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We are about to launch our new B2C startup (based in Germany targetting the German-speaking market first, including Germany, Austria, Switzerland), but hopefully later expanding to English-speaking countries.

The product is in quite a niche marketplace. Aimed at students and providing some kind of a learning platform. We're not anywhere near the next-big-thing such as instagram.

We have come up with a fairly unique name, and already registered a few domains with .de, .com, .net, etc.

We are now considering whether to kick-off a trademark application process, first in Germany, then in the EU, then elsewhere (US?). However, we are not sure if this is too premature, if it's even necessary unless we become really big enough to have a competition or someone with a keen interest in either suing us, registering our own name as their trademark and so on. The cost is not huge, but certainly mounts up for a small, under-funded startup company...

What is the best course of action? Ideally taking as little risk with as little spend upfront. Do we really have to worry about this now?

Most advice we hear seem to be on the side of caution, always assuming the worst-case-scenario, what-if "big fat publisher" sues you, or what if "sneaky competitor" grabs a similar name and trademarks it before you - how likely are these scenarios in practice?

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I would wait until you know your startup is going to make it. Once you know for sure that it's going to work then it's a good idea to protect yourself. If you still don't know if you have something and you're not profitable yet then I think it's too soon.

Only you know what threshold means "yes, this worked, we have made it". I would do it then though.

If you overspend to soon, you will be way to tied to the idea to give it up if it's a failure or to pivot if it's the right thing to do.

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Your answer is 100% personal opinion without even anecdotal evidence to support the argument. – dnbrv Apr 22 '12 at 21:32
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@dnbrv that is absolutely correct. I would have thought on a site that people are asking for advice... opinions are appropriate. – Joel Friedlaender Apr 23 '12 at 0:10
Given that this site asks for "practical, answerable questions", pure opinions aren't the best way to answer them. – dnbrv Apr 23 '12 at 1:10
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I don't see why a practical, answerable question can't be answered with someones personal opinion. I think it would be a shame if people only answered when they had evidence to support their argument. You can see the answers I have been giving in my profile, I rarely have evidence to support it but I think I have added value to the site. Often the people posting questions have agreed. – Joel Friedlaender Apr 23 '12 at 1:17
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Thanks @JoelFriedlaender and dnbrv. I do find this answer useful. That said, of course I would appreciate any facts or figures to support any opinion if it's available. My feeling is that there's a high degree of speculation and scaremongering when it comes to this area of copyright, trademarks etc. Would be very keen to know what's the practical or actual risk however. Also very good point about agility and being able to pivot the less you spend. – Yoav Aner Apr 23 '12 at 7:26
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You are more likely to be threatened by a larger, established entity with an existing trademark than a small newcomer that doesn't have the legal budget to do so. With that in mind, you can do some research on existing marks that may be similar to yours in the countries you wish to file in - Most countries have online trademark search engines. If you do find similar marks, then it might be wise to change your trademark if you aren't too committed to your current one.

If your startup is only doing a test launch right now, then registering a trademark is a bit premature, especially since you don't have to commit to your existing mark for the sake of your business. If someone else makes a claim against your mark, just change it - your customer base is small enough to adapt and for you to reach out to. It makes more sense for a trademark registration to correspond with a launch that hits a wider audience or generates a significant amount of revenue to justify the filing cost. In some jurisdictions like the US, you are automatically protected by common law simply by being the first to use the mark commercially (you have to be able to prove it, of course), and the prior use common law protection also has the ability to challenge already registered trademarks.

Have a look at the Madrid System for the International Registration of Marks and see if the cost is reasonable for you. The process is much easier than filing separately in each country.

The fee schedule is here.

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+1 The biggest and probably the only thing Yoav Aner needs to worry about is someone in another Country loving the idea and filing trademarks there. Then when he expands there internationally having to pay them off. At a minimum do the necessary Trademark searches make sure you aren't infringing on anyone else. If you aren't proceed on with your business until you are in a financial position to spend the money on the proper process. – Ryan Doom Apr 25 '12 at 2:51
Trademark squatters generally don't register for the mark until they notice some level of success. If your company is already somewhat successful, then you should have the financial capacity to register your trademark internationally. – Henry the Hengineer Apr 25 '12 at 2:56
Thanks for the additional info. Very useful! +1 – Yoav Aner May 1 '12 at 9:03
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Although I'm not an attorney, under US Federal law I know that when it comes to a business name, technically the rights for it go to the person who uses it first for commercial purposes - however as with copyrights, while registering for a trademark initially is not required, the initial costs for the setup probably are much lower than the massive legal fees you would be paying if you end up with a dispute down the road.

I'm not sure about international law however, but I believe when it comes to intellectual property, the US follows an international convention which is shared with Europe and many other developed regions which provides uniform guidance/protections.

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