Here is what important court decisions are saying about whether a trademark user should conduct a search:

Sands Taylor and Wood v. Quaker Oats Co.

It was defendant's policy to have the legal department approve all advertising prior to its appearing in any medium. Although the legal department reviewed the Thirst Aid campaign in February or March of 1984 around the time the commercial was being produced, that review did not include a discussion of trademark matters because defendant's attorneys thought that the theme did not implicate a trademark problem. That determination was made without the benefit of a trademark search.

 

"The totality of the evidence reveals a lack of good faith by defendant in its use of plaintiff's mark."

 (Court ordered Quaker Oats to pay over twenty-four million dollars ($24,000,000.00) to the Plaintiff

Eurotech Inc. v. Cosmos European Travels AG

A trademark search to identify any marks substantially similar to the proposed domain name may be warranted in view of a recent cybersquatting decision. The U.S. District Court for the Eastern District of Virginia recently found that a domain name registrant’s failure to conduct a trademark search before obtaining the domain name registration represented a "bad faith" registration under the Anticybersquatting Consumer Protection Act (ACPA). Finding that the registrant had engaged in acts of cybersquatting and trademark infringement, the court transferred the domain name to the trademark owner.

International Star Class Yacht Racing Association v. Tommy Hilfiger, U.S.A

Court of Appeals for the Second Circuit held that an infringer's failure to follow the advice of counsel to perform a full trademark search must be taken into account in assessing the infringer's bad faith.

 

135,000,000 Reasons to Conduct a Full Trademark Search

Trovan Ltd. v. Pfizer, Inc.

The highest trademark infringement verdict in U.S. history was handed down against the pharmaceutical giant, Pfizer.  The award against Pfizer was $135,000,000 in punitive damages and $8,000,000 in compensatory damages.  Pfizer took an appeal.  The Ninth Circuit set aside the jury verdict and deleted $135,000,000 from the total damage award. In making its finding, the court pointed to a number of factors establishing good faith, including evidence that the defendants had conducted a full trademark search before adopting and using the mark