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Does the attorney who performed a trademark search have any liability (trademark infringement)?

Miami, FL |

I hired an attorney to do a trademark search and register a trademark. The attorney's report stated their search "produced
favorable results"

We went ahead and filed it. Our application was refused due to 'likelihood of confusion' with a mark not mentioned in the trademark search. Our attorney suggested to respond on the basis that our company provides vastly different services. We declined because we really had no interest in the business or the mark and abandoned the mark.

A year later we are being sued by the owners of the mark the caused our refusal. They have no evidence of infringement other then what information was provided when we filed (there was nearly 0 business done with this mark).

Does this attorney have any liability for our current suit?

Attorney Answers 5


Liability for what wrongful act? Your attorney was of the opinion that the two marks would be used to brand unrelated services and, therefore, your potential mark would not infringe the existing mark. You chose not to put that conclusion through the test of a registration evaluation. And, even if you did, Trademark Examiners do not have the final say as to whether services are sufficiently related to likely cause consumer confusion. You apparently think your attorney did something wrong. What?

The above response is general information ONLY and is not legal advice, does not form an attorney-client relationship, and should NOT be relied upon to take or refrain from taking any action. I am not your attorney. You should seek the advice of competent counsel before taking any action related to your inquiry.

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From the facts you state, there is nothing that cited registrant can sue for. You abandoned or are abandoning any effort and intent you had to use and register the mark; you never did use the mark; and the goods/services may not even be related. As soon as the cited registrant and potential plaintiff is aware of that, they should promptly go away. And if you have your trademark searching attorney explain that to them quickly for possibly an hour of his/her time, that prospective plaintiff should more clearly get the message that they have no grounds to sue you.

Lastly, BTW, I'm not aware of any experienced, qualified trademark attorney guaranteeing that an examiner won't refuse to register your mark or that a third party won't oppose your application or sue you for trademark infringement and that would be the case for ANY mark. At best, a TM search gauges your overall risk of trademark infringement liability, registration refusal, and perhaps distinctiveness, enforceability and registerability. Usually, the more you invest in that process, the more accurate or detailed can be your results.

Alex Butterman is a trademark attorney with Staas & Halsey LLP (, a Washington, D.C. IP boutique law firm. Alex is admitted to the bars of Washington, D.C., New York and New Jersey but, unless otherwise specified, the answer is intended to be general enough to apply to any U.S. state and based primarily upon his knowledge and experience with applicable federal laws. The opinions expressed are those of the author and do not necessarily reflect the views of his firm, Avvo or other attorneys. This answer is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship or obligations are established herein, although consulting an attorney to discuss your specific situation is strongly recommended. This is especially true of trademark law because TM law is so fact-specific and full of esoteric nuances and exceptions that could easily result in a critical legal error without proper advice from experienced trademark counsel.

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Waitaminit. So your company is a defendant in a lawsuit for trademark infringement, but a year ago it had not even begun to use the trademark and had dropped prosecution of the Intent to Use trademark application.

Seems to me from what you say, that the plaintiff doesn't have a valid claim for relief. So it should be a trivial matter to settle the case or get it dismissed.

If so, where's the harm to your company?

I infer that you figure that if the attorney you write about had rung the bell and told you not to file the ITU application, then you wouldn't even have the nuisance of having to do the relatively small tasks requisite to getting the current litigation resolved. Maybe so, maybe not. Sounds pretty remote to me.

But as a practical matter, you can either spin your wheels writing about it anonymously on this discussion board as a hypothetical matter, or you can call up that attorney and give him/her the opportunity to respond to your speculation and perhaps redeem him/her self in your esteem. Your choice.

This posting is intended for general education and isn't "legal advice." It doesn't create or evidence an attorney-client relationship. You are encouraged to engage an attorney in the pertinent jurisdiction for confidential legal advice on matters of any importance. -Gerry J. Elman, J.D. Elman Technology Law, P.C. Swarthmore, PA

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I agree with all my colleagues here. The lawyer would have no liability because the lawyer has no control over the actions of a third party. Anyone is at least capable of filing a court complaint for almost any reason and in your case, as noted by the others, there does not seem to be any basis for the complaint unless we are missing something here.

I suggest you consult a TM lawyer in private to get some insights and to make sure all the relevant facts are clearly understood.

Most of us here, including myself, offer a free phone consult.

Best regards,
Natoli-Lapin, LLC
(see Disclaimer)

The law firm of Natoli-Lapin, LLC (Home of Lantern Legal Services) offers our flat-rate legal services in the areas of business law and intellectual property to entrepreneurs, small-to-medium size businesses, independent inventors and artists across the nation and abroad. 866-871-8655 DISCLAIMER: this is not intended to be specific legal advice and should not be relied upon as such. No attorney-client relationship is formed on the basis of this posting.

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"Favorable results" is not a guarantee of non-infringement, it is a guarantee the attorney thought the results were favorable, period.

Apparently, your claim against the attorney is for failing to mention a mark that the USPTO examining attorney found and deemed conflicting. That is, you think the attorney blew the search. You have to prove negligence in doing the search, and the missed mark does not prove negligence only that the mark was missed.

You declined your attorney's advice to argue about dissimilarity of services and now you want the attorney to be responsible for your failure to heed the attorney's advice? You know that won't fly. Guess what, if you want to hold an attorney responsible for his/her advice, you need to follow the advice. You did not give a chance, apparently to save legal costs. That choice was yours, not the attorney's, so the consequences are yours to bear. Sometimes spending a little early on legal costs saves a lot of later legal costs. This is likely one such instance.

You abandoned the mark but are being sued for infringement? That makes no sense. Likely you just got a cease and desist letter with a threat of suit and not a suit at all. Or you ignored one and then got sued, and now want to blame the attorney for your failure to respond. Either way, the responsibility is yours, not the attorney's since you did not allow the attorney to defend the mark earlier.

Who is handling the defense of this? I hope not you, as you seem error prone, although since you are here seeking free advice, I suppose it's you. My guess is you, probably you hope to get the attorney to pay for the defense and are looking for arguments to convince the attorney to do it for free. My suggestion is to just call the attorney and ask for a discounted rate in view of the "blown search". You are not entitled to it, so you want to be diplomatic.

You still likely want the attorney to defend this since the attorney is already familiar with it, as that should save money. A new attorney will have to charge to get familiar with the case before doing anything and will likely charge full undiscounted rates for defending this. Be diplomatic, not accusatory, and plead for help with your current attorney and you may be pleasantly surprised. In such situations, although I have yet to ever have a blown search, I would pleasantly surprise the client and just zero bill my time, but not expenses. That would be especially true if a quick call or letter would resolve it, as seems likely here.

I am not your lawyer and you are not my client. Free advice here is without recourse and any reliance thereupon is at your sole risk. This is done without compensation as a free public service. I am licensed in IL, MO, TX and I am a Reg. Pat. Atty. so advice in any other jurisdiction is strictly general advice and should be confirmed with an attorney licensed in that jurisdiction.

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