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Trademarks, Patents & LLCs: The Complete Guide for Inventors · Pitch to Product

• Jack: welcome back to the Pitch to Product podcast. Today I'm joined by a special guest, Robert McConnell, patent attorney based out of Los Angeles, California. Robert, it's great to have you here. Thank you for the time. ⁓ you can introduce yourself. Robert McConnell: Yeah, certainly. My name's Robert McConnell. I'm a patent attorney. I'm also I I I'm an intellectual property attorney. ⁓ practice particularly in ⁓ acquiring patent rights and acquiring trademark rights and some other things. like Jack said, I am based in Los Angeles. ⁓ but I spent the first about 20 years of my career in Silicon Valley working ⁓ you know, with high-tech companies. so I have a a a and startups, and so I have a wealth of ⁓ experience with knowing you know what what to do as a startup and what also maybe not to do. ⁓ and ⁓ I like to bring that to my clients who are generally ⁓ you know individuals small and medium-sized businesses ⁓ that have intellectual property that they they want to protect ⁓ either patents or trademarks sometimes copyrights that's a you know a topic for another day So yeah, that's mi. Jack: Perfect. And if you haven't seen me on the channel before, I'm Jack Dalton, Business Development Manager here at 52 Launch. Robert, you've taught me a lot of what I know about intellectual property. So this is gonna be fun. Your second time on the channel. ⁓ yeah, looking forward to getting into it. It's we're gonna cover some basics, maybe some slightly more in-depth topics today, but we'll see where it takes us. Robert McConnell: Yeah, I'm excited to have a conversation with you about these topics as well. So let me know where you'd like to get started. Jack: Yeah, well, we can start with a question kind of from my own curiosity. I'm often the one here at 52 Launch who is making introductions between our clients and one of the attorneys that we recommend they work with. And I've never really thought about what exactly am I sending our clients into. Depending on whether they're getting a trademark or a patent, we can cover both of those. But what are those initial consultations like? If that initial call goes well, what are the subsequent steps? If you could just sort of walk me through those, those early, early stages with a new client. Robert McConnell: Absolutely. ⁓ so when you send me a client, ⁓ a potential client, I make an email introduction, I often respond and the first step in the process is to set up an initial consultation, Zoom meeting generally. though, you know, it could be a phone call or even an in-person meeting if if the person is in Los Angeles and wants to meet ⁓ in meet me in my office. ⁓ and during that conversation that initial consultation. I am trying to assess what what's where they are in the process and developing a new product. So we can really keep this to 52 launch type clients where they've got an idea, they're working on developing this product with you, ⁓ they want to go to market at some point. and you know, there are ⁓ questions about their brand and also questions about ⁓ any ⁓ you know patentable inventions they may have come up with in the process. So, you know, I'll schedule a call with them. ⁓ we will get on the call. I will ask them to give me a high-level description, the elevator pitch for their product, just so I know what we're talking about. And I will also ask them where they are in the process. ⁓ Sometimes ⁓ you know people are very early in the process ⁓ of developing their product and You know, there are things that can be done early in the process and then there are things that it's better to wait as you're closer to the final product, right? And so, you know, just from a very simple perspective, ⁓ trademark issues can be dealt with early in the process. Patent issues are better dealt with after the product is mostly developed so that we understand what we're really dealing with here. And you know, we're we're trying to determine whether that final product is ⁓ you know, qualified for patent protection, either because it's patentable subject matter or because ⁓ you know, it's new or non-obvious, which is some patent ⁓ patent language, but you know, let's just say, you know, it's it's an invention and it's something new ⁓ that that can be patented. and then also in terms of actually filing a patent application, ⁓ We definitely want to try to file a patent application that reflects exactly what the product that's going to be sold will be so that that can be protected, right? And it's not just ⁓ maybe the exact embodiment that that's going to market, but also trying to to build in some leeway so that other variations of it would also be covered by ⁓ this patent application. And ⁓ you know, that really only makes sense to do ⁓ close to product launch. ⁓ But you know, we we can get started on some patent ⁓ questions earlier in the product ⁓ process, ⁓ specifically, you know, what what does the prior art landscape look like, what has been out there before ⁓ in this space. ⁓ but again, you know, the details are incredibly important and sometimes what makes the difference between patentability and not patentability are the fine details of a product. And so ⁓ if they aren't quite developed yet, ⁓ you don't always get the best answer out of a patentability search. so let's talk a little bit about trademark you know, because it I I think, you know, it makes sense to sort of talk through the timeline of working with me or really any intellectual property attorney. I don't think it's gonna be too different across the board, but ⁓ Jack: Mm-hmm. Robert McConnell: You know, like I mentioned, earlier in the process is a good time to investigate trademarks. And you know, just for people who don't know, a trademark covers ⁓ your brand name and the association between a brand or a design, and there's some other ⁓ categories of indicators that can be trademarked that are less common, like scents and colors. but the association between that trademark and a particular good or service or a list of goods or services. And ⁓ you know, just think about Starbucks or McDonald's or Google or Apple, I mean Nike, these are all very famous trademarks where, you know, Nike is associated with athletic apparel and shoes, Starbucks is associated with coffee, ⁓ Apple is with computers and and devices like that. And ⁓ the The real value of a trademark is so that a consumer can ⁓ assess the quality of a product, right? And, you know, ⁓ when you go to Starbucks for coffee, if you've been to Starbucks before, you can be sure you know what you're gonna get, right? And the way it's gonna taste and what options are available. And that's really the the the goal of a trademark. But also, you know, from a a more basic perspective, that's gonna be probably the name of your product, right? And ⁓ you know, when you go to market, you want to make sure that you have a product name that can be protected and prevent other people from coming along and making some close ⁓ variation of your name. You know, ⁓ I'm not very good at making these things up on the fly, but you know, for Starbucks, if it was like Barbucks or Starb. mucks, you know, like some silly ⁓ you know, misspelling in the in the hopes that you would confuse people into thinking that you're Starbucks, that's trademark infringement. And so you you you really like this is a core piece of intellectual property for any business that goes out to consumers or even brands, but for certainly for consumer type