength runs on a spectrum, from weakest to strongest: generic → descriptive → suggestive → arbitrary → fanciful. The strongest, most defensible brand names (ex. Starbucks, Nike, Google, Apple, Kodak) sit at the arbitrary or fanciful end. They require zero explanation of what the product is, which is exactly what makes them ownable.
If your name is stuck on the descriptive side, you still have options: build a logo with distinctive design elements around it, or file on the USPTO's "supplemental register" as a placeholder until the name builds enough recognition to qualify for the primary register. Neither is as strong as starting with a distinctive name, but both are better than defaulting to unregistered common-law rights, which are limited to specific geographic areas and much harder to enforce.
Step 3: Engagement and the trademark search report
Once you decide to move forward, you'll sign an engagement letter and pay a deposit. The first real deliverable is a trademark search report, which is a ranked list of potentially conflicting marks with a recommendation on whether to file.
Step 4: Filing
Most early-stage product companies file on an "intent to use" basis, meaning you haven't started selling yet but plan to. You'll need to provide the final trademark, your list of goods/services, and a mailing address.
Step 5: The waiting game
Expect roughly 4–6 months for the trademark office's first response. Increasingly, that first response is a notice of publication, which opens a 30-day window where other trademark owners can file an opposition. Large, well-known brands sometimes monitor new filings and oppose marks that look even loosely similar, something worth weighing if your search turned up a "family" of related trademarks from a bigger company.
If no opposition is filed, you'll get a notice of allowance. For intent-to-use applications, you then need to show actual proof of use before the mark registers.
Why DIY Trademark Filing Can Be Risky
Unlike trademarks, patent work generally makes more sense later in product development, once the design is close to being final, because the details of the actual product often determine whether it qualifies for patent protection at all.
Provisional vs. non-provisional applications
There are two common paths:
- Provisional patent application first: A lower-formality placeholder that locks in your filing/priority date and lets you say "patent pending." It is not examined by the patent office and does not grant any enforceable rights (no patent application does, until a patent actually issues.) You then have one year to file a full non-provisional application. The tradeoff here is that year adds directly to your total wait time, and since a first office action on a non-provisional application typically takes around 18 months, the provisional route can mean waiting years before you know if you have a patent.
- Non-provisional first: Often recommended for simpler inventions, sometimes paired with a pre-filing patentability search to confirm there's a real path to patentability before spending money on drafting.
The "on-sale bar" - a deadline you can't get back
You have one year from your first offer for sale, public disclosure, or publication of the invention to file a patent application. If you miss this, your invention becomes unpatentable, permanently. The patent office won't flag this during examination, but it becomes a major liability later if you build a real business around the patent and then need to enforce it: in litigation, this kind of gap is discoverable and can render the patent unenforceable entirely, after you've already spent significant money defending it.
The safest practice is to get a provisional or non-provisional application on file before you offer the product for sale, list it on a website, or actively pitch it to manufacturers or partners.
Design patents: An underused option for consumer products
Utility patents protect how something works; design patents protect how something looks. They're often overlooked, but for consumer products they offer real advantages:
- Lower filing fees and no maintenance fees over the life of the patent (utility patents have increasing maintenance fees)
- A simpler application process
- Strong practical value against knockoffs, especially from overseas manufacturers selling look-alike products on marketplaces like Amazon
Getting a counterfeit or infringing listing removed from Amazon based on patent infringement is typically far faster and cheaper than pursuing a full federal patent infringement lawsuit.
What happens after filing
Once your patent application is on file, expect periodic office actions from the patent examiner. Counterintuitively, getting no pushback at all (a "first action allowance") can actually mean you didn't ask for enough in your claims. Patent prosecution is fundamentally a negotiation over how broad your claims can be. Your attorney should also flag the one-year deadline to file internationally if you want protection outside the U.S.
Quick-Reference FAQ
Do I need a trademark attorney to file a trademark application? Not legally, but DIY filings carry real risk. Common outcomes include rejections for descriptiveness or likelihood of confusion, or a lost/abandoned application after a missed deadline like a specimen filing, both of which can cost more to fix than proper filing would have cost in the first place.
What's the difference between a provisional and non-provisional patent application? A provisional application is an unexamined placeholder that secures your filing date for 12 months and lets you claim "patent pending" status, but grants no enforceable rights. A non-provisional application is the full, examined application that can eventually result in an issued, enforceable patent.
How long does trademark registration take? Roughly 4–6 months for an initial response from the trademark office, plus a 30-day opposition window after publication, before a notice of allowance is issued.
How long does a patent take to be examined? On average, around 18 months for a first office action on a non-provisional application. This can be longer if you start with a provisional application, since that adds up to a full year before the non-provisional clock even starts.
What is the "on-sale bar" in patent law? A rule requiring you to file a patent application within one year of first offering the invention for sale, disclosing it publicly, or publishing it, after which the invention becomes permanently unpatentable.
Should I form an LLC before selling my product? For most consumer products, yes - primarily for liability protection, and because it affects who legally owns your trademark application. The main tradeoff is the ongoing cost of maintaining the entity (e.g., annual minimum state taxes) before there's real revenue.
What is a design patent, and how is it different from a utility patent? A utility patent protects how an invention functions; a design patent protects how a product looks. Design patents are cheaper to file, have no maintenance fees, and can be an effective tool against knockoffs on marketplaces like Amazon, especially for products where the ornamental design is the key differentiator.
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