Good record keeping practices should be followed when searching trademarks, and there are a few reasons why this is the case. The first reason is simple and self-interested. As a trademark searcher for others, you want a CYA (i.e., cover-your-ass) file in the event a trademark dispute occurs. And you especially want this CYA file in the event your client choses a name that has a questionable, clearance report. As an aside, under no circumstances should a naming firm or trademark searcher indemnify a client for trademark infringement. You are not a trademark lawyer, and should not put yourself in the position as insurance company for your clients.
But we digress. The second reason to follow good record keeping practices is because plausible deniability is not going to be a defendant’s friend in a trademark dispute. The lack of documentation surrounding a defendant’s trademark search always get’s the plaintiff’s attorneys worked up. Any testimony given about the search including its details is always met with arguments of bias and self-interest. As a trademark searcher, if your documents and notes as a lay person corroborate the trademark attorney’s legal review, then you remove one distraction a plaintiff’s attorney can make to a jury.
The third reason is for historical reference. As a trademark owner, you hope to be in business for a long time, maybe even generations. Invariably, your brand will have to modernize over time. Having a record of why the trademark was selected in the first place and what existed at the time is helpful information to have when deciding how to rebrand. Not too often when more information was unhelpful.
Here are some practices to follow when searching trademarks:
- Save your search equations, including those that you ultimately did not use;
- Save your search results. If you use a trademark search engine like BOB, you can download your search results in a PDF or Word format. If you are manually searching the USPTO database, print the TESS search results and any notable individual records;
- Save any additional investigation taken on a particular individual mark;
- Save any notes taken about the search or about the mark in terms of the meaning or inspiration for the mark; and
- Save the ultimate, lay opinion on the availability of the mark.
Keep in mind that all of these documents are discoverable in a lawsuit and will not be protected by the attorney client privilege. Keep this in mind as you preparing any documents, but don’t let that discourage you from employing good record keeping practices.