goods, having ⁓ ownership of your name Jack: ⁓ Yes. Right. Robert McConnell: and your brand is of critical importance. And that is a process that can get started at the beginning. ⁓ and one of the biggest sticking points ⁓ I have with with with brand owners is they want their brand name to be to to be very descriptive of what they sell, you know, and tell you exactly what they sell. And that it turns out is not allowed in the trademark world. You know, the the the the the public policy is let's not protect things ⁓ that other brands need to use in describing their products, right? And so ⁓ there's two categories of trademarks that are difficult to protect at the beginning of a product. One is generic trademark, which is just the the actual word for a good or service. ⁓ those are never protectable with a registered trademark. Descriptive trademarks are registerable after ⁓ Jack: Right. Robert McConnell: you know, you you show sec that you've developed secondary meaning, which means it's famous in some way, shape or form. That is just not possible with a new product. So, you know, really getting into trademarks that are less in those categories is really important, right? So that's that's the first place you know, we get into and the word in trademark practice that's used to describe anything that is ⁓ you know you can register as a trademark is distinctive material, right, versus generic or descriptive. And there's some other categories. I won't get into that. we could say that to another for another time. But but ⁓ you know, the the two big tests at the beginning of a trademark process with a new client are is this name descriptive of the goods and services? Either it's a generic word that just is like the word for something or, you know, the trademark ⁓ describes a characteristic ingredient. There's a list of ⁓ words that just you know, that go along with descriptiveness. And it's okay to have a combination of descriptive terms with distinctive terms, but there's got to be something in there that's not descriptive or generic. so that's one. And then the other is the question of likelihood of confusion is is there another trademark that's already registered for that's similar for similar goods or services? ⁓ Jack: Right. Robert McConnell: And this is this is my job at the beginning of the process is to determine if we have issues with either of those things and descriptiveness. I generally can identify just without doing any too much work. I need to understand what the product is and ⁓ I might have to do a couple Google searches. ⁓ but I'll I'll typically ask the client, is this a characteristic or ingredient or you know, some way descriptive of your goods or services? ⁓ and then the other is the likelihood of confusion and that's a search, right? So I need to go look in the trademark office's database, see what's been registered, what's been filed before, and determine if there's a likelihood of confusion. ⁓ and that is that so you know, as we're working together, so we have this initial consultation, we talk about trademarks, ⁓ client says, I Jack: Yeah. Robert McConnell: I I feel good about this. I'd like to hire you. There's an engagement letter, a deposit that is equal to the initial, ⁓ the projected initial legal and ⁓ filing fees. ⁓ and then I get started. And, you know, for a trademark project, the first output is a a trademark search report. And ⁓ you know, that's an email with a PDF attached to it. It has all the trademarks I found that I think are. Jack: Right. Robert McConnell: somewhat similar, ⁓ ranked by whether they're too close, in the middle, or no big deal, ⁓ and ⁓ and a recommendation about filing. ⁓ and then, you know, w I work with the client to collect the information that's necessary for the trademark application, which is really you know, the final trademark, the goods and services, ⁓ the address that the Client is going to put on their trademark application. This is a public record. if you list your home address, you will get junk mail that looks like you need to do something and send money, which you should never ever do. the trademark office doesn't communicate with ⁓ with applicants via postal mail. They only communicate with attorney of record via email. and ⁓ so Jack: Good to know. Robert McConnell: You know, the other thing that that we have to figure out is is is who is going to be the owner of the trademark. Is it the person individually or is it a company or entity that they've formed to do business? and ⁓ you know, then there's the filing status, right? And you have to d tell the trademark office, I'm using this trademark in commerce with the goods that are listed. And if you say that you're using it, you have to show proof that you're using it, which is called a specimen. ⁓ Jack: Right. Robert McConnell: And that is generally a f you know a a photo of the trademark on the packaging or a website with the goods or services that are listed. ⁓ but for most clients ⁓ working with you guys, their ⁓ filing is intent to use, right? Because they haven't actually started to use it yet. And they they just, you know, I have the the intention of using this in the future. Let's do the examination process and when we get toward the Jack: Mm. Right. Robert McConnell: you know, when the the trademark is allowed and I'm start to use it, then I'll show you that I'm using it and we can register the trademark. So the entity is important to that. ⁓ and you know, we we could take a second and go down the rabbit hole of entities right now if you'd like, or we could save it for later. Sure. Jack: Absolutely. I had one question I wanted to ask before we did that. I think that'd be a great thing to cover. But there are some pretty prominent business people, investors, who really strongly recommend the more descriptive names for your business. And clearly that's not trademarkable. But I'm wondering, would you ever advise somebody to use a descriptive name, even if it can't be trademarked, because It's just it is it makes it so much more clear what the product or service is that and maybe it's something really niche, but It's there's definitely this idea that I I'm not sure how many people have this idea, but that if you're gonna name your business, it should be obvious what your business does from the name. And so I'm wondering, you know, is that ever something that you would advise? Is it even allowed? And if so, can you get any common law rights with a descriptive name? Robert McConnell: So let me counter that point with I want you to think about the trademarks that I just described that are extremely strong, valuable trademarks. ⁓ Starbucks, ⁓ Google, Apple, Nike, Rolex, Lexus, think about those trademarks, and those are not descriptive at all. And they they fall into the categories toward the far end of the Jack: Right. Robert McConnell: other end of the trademark spectrum, which is, you know, words that aren't connected, ⁓ that aren't even in the dictionary, right? And then words that have no association at all with the goods or services. So ⁓ the strongest trademarks are always those that are the least descriptive. And there is a tension, right? And so but, you know, it's not my role to say don't do this. ⁓ my role is to say, okay, well what can we do protect you as much as possible. You know, if you're really in love with this name, there are some things that we can do. ⁓ And there are two ⁓ two approaches. One is ⁓ you can come up with a logo with your descriptive trademark in it. And this may not work for generic trademarks, but just let's just assume it's descriptive