When a Trademark Search Becomes Part of a TTAB Discovery Fight

Before adopting or applying to register a trademark, businesses frequently conduct some form of trademark clearance. Sometimes that means a quick search of the USPTO database. In more sophisticated situations, a company may order a comprehensive trademark search report and ask counsel to evaluate the results.

Months or years later, that seemingly routine clearance process can become an issue in a Trademark Trial and Appeal Board proceeding.

Suppose an applicant is defending a trademark opposition and the opposer learns that the applicant conducted a trademark search before adopting its mark. Can the opposer demand the report during TTAB discovery? Can it ask what the applicant knew about the opposer before filing its application? And does attorney-client privilege automatically prevent the report from being disclosed?

The answer is more complicated than simply labeling a document “privileged.”

Understanding the distinction between discoverability, privilege, work product protection, and admissibility is important when trademark search materials become part of a TTAB discovery dispute.

Why Trademark Search Reports Can Become Relevant in TTAB Proceedings

Discovery before the TTAB allows parties to seek information relevant to the claims and defenses in the proceeding, subject to the applicable procedural rules and limitations.

A trademark search report may attract attention because it potentially provides information about what a party knew before adopting or applying to register its mark. Depending on the claims and circumstances, an opposing party might seek information concerning when a search was conducted, who requested it, what marks were identified, and what happened after the results were received.

This does not mean every trademark search report must be produced.

The important distinction is between information that may fall within the permissible scope of TTAB discovery and communications or materials protected from disclosure by recognized legal privileges or protections.

That distinction can become particularly important when attorneys were involved in the clearance process.

Is a Trademark Search Report Protected by Attorney-Client Privilege?

Attorney-client privilege generally protects confidential communications between an attorney and client made for the purpose of obtaining or providing legal advice. But the existence of an attorney somewhere in the process does not necessarily make every related document privileged.

Consider a third-party search company that generates a report containing database results, registrations, applications, and other publicly available information. The underlying facts contained in that report do not necessarily become privileged simply because an attorney ordered or reviewed it.

The legal analysis communicated by counsel presents a different issue.

If an attorney reviews the search results and advises the client about the availability of a proposed trademark, likelihood of confusion risks, registration concerns, or enforcement exposure, those confidential legal communications may qualify for attorney-client privilege.

This creates an important distinction in TTAB discovery. A factual search report and an attorney’s confidential analysis of that report are not necessarily treated the same way.

The Work Product Doctrine Creates Another Layer of Protection

Attorney-client privilege is not the only doctrine that may arise. The work product doctrine can also protect certain materials prepared in anticipation of litigation.

Timing and purpose matter considerably here.

A routine trademark clearance search conducted while a company is selecting a new brand may present a different work product question from research commissioned after a trademark dispute has already developed. If litigation is reasonably anticipated and counsel commissions research to prepare for that dispute, stronger work product considerations may arise.

This is why blanket assumptions can be dangerous. Not every search report is privileged, and not every document involving an attorney automatically qualifies as work product.

The circumstances surrounding the creation of the material matter.

Can an Opposing Party Ask Whether a Trademark Search Was Conducted?

Another important distinction exists between requesting the actual report and asking factual questions about the clearance process.

During TTAB discovery, a party might ask whether a trademark search occurred, when it occurred, or who performed it. Objections may still apply depending on the specific request, but parties should not assume that every fact surrounding privileged legal advice is itself privileged.

This becomes particularly sensitive when responses begin revealing the substance of counsel’s advice.

For example, there is a meaningful difference between acknowledging that a search occurred and disclosing what an attorney concluded after reviewing the search.

Experienced trademark attorney should therefore examine each discovery request carefully rather than treating the entire subject of trademark clearance as categorically protected or categorically discoverable.

Waiver Can Turn a Protected Communication Into a Discovery Problem

Even when attorney-client privilege applies, the protection can potentially be waived.

Waiver issues may arise when privileged advice is disclosed to third parties or when a party affirmatively relies on legal advice in a way that places the substance of the communication at issue.

This can create a difficult strategic problem in trademark litigation. A party may want to explain that it carefully investigated potential conflicts before adopting a mark. But using counsel’s legal advice as part of that defense may create questions about whether the party has opened the door to discovery concerning those communications.

Selective disclosure can also create problems. A party generally cannot expect to reveal favorable portions of protected legal advice while withholding related communications necessary to understand the subject fairly.

For that reason, arguments involving reliance on trademark clearance advice should be considered carefully before they are introduced into a TTAB proceeding.

Does Knowledge of Another Trademark Prove Bad Faith?

One reason parties may pursue trademark search reports is the possibility that the report identified the opposing party’s mark before the challenged mark was adopted.

But prior knowledge should not automatically be confused with bad faith.

Businesses routinely encounter existing trademarks during clearance searches. The mere fact that an applicant knew another trademark existed does not, standing alone, establish an intention to trade on another company’s reputation or create consumer confusion.

The surrounding evidence matters.

A TTAB dispute may involve questions about why a particular mark was selected, how closely the parties’ marks resemble one another, the relationship between their goods and services, and other facts bearing on the claims actually before the Board.

A search report can therefore be one piece of a much larger factual record rather than a shortcut to proving improper intent.

Discoverability Does Not Automatically Mean Admissibility

There is another distinction that deserves attention: discovering a document does not necessarily mean the document will become evidence at trial.

TTAB discovery and TTAB trial practice serve different functions. Discovery allows parties to obtain information and investigate their cases. Trial requires evidence to be properly introduced into the record under the applicable Trademark Rules and Board procedures.

A party that receives a trademark search report during discovery cannot simply assume that the report automatically becomes part of the trial record.

This distinction is particularly important in Board proceedings because evidentiary mistakes can leave seemingly important documents outside the record when final briefing begins.

Why Trademark Clearance Practices Matter Long Before Litigation

The larger lesson reaches beyond discovery procedure.

Businesses should approach trademark clearance with the understanding that a later dispute may place aspects of the adoption process under scrutiny. Informal emails, internal discussions, search results, and communications with third parties can take on greater significance once a trademark opposition or cancellation begins.

That does not mean businesses should avoid conducting searches. Quite the opposite. Thoughtful trademark clearance can identify potentially serious problems before significant resources are invested in a new brand.

The lesson is to conduct the process carefully.

Businesses should understand which communications are intended to obtain legal advice, who is included in those communications, how sensitive materials are handled, and the risks associated with later disclosing privileged advice.

Trademark Search Reports and TTAB Discovery Require a Careful Analysis

So, can a TTAB party discover an opponent’s trademark search report?

Sometimes the report or information surrounding it may be discoverable. Sometimes attorney-client privilege, work product protection, or another valid objection may limit disclosure. Frequently, the answer depends on who created the material, why it was created, when it was created, what information it contains, and how the party has treated that information since its creation.

That is precisely why these disputes should not be reduced to the assumption that every attorney-related document is privileged.

For companies involved in a trademark opposition or cancellation, discovery strategy can have consequences extending well beyond the individual document being requested. Before producing, withholding, or relying upon trademark clearance materials, it may be valuable to have trademark counsel evaluate the specific circumstances and applicable protections.

Your brand is worth everything. Protecting it includes thinking carefully about the record being created before a dispute begins and the information that may become important if that dispute eventually reaches the TTAB.