U.S. law recognizes the sanctity of communications between attorneys and clients; thus, the law will normally protect such communications from disclosure to third parties under the policy of attorney-client privilege. In Upjohn Co. v. United States, 449 U.S. 383, 389 (1981), the United State Supreme Court held that the primary purpose of the attorney-client privilege is to “encourage full and frank communications between attorneys and their clients, and thereby promote broader public interests in the observance of law and administration of justice.”
The attorney-client privilege rule appears to be straight forward, but there are misconceptions about the breadth of privilege; namely, it applies to everything and every piece of information given to an attorney. But the attorney-client privilege protects only the legal advice given to a client, not the underlying facts given to an attorney. With respect to trademark searches, the rule is settled that an attorney’s opinions relating to a trademark search are privileged but the trademark search itself is not privileged. See Fisions Ltd. v. Capability Brown Ltd., 209 U.S.P.Q. 167 (T.T.A.B. 1980).
There is value in having an experienced, trademark attorney review search results. But its not worth the extra money for an attorney to conduct a trademark search if the rationale is to shield the results from discovery by another party.