and not really just generic. ⁓ and the logo can have some distinctive design elements with it. And that logo can then potentially still get registered as a trademark because it has distinctive matter in it. ⁓ you know, you still have some issues, which is the literal element of the the words are ⁓ are descriptive, ⁓ but you can get a registration. And the issue with logo trademarks is that when you rebrand. ⁓ which happens often for consumer products, you have to file a new trademark application. You can't change the way the logo looks ⁓ on the existing registration. So ⁓ so that's one approach. The other approach is there is something called the supplemental register, which is available for trademarks that are descriptive. and you know it it it's not it doesn't help you Jack: Right. Robert McConnell: with infringement necessarily, but it will help you with ownership and examination in the future. So if you register something on the supplemental register, the trademark office will examine new applications against that one and should not should not issue a confusingly similar registration ⁓ that's filed after yours. Now ⁓ that you know the the supplemental register is Jack: Okay. Robert McConnell: It's sort of like a placeholder. And then if you are successful and you invest a lot in advertising and consumers become aware of your trademark and it develops what's called secondary meaning, then you can go back and register your descriptive trademark as ⁓ as ⁓ you know as having dis ⁓ you know secondary meaning and then eligible for for registration. The problem with all of these approaches is that they are weaker than coming up with a strong trademark. And, you know, for for brand owners, you know, it may not be important if you intend to operate your brand forever, right? But if you are hoping that you're going to develop a product and it's going to be successful and then a bigger brand's going to come along and buy you out, you really want to have the Jack: Right. Robert McConnell: best assets you possibly can have, right? And so one of the things they're going to examine first off in any sort of acquisition is what's your intellectual property? What do you own do you own your name? And if you don't own your name, it's it's really hard. And if you've developed a bunch of brand recognition behind a name that you don't own on paper in the federal in the US trademark office or, you know, in other countries where you're operating, it that's it's it's not great. so you can develop common law rights. ⁓ they are bound by what's descriptive and generic as well, how strong they are and how much you can exclude other people from using them. I wouldn't recommend common law rights as a an approach. I mean, you you really end up in state court and litigation versus federal court. You have to prove that you own the name. It's there's geographic limits. I mean it's just it's ⁓ not Jack: Hmm. Robert McConnell: Not as great as having the bundle of rights that come along with the federal trademark registration. Jack: Yeah, yeah, that sounds less than ideal. Robert McConnell: Yeah, so that's a lot of words. ⁓ yeah, so I mean it it's i and I'd be curious to know which big investors are trying to push ⁓ product owners or brand owners towards descriptive ⁓ trademarks because I just don't think that's very good advice. Jack: Yeah. Yeah, there's one on Shark Tank. Not even sure if they're still on on the show, but I've heard the the advice before that you know, I have no idea what your product is from the name. And turns out, as you said, that's not great advice. ⁓ the strongest brand names are kind of out there a lot of the time. Robert McConnell: Yeah. Well Yeah, right. I mean, just like the word Xerox, which is, you know, I guess it's an old brand now, but or Kodak, those are words that don't aren't in the dictionary, right? ⁓ Starbucks isn't in the dictionary, although I think it's a character in Moby Dick. But anyway, ⁓ you know, I just I just think it's it's ⁓ you know, another approach is and this is what I often recommend is come up with one word that is distinctive, suggestive, you know. subject to trademark ⁓ registration and then a descrip you can put another descriptive word with it and you can still get that registered. So that's a way of coming up with something that is registerable ⁓ that doesn't have the same problem, right? And that's the tension, the balancing act, right, is coming up with some of both. Jack: Yeah, absolutely. Robert McConnell: 'Cause I understand from a new product perspective, selling a product that has a made up name is like, you know, that you have to put more effort into marketing and educating consumers about what your product is. And let's just not forget that coming up with a made up name is hard. I mean, it's really hard. and, you know, I'm I'm personally not great at it. ⁓ and I have clients that I come that come to me and I say, ⁓ you could make up a word, but I tell you how to do that. So Jack: Yeah, yeah, Hagen does Robert McConnell: It takes a it takes a lot of guts to sort of say, you know what, I'm gonna name my my new product Google, right? ⁓ Jack: Right, right. And it almost seems like it's easier than ever now, especially in the product space, to use a more a a name that's less descriptive and more just what's the word for it? Arbitrary? Distinctive. Robert McConnell: W distinctive. Well there's there's three categories of ⁓ of on this there's a five part spectrum of of trademark protectability and generic and descriptive are the first two categories and then suggestive, arbitrary and fanciful are the next three. So suggestive means that it requires a a ⁓ leap of imagination for the consumer to get from the the the Trademark to the goods or services. That's the legal standard. Good luck understanding what that means. There's a lot of law that people argue a great deal about it because it's on the line. ⁓ And then, you know, arbitrary means it's a word that has no association with the goods or services. The example I always like to present here is Apple Computer, right? If you named your your ⁓ your delicious Washington-grown Apple variety. Red Apple, never ever gonna get trademarked. You name your computer Apple Computer, it it's a arbitrary trademark. So ⁓ you know, that right, right. you know, in there that one's got a potential issue, legal issue with it, which is ⁓ there are geograph there's some questions about geographic identifiers, right? And so ⁓ if you yeah, yeah, so. Jack: For your gas station, Big Apple. Hmm. ⁓ yeah. Robert McConnell: Anyway, but it it you know, if you just called it Apple gas station, it would you'd probably get a letter from Apple computer, but but you could probably get it ⁓ you know, wouldn't wouldn't have a problem with descriptiveness. ⁓ and then the last is is ⁓ fanciful, which is it's just a made up word. Jack: Yeah. Robert McConnell: Yeah. Or maybe I've mixed I think I mixed it up. It's fanciful then arbitrary. Arbitrary is the made up word. Fanciful is the one that doesn't ⁓ associate with yeah. Anyway. ⁓ Jack: Yeah, those ones are interesting. Either way, it would seem, it would seem like, especially in the product space, it's easier to use those types of names now than it was in the past, because at least for 52 launch launched products, most of the time a new consumer is finding a product, they're seeing a picture of it or a video as soon as they're seeing the name for the first time. So there's no confusion about what the product is or what it does. It's just accompanied by a an interesting out there name. Robert