Intellectual Property

CLE Luncheon October 20, 2003
Trademark Searches and Advice of Counsel

When a client asks whether its proposed trademark is protectable and free to be used without infringement, the attorney is generally expected to procure and review a "search" consisting of several hundred pre-existing relevant federal and state trademarks, company names and domain names, and on that basis render an availability opinion and advices -- all quickly and inexpensively. In glaring disproportion, a wrong answer leading to infringement litigation with the owner of one of those prior marks or names can result in costly, protracted scrutiny of the scope and adequacy of the search and the reasoning behind the attorney's conclusions.

Richard L. Kirkpatrick, a trademark law practitioner and author of the treatise Likelihood of Confusion in Trademark Law (Practising Law Institute) will speak about trademark law principles affecting clearance opinions and related duties, tips and pitfalls. Topics included:

- Trademark law context
- Recent cases
- Duty to search and professional responsibility
- Scope of the search; nature of the opinion
- Consequences of failure to search or insufficient search