Where should I register a trademark?

Nelson Graves Founder of News-Decoder

February 10th, 2015

I am working on a start-up based in France. It will be an information and educational service that will sell subscriptions around the world. I have submitted a request to trademark the name in France. My question is whether I should do the same at the WIPO and/or at the USPTO. Thank you.

Loren Pearson Partner at Assouline & Berlowe, P.A.

February 10th, 2015

It depends.

First, whenever deciding not to file in a foreign jurisdiction after the six-month priority date (i.e. six months after your French filing date), you risk a third party establishing senior rights by filing a similar trademark for similar/related goods/services.  That being said, spending on international IP protection can be an unwise drain on many startups.

When advising clients on foreign trademark protection, I have them consider several factors.
  • Do you have concrete plans for foreign countries (i.e. sales, hiring sales reps, marketing)?  If not, consider waiting.
  • How is the French prosecution proceeding?  Any issues?
  • Do you have any particular issues with infringers?
  • Does an investor require you to have protection?
WIPO vs. filing in each country directly
  • An internatinal trademark application under the Madrid protocol (i.e. in WIPO) can streamline the foreign filing process.  However, any resulting registration is susceptible to cancllation within its first five years if your French application is not allowed or is canceled.  So, if you are having any issue in France, avoid the Madrid Protocol.
  • The alternative is to file directly in each country.  You will be paying middlemen but the results will be better.  A qualified IP attorney should have a network of vetted, qualified foreign trademark attorneys to whom they can refer you.
If you need any more advice about balancing your needs versus expense, I would be happy to help.

Wayne Dinzey CEO DPD Software Ltd.

February 10th, 2015

My advice to you would be to find a lawyer who knows the rules.  There are offices that specialize in and understand all the rules governing renewal fees etc.  It seems to be a tricky thing to manage.  I have a client here in Canada who does this for companies all over North America and they manage your trademarks for registration almost anywhere in the world.  You can try them if you wish as when we built the application they use to track this we had to add features to manage not only direct clients but clients from other law offices in North America who use them and up charge their clients. Sorry but I cannot recall which body France fell under call them and ask.  You may get some free advise if they think they may be helping a future client...:-)

Ade & Company Inc - (204) 947-1429, is a good start.

Nelson Graves Founder of News-Decoder

February 11th, 2015

Thank you very much, Wayne and Loren, for your very useful answers.