McConnell: Right. And you're probably having a c a conversation with a consumer on a on social media. I mean, I think that that's probably the first place that many people ⁓ encounter a new product today is on social media. ⁓ and so there's really an opportunity to explain what the product is with the name. Jack: Mm-hmm. Robert McConnell: yeah, I mean it's just one of the areas where there's a lot of ⁓ you know, I have to do some education with clients. There's attention that's just built into the system. And you know, it's my job to help people figure out where to be on the on the spectrum, you know, and how to avoid the problem which is, you know, for a new business, ⁓ let's say someone's working with fifty two launch, they are six months out from their product launch, right? ⁓ And they come to me and they want to get a trademark for their new product name. When we file that trademark application, we want to have a high level of confidence that that is going to go through and be allowed. Because it takes currently four, five, six months for the trademark office to examine an application. and you know, you don't want to get to launching your product and then find out after you've launched and you've, you know. you don't want to get to launching your product and then find out after you've launched and you've, you know. set up a domain name and packaging and social media channels and then it's like, ⁓ I can't own that that name. set up a domain name and packaging and social media channels and then it's like, ⁓ I can't own that that name. And ⁓ so I tend to really recommend you know, especially if you're an an individual or small business, it's not great to be right on the line because you can't always, ⁓ you know, there's human beings on the other side of the process deciding. ⁓ and the legal standards are very broad and And you it's it's sometimes hard to determine if something at that's on the line will go through or not. ⁓ Jack: Mm-hmm. Yeah, and that's one of the reasons we generally prefer to send clients to an attorney to at the very least have a conversation rather than having them file trademarks themselves, which is a question we've gotten a lot more recently with the rise of AI tools around these filing processes. It's, you know, because filing a trademark isn't necessarily the most complicated process in the world. But if you don't do the search right, then you spend some time and effort and money filing, and then six, maybe seven months go by, and then you get hit with the what you were just talking about, ⁓ yeah, you can't own this brand name. And all the meantime, you've been building a brand around it, you've been producing content, packaging. maybe putting the name on the product. So it can be a pretty legitimate setback if that doesn't get approved. Robert McConnell: It it can be and you know, AI is very tempting to help. And I've had the situation where ⁓ a client has sent me a report that they that looked like a lawyer generated it, but it came from AI and it was also incorrect, right? It had hallucinated some some things and you know i it's just risky at this point. ⁓ So let me tell you what happens if you f ⁓ it looks like you could file a trademark application yourself. It's fairly straightforward and easy to do it. The trademark office has recently upgraded their systems so they're a little more modern and look more like a real website versus, you know, something from the nineties. ⁓ and so it seems like it could be easy to do. And it's really, you know, my favorite one of my favorite legal terms is attractive nuisance, ⁓ which, you know, the the the Jack: Right. Robert McConnell: The example they give you from law school is the empty swimming pool without a fence around it, right? So some child's gonna run into the empty swimming pool and get injured or get trapped. ⁓ and I think that the ability to file trademark applications as a without an attorney is an attractive nuisance because what ends up happening is there is a chance that it could go through, right? and especially with a ⁓ an intent to use application. Jack: Mm. Robert McConnell: You know, you could get a notice of allowance and then you're it says, okay, you have to file a specimen within six months, and then you s you say, Well, what's a specimen? And ⁓ more times than not, I s I mean, of course I only get clients that come to me after the process didn't work, but but they filed a specimen that's wrong and they somehow managed to get to a and you can get to a place where the application is just dead and it gets abandoned and you can't fix it. ⁓ with that. And then the other thing that could happen is you get a rejection and it says, ⁓ your trademark's descriptive, or there's a likelihood of confusion, or your identification of goods or services is incorrect. Your ⁓ there's a a variety of rejections. And for non-lawyers to try to read them and understand what they mean is it's hard, right? And so then they come to me and I would say a lot of times you're left in a couple of different places. A corner where the only real approach is to start over, right? And lose the money you've spent and and hire me to do it from scratch from the beginning. ⁓ but then you also lose the priority date that you originally had. And so that's that's an issue. The other thing that can happen is, you know, it costs more money to fix it than it would have cost to just do it right from the first in the first place. Right. So I I do these things on a flat rate. I know what I'm doing. ⁓ you know, it I I I'm not gonna say it never, ever is there any additional cost, but ⁓ but for the most part, you know, trademark applications that I file, you know, don't get rejected for a likelihood of confusion or descriptiveness. ⁓ I'm not a hundred percent, but it's it's you know, it's it's a a smaller number, right? And so, Jack: Right. Robert McConnell: So I just think you end up in a corner where you can't i get out of it. And it's also really confusing for ⁓ non lawyers. ⁓ and and I'll be honest, it's also confusing for non trademark lawyers. So I've had lawyers come to me that have tried to do this on their own and gotten in a corner and they need help getting out of it. And ⁓ so and you know, AI is a really strong tool, but I don't think it's there yet. And ⁓ Jack: I would agree. Robert McConnell: I don't use it ⁓ for anything that you know has any legal impact in my business. ⁓ and you know it's it's something that we you know, lawyers are keeping a very close eye on. but ⁓ but it's just not there. So yeah. Jack: Yeah. Yeah, absolutely. Robert McConnell: So that's the horror story that can happen. And it's it's ⁓ I never like to have to say, ⁓ yeah, it's gonna cost more to fix it than it did to to just do it right from the first in the first place. Yeah. Yeah. And then you have someone helping you along the way who just deals with all the communication and you know, just gives you updates. And so that that leads me to the next question that, you know, that you were interested in is what does look like as we go along? So, you know, with a trademark, ⁓ Jack: Mm-hmm. Yes. Yeah, those are unfortunate conversations. Robert McConnell: you know, five to six months ⁓ in, we can expect to get ⁓ our first communication from the trademark office. I will evaluate that, put it on my docket, ⁓ figure out what needs to be done, if anything, and you know, I communicate that to the client. And ⁓ these days, because of the way that the application process is, more often than not, the first communication is a notice of publication where it's just been