Here is a common situation:
Some branding firms have lawyers they use for trademark clearance searching. Those firms generally deliver more than just the trademark search results to the branding firm. A clearance opinion at some level accompanies the trademark search results. The branding firm then takes those trademark search results and creates a shorter list of names that is presented the client. Usually, the client is advised by the branding company to retain a trademark lawyer to conduct a trademark search on the shorter list of names. A second trademark search is conducted by the client’s trademark lawyer, and the trademark lawyer delivers the trademark search results and a clearance opinion to the client. Finally, the client informs the branding firm of which name it is going to adopt.
The lurking danger in this scenario is when the client, branding firm, and attorney forget that while they are all working towards a common goal their individual relationships need to stay independent. We discussed in a prior post that trademark search results cannot be protected through the attorney-client privilege or work product doctrine, but any opinion interpreting those results can be protected. When a communication is privileged, the party asserting the privilege does not have to disclose that communication to anyone, which is important in the trademark context because more often than not there is some debate about the availability of the mark.
The attorney-client privilege provides protection to clients asking their lawyers for legal advice, or providing the facts that the lawyer needs. This privilege can be waived when the privileged information is shared with a third-party that does not qualify as the functional equivalent of an employee. When this waiver happens, at a minimum, the individual communications can no longer be kept secret and in some cases a broader waiver that the subject matter contained in the communications is no longer privileged . In the context of a trademark dispute, this means all communications involving the availability of a proposed mark.
With this background, let’s go back to the example we identified at the beginning of this post. When the branding firm communicates the trademark search results it conducted to the client, only the search results should be disclosed. The branding firm should not disclose even one opinion about the availability of a mark to the client. This also includes trying to pass off the trademark lawyer’s opinion as the branding firm’s opinion. Likewise, the client should not share the opinion of its trademark lawyer with the branding firm.
Communications should be separate. The trademark lawyer should not be copied on communications with the branding firm and the branding firm should not be copied on communications with the trademark lawyer. This same rule goes for meetings and telephone calls. Whenever a legal discussion is going to occur, this needs to occur separate from the branding firm or trademark lawyer as the case may be.
When it comes to discussing the search results, all that should be said is “the trademark lawyer said it is or is not available.” As a branding firm, if you are questioning the trademark search or advice, you should advise your client to have its trademark attorney provide a second opinion.