Question
We are a SaaS fintech startup based in California. We are told that an early protection of our trademarks is important, but does that mean only the U.S. trademark? If we were to apply in all countries (if we could) wouldn't that get very expensive? What's the usual recommended approach for startups like us?
Answers: 5 public & 1 private
Hello,
My name is Krasimira Kadieva – an European trademark attorney and it is my pleasure to answer your question. Yes, it is true that early protection of a trademark is important. Most of the startups avoid to register their trademark/s at the beginning since they want to be sure that the business will be profitable and also they have a limited budget. However, I really recommend you to register your trademark at least for the territory of the USA. As your business is SAAS fintech startup, I suppose that you will offer your products/ services internationally. It will be really very expensive if you apply for registration in all countries. In this case I will suggest you to file an application for registration in the USA and then file an application for international registration of your trademark for the counties where your market interest is. International trademark registration is administered by the International Bureau of the World Intellectual Property Organization (WIPO). Trademark owners, whose products or services are internationally traded use this system to register their mark internationally in selected countries, which are parties to the Madrid Protocol. The European Union Intellectual Property Office (EUIPO) is also a member of the Madrid Protocol, which means that if you include EUIPO in your application for international registration then the protection will be spread on the territory of all member states of the European Union. In this case with just two applications (application for registration of a trademark in the USA and application for international registration) you can protect your trademark for all the countries where your market interest is. It is very important to be informed that the protection is only for the territory on which your trademark has been registered. This means that identical or similar trademarks can be registered by other person or legal entity for identical and/ or similar goods or services on a territory where you do not have protection. You will take the decision based on your market interest as well as the available funds you have for the registration of your trademark. I advise you to consult a professional trademark attorney to perform a preliminary trademark search in order to avoid opposition proceedings and be sure that you do not infringe earlier rights. A professional trademark attorney will also help you choose the appropriate goods and/ or services from the Nice classification and file the application for registration. I am wishing you a successful registration of your trademark. With best regards,
Krasimira Kadieva
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