approved for publication which is there's a 30 day opposition period where someone who thinks that they might be injured by the trademark being registered can file an opposition. This is typically just ⁓ in my experience it's big rich brands that are trying to bully smaller people out of the space. and you know that Jack: Mm-hmm. And so they have somebody on their team that monitors that list all the time. Wow. Robert McConnell: Absolutely. Yeah. They they they have software that says you should look at this one and ⁓ that just it d does that. But ⁓ but you know that that that opposition process, you know, another another good example is if you if you if we do a search and there's you know a whole family of trademarks from a big brand that is somewhat close, I usually say Well, you know, you might not get a rejection from the trademark office, but you might get an opposition from this brand. And, you know, we can look a little bit more in depth to see if they have a history of being that kind of a bully. ⁓ but it sometimes you just don't want to take the risk. And new new brand owners don't want to get into an opposition situation. ⁓ it's too expensive. No. Nope. ⁓ so Jack: Right. Yeah. Yeah, a absolutely not. Robert McConnell: Anyway, that's that's the process and you know, then there'll be a notice of allowance and ⁓ you know, I walk through people ⁓ hopefully there's a notice of allowance and I'll, you know, walk the client through what we need to do to get that registered and Hopefully they've they're down the the process of launching and ⁓ we can get it done pretty quickly. So ⁓ that's that's sort of the trademark process. ⁓ let's see, what what else did we want to talk about here? ⁓ entities or patents? Okay. So entities, ⁓ you know, let's start with the the big headline which is Jack: We're gonna touch on entities, yeah. Robert McConnell: You know, having a corporate entity when you're selling a consumer product can be a good shield against personal liability for problems with the product, right? So if you're selling a widget ⁓ that you've developed with 52 launch and it's amazing, but someone does something stupid and they get injured and then they get a a a a you know personal injury lawyer to file a lawsuit against you. If you are selling that product as John Smith or Jane Doe. they could sue you personally for ⁓ you know, their product liability, and then maybe they're gonna come after your bank account or the equity in your house, or you know, there's there's rules about what they can get or not get, but they can come after your personal assets. So if you set up a corporation or an LLC that actually sells the product and you follow the rules of corporations and LLCs, which is you know, you don't Commingle your funds, you don't use it as your personal piggy bank. You have a board, you keep the records you need to keep. ⁓ then if somebody sues you for product liability, they're suing the corporation or the LLC. And all they can't access your personal assets ⁓ you know, to to pay a judgment. ⁓ and that that that could be very valuable if you have a lot of personal assets. and ⁓ yeah. So that that's the reason to to form an entity. ⁓ but when it comes to trademark practice, you have to decide, especially when you file a ⁓ an intent to use application, ⁓ who the owner of the trademark application is going to be. And it cannot be changed until the trademark registers for an intent to use application. But you know, it is possible to assign it if the trademark registers to your corporation. ⁓ Sometimes it makes sense to decide whether you want to form that entity at the time you file the trademark application because you know you're gonna need it. Other times it makes sense to delay and just worry about moving it later. It's not an expensive process to move it later. ⁓ but but you know, from a corporate entity standpoint, sometimes doing that too early can cost you more money, right? So in California where I'm a licensed. Jack: Right. Robert McConnell: ⁓ if you form a corporation or LLC, there's an $800 a year minimum corporate tax, no matter what how much your company makes. Delaware has ⁓ a lower, but you know, there's you have to pay a yearly tax. ⁓ and I think the minimum is lower, but ⁓ there's still a tax. and so, you know, if you think you're gonna get to the end of the product process and maybe you're not gonna s maybe you're not gonna finish it. Jack: ⁓ Robert McConnell: Whatever it might make sense to just delay, but it's a question that comes up. And that's one of the questions I have to answer before I can file the application is who's going to own this? the same is true for patents, but it the process is a little different. So it's not as critical to make a decision because typically the assignment of patents doesn't happen until ⁓ the patent's about to issue, ⁓ if it does issue. So Jack: Right. Right. Robert McConnell: So anyway, that's just something to be aware of and think about as you're going through this process. It's something that a good attorney can help you decide. It's also something that a tax person can really weigh in on because there are a lot of tax implications around corporations and having them. And you know, there is sort of a minimum level of income that makes sense for you know, from a tax perspective, but you know, you're looking at the liability shield also. so, you know, if you're gonna start selling products on Amazon, especially if there's something there's a chance that somebody will get injured or maybe a product will be defective, it does make sense to form an LLC or in a corporation. ⁓ I think for most people. Jack: Yeah. Yeah. From a from a business strategy standpoint, our feeling is that it pretty much always makes sense to have some sort of corporation because when you're writing a business plan, one of the thoughts that should be somewhere in the back of your head, even if you're in love with the idea, is the possibility of an exit somewhere down the line. And certainly any sort of corporate setup will be helpful in in a successful exit rather than having everything under your own name. Robert McConnell: Absolutely. And it it's just another aspect of wrapping this all up into a nice package that can be sold for a big, huge check, right? And that's every I mean, I don't think it's every inventor's dream. ⁓ but I would say that, you know, finding a way to make a you know, get some big brand to buy your product is great, right? Most people are hoping to have that happen. And the more you could do to set it up right from the beginning, ⁓ the better. So yeah. well let's see, do you want to talk a little bit about patents or Okay, all right, well we ⁓ we we don't have that much time left, but I can go over if you want. ⁓ but so you know, patents I think are as I mentioned at the beginning, it's better to get started on that a little later in the process that you know once the product is finalized. and you know, a consultation for me for a patent. ⁓ Jack: We might as well. Robert McConnell: is you know I'm gonna ask you about your product, I'm gonna tell you about my services, we're gonna talk about strategy because there's a couple different approaches that I think work for new products. and ⁓ you know if you like my ideas and you hire me, you know, engagement letter deposit. And there you know and and that, you know, at the in g ⁓ the consultation stage ⁓ I don't necessarily need to have every single detail of the product to talk about it, right? you know, one of the first things I'm gonna look at is this patentable subject matter. some