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Tips for trademark settlement discussions

Posted by ipelton on: May 14th, 2012

Most writing and analysis regarding trademark issues assume an end result in court (or at the USPTO) and a black and white answer: the complaining party is successful in obtaining a judgment (or sustaining cancellation/opposition) or not. But in reality, the great majority of trademark disputes are settled by the parties themselves. Trademark settlements come in a variety of flavors, and early review of the form and substance of possible resolutions may help better position the parties for a resolution that is quicker, less expensive, more favorable, and less risky. Of course, every case is unique and any approach to settlement will hinge on many factors.

This week, I am leading a roundtable discussion at the INTA® annual meeting on this very subject. I think it ought to be the subject of a lot more of the books and other materials written about trademark protection and  infringement.

Here are some of the issues I for discussion at the roundtable this week. As you can see, settlement can take many forms, come at any stage of the proceedings/dispute, and involves almost endless possibilities. The talking points below are in no way meant to be comprehensive, but serve as possible considerations and issues to discuss.

I. Prelude to settlement discussions

  • Cease and desist letter
  • Telephone call
  • Filing with TTAB
    •  Extension of time
    •  Opposition/Cancellation
  • Infringement Action
    • Filed but not served
    • Filed and served
  • Others

 II  Form of initial overture

  • Telephone call
  • Short proposal (bullet points via email or letter)
  • Full draft Agreement
  • Allowing parties to discuss without counsel
  • Other

 III.  Once involved in a dispute, timing of settlement discussions

  • Before filing of Answer
  • Before discovery
  • During discovery
  • After discovery
  • After Motion for Summary Judgment filed
  • During Appeal
  • Other

IV.   Dealing with unbalanced parties

  • Big company vs small business
  • Big company vs big company
  • Small business vs small business
  • Trolls
  • Bullies

V.   Getting assistance

  • Arbitration
  • Mediation

 VI.    Types of settlement agreement structures

  • Mutual consent with restrictions to avoid likelihood of confusion
  • Cease and desist (with or without phase out)
  • License Agreement
  • Concurrent Use
  • Acquisition of other party
  • Permission to use but not register
  • Non-Assert or “safe harbor” agreement
  • Others

VII.     Key terms in many settlement agreements

    • WHEREAS clauses – how significant?
    • Recognition of rights of senior user
    • Timing
      •  of phase out
      • of abandonment or surrender of application/registration
    • Dismissal
      • With prejudice or without prejudice?
    • Restrictions on use or registration by either party
    • Scope of agreement (US vs worldwide)
    • Rights to register
      • Amendment of goods/services description?
      • Amendment of mark?
    • Steps to deal with breach
      •       Right to cure?
      •      Arbitration clause?
      •       Injunction eligible?
    • Release of claims
    • Financial compensation
    • Binding on successors in interest and others
    • Confidentiality
    • Execute originals only or electronic copies OK?
    • Other

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