Courts frequently use search reports when considering third-party use of a mark. See Estee Lauder, Inc v. The Gap, Inc., 108 F.3d 1503, 1511 (2d Cir. 1997)("The latter finding is amply supported by the trial evidence that, prior to Lauder's ITU application, there were more than 70 trademark registrations, pending applications for registration or renewal, or publications-for-opposition that incorporated the term 100%, and that some of those marks were for cosmetic products."); Petro Stopping Centers v. James River Petroleum, Inc., 130 F.3d 88, 93 (4th Cir. 1997) (Defendants "submitted evidence showing that over 2700 businesses in the United States use PETRO as part of their name. The company also submitted evidence showing that 117 third-party federal registrations or applications for registration contain the word PETRO, sixty-three of which are for use in connection with petroleum or fuel-related goods and services."); Amstar Corp. v. Domino's Pizza, 615 F.2d 252, 259-60 (5th Cir. 1980)(" The extensive third-party uses documented in this case were entitled to much greater weight than were accorded them by the district court."); Children's Medical Center of Dallas v. Columbia Hospital, 2006 U.S. Dist. Lexis at *15-17 (N.D. Tex. 2006) (holding that expert's reliance on a trademark search report prepared by NameProtect satisfied the requirements of Rule 703 and that the witness could base his opinions on such report); Charter Nat'l. Bank, 2001 U.S. Dist. Lexis 13919, at 9 stating "after an examination of the on-line Yellow Pages, a search submitted by defendant of "charter" on the U.S. Trademark Electronic Search System ("TESS"), and a Dun & Bradstreet report on "charter national" submitted by defendant, it is clear to this court that "charter" is a term used frequently to describe banks and other businesses."
The reliability requirement should not be applied too strictly. Paoli, 35 F.3d at 742. The Federal Rules of Evidence demonstrate a preference for admitting evidence having some potential for assisting the trier of fact and for dealing with the risk of error through the adversary process. See Daubert, 509 U.S. at 588-89.
Rule 703 provides "If of a type reasonably relied upon by experts in the particular field in forming opinions or inferences upon the subject, the facts or data [upon which the expert bases an opinion or inference] need not be admissible in evidence in order for the opinion or inference to be admitted." Fed. R. Evid. 703.
Courts and expert witnesses often rely upon search reports to demonstrate third-party use of a mark. In addition, courts have found that the failure to perform an adequate trademark search is grounds for a finding of bad faith and demonstrates a lack of care in adopting a mark. The Second Circuit Court of Appeals recognized the importance of trademark searches in Int'l. Star Class Yacht Racing Ass'n., Plaintiff-Appellant, v. Tommy Hilfiger, U.S.A., Inc. 80 F.3d 749, 753-54 (2d Cir. 1996) "Hilfiger's choice not to perform a full search under these circumstances reminds us of two of the famous trio of monkeys who, by covering their eyes and ears, neither saw nor heard any evil. Such willful ignorance should not provide a means by which Hilfiger can evade its obligations under trademark law."
The most widely circulated book on trademark searching provides "A trademark search is "preventive medicine". Like other forms of preventive medicine, it sometimes can be postponed or forgotten in the face of more immediate demands. A trademark lawyer's most important mission is to be an advocate, leading the client to recognize the need for searching." (Glenn A. Gundersen, TRADEMARK SEARCHING: A PRACTICAL AND STRATEGIC GUIDE TO THE CLEARANCE OF NEW MARKS IN THE UNITED STATES, p. 5-6 (2d ed. 1994). Further in his book, Gundersen states, "Although many on-line search resources are available to trademark lawyers today, most practitioners still rely to a great extent on outside search firms that specialize in trademark searching."