things in the software world are not patentable subject matter anymore. And so I'm r I'm looking for that. But if it's a widget or a device, a physical product, it's almost always ⁓ something that can that is subject to the patent act, whether it's new or not, that's another different question. but ⁓ you know if you hire me then we'll have a full disclosure meeting. And ⁓ for me, you know, if I can get drawings ⁓ from a product person or a video or photos and just an explanation from ⁓ you know the inventor of how it works, that's usually enough for me to get started. and you know, there's two ⁓ paths that we might take here ⁓ for a new product. One is ⁓ provisional patent application first. and you know a provisional patent application is kind of a placeholder patent application where it the it's not subject to the same formality requirements that the non-provisional is subject to. And you know it doesn't get examined by the patent office, but it saves your priority date, your filing date. ⁓ and then you have one year from the date you file your provisional patent application to file a non-provisional patent application. You know, I think it's really important to say right here that a provisional patent application doesn't give you any patent rights. It doesn't allow you to exclude anyone from making, using, and selling the patented invention in the United States. In fact, no patent application gives you those rights. ⁓ those come after you have an issued patent. It's been examined. But Jack: Right. Robert McConnell: You can say when you have a provisional patent application that you're patent pending. And the other thing is that if you go out to third parties to talk about your product, ⁓ there's you have the benefit of the fact that your invention is in the patent office with a filing date on it. And so if they come along and try to file a patent application after you, ⁓ in theory, they should not be able to do that. you know. There's lots of things that we can do in that process to try to prevent that from happening. ⁓ But, you know, it it has those benefits. and you know, the big I'd say downside of the provisional patent application is it's just dead time, right? So you're not your application's not getting examined. The patent office is notoriously slow examining applications. So if you take your whole year You've just added a year to the examination process, right? And ⁓ you know, like so you could be waiting th then three years before you know whether you have a patent or not. And as we know, that's a long time in our world. and ⁓ so you know, you could be waiting less time. ⁓ I do see things go faster sometimes, but I'd say the average Jack: Mm-hmm. Yes it is. Robert McConnell: Time to get a first office action in the patent office is about 18 months ⁓ for a non-provisional. So any anytime you're in the provisional stage, you're you're just basically waiting with nothing happening. and you know, one of the benefits of getting the provisional on file is, and this is maybe not as important when you're working with a product company like 50T Launch, ⁓ is that You know, you've got your idea in the patent office. And so if you have to go out and talk to manufacturers or developers or people where you want to talk about your invention and not be afraid that they're gonna steal it, this is a common fear of inventors. ⁓ you know, you you've got this document that establishes that you had the invention as of a certain date. you know, just go Jack: Yeah. Robert McConnell: You know, I I I just think it's worth saying at this point for for anybody, you shouldn't talk to companies that you don't trust. you know, you have to build up some trust. And ⁓ also, you know, if you have an invention and you're talking to a third party, you should always do that under a a non-disclosure agreement. and, you know, that's just a contract though, so it's important to work with vetted companies that you trust. Jack: Absolutely. Robert McConnell: So anyway, that that's ⁓ so the provisional first, then you file a non provisional. When the product is final, final. ⁓ you know, you can add new matter to the non-provisional. It will have the filing date of the non-provisional application, but ⁓ you know, we can we can take everything we've learned in the product development process and add it to the final patent application. So that's one thing. ⁓ you you know, and I usually recommend between the provisional and the non-provisional doing a pre-filing patentability search to look at what the prior art is that's already been ⁓ you know patented or filed applications. and that's for two reasons. Sometimes it's just an absolutely don't go forward. You're gonna waste your time and money. You're blocked. This is already out there. That tends to happen for simple inventions. ⁓ Jack: Mm-hmm. Robert McConnell: That's where that comes up. and ⁓ for more likely than not, it's going to help us craft the invention the application to try to claim the right breadth of invention to to get all out and to know if there's you know additional features that need to be added. so the the other approach is to do the pre the patentability search at the beginning before you file any applications. That I tend to recommend if it's a simpler invention. ⁓ you know, if we think that there's an issue with potentially prior art. and you know, it's just it's it then you then you have a sense of whether you have something that you can get patent rights on and if it makes business sense to go forward, right? you know, even for the simplest invention, sometimes you can get some sort of patent rights. Jack: Mm-hmm. Robert McConnell: But especially in the utility world, sometimes those are of little or no value because you could make one small change to a narrow patent, you know, narrow patented product and avoid the patent altogether. So, you know, it that's a business decision that has to be made because you could easily spend ten, twelve thousand dollars getting a utility patent issued. and it it may not be worth it. ⁓ so you know. Jack: Right. Robert McConnell: Let's just talk about the process. So once once I you you engage me, we do the disclosure, we decide the strategy, you know, then you're gonna start getting deliverables from me. and either it's gonna be a ⁓ a drafted patent application, whether it's provisional or non-provisional, or a search report that says, Here's what I found out in the world. ⁓ you know, just will note that there's a a huge number of uncommercialized ⁓ issued patents and filed patent applications. So there's a lot of prior art. And just because there's not a product on the market doesn't mean that somebody didn't think that they were going to sell a product at some point. ⁓ so we often learn a lot of we learn some interesting things. and you know in the US alone right now there they're 13 million plus issued patents at utility patents. ⁓ and then there's many more ⁓ published applications. And then if you start to look worldwide, I pulled some data up on this a while ago. I think there's like, you know, well over I think it was like 1.4, 1.5 million applications filed every year in worldwide. I mean, it's just a lot of patent applications. So, you know, you just have to be aware that that just because you don't see it on the market doesn't mean that Jack: ⁓ Yeah. Robert McConnell: it's it hasn't been tried before. So ⁓ it's just important to go into the process with the right information. So so you get some deliverables from me. let's say for example it's a patent application, we review that together, decide if