Anyone who is interested in trademark law and is reading this should do what I do: Read blogs by pure trademark lawyers* such as Marty Schwimmer’s Trademark Blog and John Welch’s TTABlog® (and some law professor blogs, too, but besides Eric Goldman they mainly never link to lawyers and I guess today I’m in the mood to return the favor). But also they should subscribe to the International Trademark Association “list,” “TMtopics.”
Everyone who’s anyone at least looks at this email list, and many of the everyones who are real trademark law whizzes generously share their expertise, which is sometimes dizzying in its profundity. It’s okay if you don’t read the INTA list every day, too — it can be a bit much sometimes, especially for civilians — but your trademark learning will grow and grow the more you do. (UPDATE: Never mind. The closest substitute, now widely accepted, is Carl Oppedahl’s E-trademark’s list.)
Here, for example, is a great pickup in connection with an issue that cropped up a years ago when the Second Circuit ruled, in International Star Class Yacht Racing v. Tommy Hilfiger U.S.A., that a defendant that searches federal applications and registrations before choosing a trademark — which is easier than ever these days due to the online TESS system — and then turns out to have infringed on someone else’s common law mark is not an “innocent infringer.” To the contrary, ruled the court, such a defendant has acted in bad faith (and had to suffer an enhanced damages award) by failing to search common law uses, which is done by one or two fairly pricey trademark search services.
That made quite an impression on trademark lawyers, if you weren’t around then.
So the question that came up this week on the list was: “Is it malpractice to tell a client it can lawfully use a mark when you only conduct a search via TESS?” Among the useful comments I most appreciated and learned from this one by crack trademark attorney Dan Ballard (@ballard_ip):
I think it is.
The following link is to a compilation of Second Circuit law on the intersection of trademark searching and bad faith infringement. See http://j.mp/6J6Sq3 .
After Hilfiger, the Second Circuit decided Streetwise Maps, Savin, and Star Industries – all of which walk back the apparent trademark search requirement created by Hilfiger. These latter cases hold that a trademark owner cannot prove bad faith infringement solely by noting the fact that the infringer did not conduct a trademark search — either properly or at all. Flipping that rule means that the failure to conduct a search is not, by itself, conclusive evidence of bad faith infringement.
But back to the original question: is it malpractice to tell a client it can lawfully use a mark when you only conduct a search via TESS? I think it is.
I do, too. Because it is. And adding a Google search helps — but not much. Failure to conduct a search (a real search) isn’t conclusive evidence of bad faith, but it’s still evidence. And it’s still … failure to conduct a search.
Trademark-wise, that’s not where you want to be.
UPDATE: Some time after I wrote this post I was subsequently engaged to prepare an expert’s report in a malpractice case against a law firm that was alleged to have failed to properly clear a trademark for a startup company. The case settled and ultimately I didn’t testify, so the report never became public and I have not yet figured out how to convert it into “scholarship” without compromising confidentiality. Which is my way of saying… try me.
* Yes, the “pure” modifies “trademark lawyer,” not “lawyer.”