it's ready to get filed, and then I'll ⁓ you know, there's some additional forms that have to go along with it that are boring to talk about. But I will handle and we'll file the application and If it's a provisional, I'm gonna keep you up to date on you know how much longer you have in your window, and I'm gonna send you periodic emails and say, Hey, you know, six months, you've got three months left, a month, it's time to really get going on this. ⁓ and then if it's non-provisional patent application, ⁓ you know, there's gonna be some communication from the patent office, also like filing receipt, ⁓ Jack: Yeah. Robert McConnell: I will file something called an information disclosure statement. If I find any patents in the the process, the patentability ⁓ search process. We have both the inventor and myself as a ⁓ registered patent attorney have a duty of candor and disclosure to the patent office. So if we know of prior art that we've think is relevant to the examination, we have to report it. ⁓ so I do that if I've gotten something from the inventor or if I've found something. ⁓ Jack: Mm. Robert McConnell: And ⁓ you know, w and then we wait. We wait for ⁓ a year and a half. ⁓ and then though if there's an office action, I'm gonna look at the office action. There's there actually I should say I'm hoping that there's going to be an office action because if I get a first action allowance, it means I didn't ask for enough. We could have asked for more potentially. ⁓ 'cause it's really a negotiation on the claims. ⁓ Jack: Yeah. For a while. Right. Right. Robert McConnell: you know what you're getting in this application and you want to start with asking for more than you're entitled to. You're supposed to ask for what you're entitled to, the law says. Yeah, yeah, yeah, yeah. But but it's a negotiation. So ⁓ you know, get an office action, I will discuss it with the client. Some of them don't need the client to respond, some of them do. Jack: Why why stick to that? Robert McConnell: And ⁓ you know, handle that process for them. and ⁓ some other things that might happen along the way is there are deadlines for international patent filing that I'm gonna let you know about and I'll let you know about different approaches for for international patentability. ⁓ it's typically one year from the date of filing of the invention, the application, to file internationally and claim priority. and ⁓ You know, I I think it's a topic for an entire hour conversation about international patents, but but that's that's something that I'll remind you about as we go along. And ⁓ yeah, and basically the the advantage of having a patent attorney do this is that, you know, most of the communication get from the patent office on the patent side is completely impenetrable for a non patent attorney. and you know Jack: Probably. Robert McConnell: that my job is to be a translation layer and say, this is what this means and this is what we have to do. ⁓ and you know, that's what I do along the way. so that's that's you know that's kind of the the thumbnail sketch. ⁓ some things that that I also need generally for a patent application that you know think 52 launch generally develops as part of their process is Jack: Right. Robert McConnell: ⁓ drawings, black and white line drawings for for a ⁓ you know a utility or design patent application. and ⁓ you know typically your designers have already developed that so I can use that if if I need to hire a draftsman, my draftsman can do it if if we need to get him involved. and yeah that's that's about it. let's talk about the on sale bar. ⁓ really quickly, which is the deadline deadline to file a patent application, you know, based on an invention. So if you you have one year from the date of first offer for sale, public disclosure, or inclusion in a printed publication to file a patent application for a particular invention. So ⁓ typically ⁓ you know it's better not to come up a c on that deadline ⁓ you You might arrive there by talking about somebody that you're gonna talking to someone and offering it to them for sale, right? but ⁓ you know that that deadline is is really hard to get around and it is not going to be an issue in the examination process. The patent office doesn't ask about it, right? They don't say, ⁓ you've disclosed this. You're te you you're technically supposed to disclose it to them. Jack: Right. Robert McConnell: Because it's relevant to the patentability. But ⁓ but what where that really comes up is in the situation where you've developed a strong business that's covered by a patent, and then someone starts infringing your patent, you go out and sue them in federal court for patent litigation, and then you have to give every document that you've ever written about the invention that's not privileged or confidential to the other side. You know, you could just be sure they're gonna find it and make an issue out of it. So, typically when I work with it it makes the patent it can make the patent unenforceable. Yeah. And and not only that, you can spend hundreds of thousands of dollars fighting on the issue and then lose the issue and be really mad that, you know, you've built a business. Yeah. Jack: And would that just void the patent effectively? Yeah. Yeah, that would be tragic. Yeah, I would be really mad. Robert McConnell: So ⁓ it's better not to get in this place. When I work with 52 launch clients, typically they haven't really offered gone out into the market. and you know, my sort of best practice is let's get something on file, whether it's provisional or non-provisional in the patent office before you're out selling the product or offering it for sale or putting it on a website. Jack: Right. Robert McConnell: And then you just don't have to worry about that on sale bar issue. Jack: Right. Robert McConnell: Yeah. ⁓ so let's see, I want to talk about one last thing that I, you know, I think is really a great option is design patent protection, right? So we talk a lot about utility patent protection, which is covers the function, the way something works. But there's another option which is design patent and it covers the ornamental features of a useful article of manufacture. And I think design patents are great for consumer products. Jack: Right. Robert McConnell: especially for consumer products that are kind of not new. You know, they aren't necessarily entitled to utility patent protection, but if they have a cool design to them, ⁓ the way it looks, you can file a y a design patent application. And they're not as popular, ⁓ but it's a great backup. and they they work a little bit like trademarks in that if an ordinary observer was to look at the the accused device, the one that is similar to the patented device, and think that they were the same device, then ⁓ the the the patent's infringed, right? And so ⁓ that can be very valuable for for somebody who's selling a consumer product. And the other thing about design patent applications is they're less expensive. It's a less complicated application. Jack: Yeah. Robert McConnell: The filing fees are lower. There's no maintenance fees. ⁓ for the for for the life of the patent, ⁓ utility patents have very have the you know increasing maintenance fees over the life of the patent. and ⁓ you know, there's some advantages, right? And so in you know, you could have both utility and design patent protection, or you could have one or the other. And Jack: Right. I didn't know that. Robert McConnell: You know, it's just something that I've been recommending to my clients in situations where maybe utility patent protection isn't appropriate. Jack: Yeah. Yeah, absolutely. We're ⁓ Robert McConnell: Yeah. Especially in the consumer products world. you know, where the way things look is really critical and ⁓ you know, it's really easy for you know, Chinese manufacturers on Amazon to just make copies ⁓ you know, and and sell them and ⁓ yeah, it and just as a side note, you know, when you're talking about an ecosystem like Amazon. Jack: Yes. Robert McConnell: Patents are extremely valuable and it's they're it's much lower cost and easier to get people kicked off of Amazon for patent infringement than it is to go to court and file a a patent infringement lawsuit. And so you know that's one of the big benefits, you know, in in and I mean, what who's not selling on Amazon? You can't sell a consumer product not on Amazon, right? I mean, yeah. Jack: Yes. Right. It's crazy. I mean it it's it's unbelievable. whether people consult with you or us first, it's interesting that those conversations are going to be very similar. It's it's a lot, we ask a lot of the same questions that you do in our initial consultations. ⁓ And ⁓ Obviously, you know that makes sense because we're working with a lot of the same people. Almost everybody that works with 52 Launch works with an IP attorney, not necessarily vice versa, but there's some overlap there. And it starts the same place with us needing to understand the product, what the end design is going to look like, what is the business plan. But then obviously we go in such different directions, and even meeting two is so. different I would assume. But yeah, you know, I think you touched on a lot of the basics, covered some of the more some of the nooks and crannies of this stuff. But no questions on my end. Robert McConnell: For me, ⁓ you know, just on the business aspects of IP law. So it's not really my role to look at someone's business plan or product and say, ⁓ I don't know if this is gonna work, right? ⁓ it's their dream, it's their idea, it's their responsibility to go forward and make it work, right? And I am not in the business of crushing people's dreams by saying I don't think this is a great idea. ⁓ I will tell people when I think it is a great idea. because I but it's also but it is my job to sort of say there's a balancing act, right? And, you know, there are very few people who are wealthy enough to just do everything to make market, protect a product, right? And so it's really a blo you know, there's there's really an investment balancing act and I don't want to have them earmark too much of their Jack: Right. Robert McConnell: initial capital to IP attorneys, right? So it's like it's really about doing what needs to be done at the right stages. and, you know, and sometimes putting off decisions until you really determine if there's a market for your product, right? And sometimes you might even launch a product that seems like it's going to work and then it doesn't, but you learn something in that launch and you change the product and then that one's successful. ⁓ Jack: Mm-hmm. Robert McConnell: And so, you know, it's just really it's important not to spend all the money doing every single protection strategy. you know, it's it's it's but then there are deadlines that come along and they just can't be undone. And so Jack: Yeah. Right. Right. To go back to disclosure. The longer you can wait before disclosing your disclosing your product, the better because then you give yourself that full year from sale to to go through that cycle, to fail fast, and then to do it right the next time without having invested potentially tens of thousands of dollars in intellectual property. So You know, certainly it's our preference when clients come to us and they haven't really put their idea out into the world yet. They're super early. Maybe they just had the idea over the weekend when they were looking for some widget on Amazon that they needed to do something around the house and discovered that it doesn't exist. It's like, yeah, people want all the market research in the world. They want to hear 10,000 people tell them, yes, I would buy this, I would pay this much. But Robert McConnell: It's just it's Jack: It's all those yeses is not as powerful. It's one person actually handing you cash for your your offered good or service. And yeah, it's why we try to get people to market into revenue as just as quickly as we can. Put an MVP out there, sell it, get some revenue going before you start working on the V two and the V three. But yeah. Robert McConnell: People get ri I mean, inventors get very excited and I, you know, I wanna do everything I can to encourage you know, someone a an inventor or a business owner, they are their best advocate. They've, you know, they're the product evangelists. These are the people that go out and make these things happen. And it's not my job to ⁓ you know, I wanna build them up, but also sometimes you know the r the reality set in of the the situation, right? And so we just want to make ⁓ put people in a position where they can be as nimble as prod possible during the process. and not have to you know one of the things that I have happen all the time and I'm g I'll finish with this is, you know, what should I do if I've gone down this process and I've either kind of come on a roadblock in the IP process or the product process Jack: Absolutely. Robert McConnell: But I've already spent all this money, you know, and there's this sunk cost fallacy. And it it the the right answer is almost always cut your losses and move on. But no one wants to hear that. And it's it's really a challenge and not everything's a success. ⁓ so you know, but but really, you know, my job is to to just take someone's dream and try to do the best I can to protect it. Jack: It's strong. Yeah, we feel the same way. Absolutely. Well, if you've made it this far in the episode, thank you. ⁓ I I hope you've learned something. And you know, if anybody listening has a product idea that even they just like to talk to somebody about in a confidential setting, feel free to book a call with us, with Robert. Those, you know, we have an NBA built into our intake form where you set up a time to talk, and we'll talk about your idea with you for an hour and Robert McConnell: Yeah. Jack: No, even if you don't end up working with us, we might be able to to give you some advice. Robert can certainly do the same. Robert McConnell: And I I you know, if you come to my website, McConnellFirm.com, I it's easy to book a an initial consultation right there on the website. And you know, just just in case you didn't know this, I have a very strict duty of confidentiality and attorney client privilege. And so you can tell me it's much stronger than an NDA and I you know, anything that you talk to an IP attorney about. Jack: Yes. Robert McConnell: is ⁓ covered by the attorney CLAG privilege. And that's a good reason to talk to an IT ⁓ IP attorney because when you don't have that, it's all discoverable in the future. And yeah. Yeah. All right. Well ⁓ thanks Jack for asking me to do this. It's good to see you as always and ⁓ happy to do it again whenever you come up with the next movie that we could we have lots to talk about. Jack: Yes. Awesome. Yes, we do. Well, we will certainly have you back. Very much appreciate the time. No. Robert actually coaches the 52 launch team up on some intellectual property stuff. So he's a great resource if you're looking for an attorney. Awesome. Have a good day, Robert. Thank you again. I'll talk to you soon. Robert McConnell: Thanks, Jack. You too. Take care.