Not all trademark opposition proceedings proceed to a final decision.  In fact, the vast majority of trademark opposition disputes are resolved between the parties or involve trademark mediation.  Estimates are that over 90% of cases before the U.S. Trademark Trial and Appeal Board amicably settled before trial.

Short of the cost and expense of a full trial on the merits, parties may elect to do the following:

1.   Withdraw the Application.    The Opposer may request that the Applicant withdraw its trademark application in consideration of a consent agreement that the Applicant may use its mark in commerce under well-defined circumstances.
2.   Narrow the Identification of Goods.    A frequently invoked compromise is for the Applicant to agree to delete certain goods or services contained in its application.  The Applicant would then be permitted to proceed with its registration based on the narrowed identification of goods.  This is so as to avoid a potential likelihood of confusion with the Opposer’s goods and services.
3.  Trademark assignment and license back.    Under this scenario, the Applicant would assign its ownership in and to its application and eventual registration to the Opposer.  The Opposer would then license-back the mark to the former Applicant for a limited-use purpose under the supervision and control of the Opposer.  This strategy is used in limited circumstances.
4.  Withdrawal and agreement not to use.   This is a last-resort strategy for an Applicant.  By signing an Agreement not to use the mark in commerce, it generally gives the Opposer contractual rights to police the Applicant’s use of marks in the future that the Opposer may deem to be confusingly similar to its own.    If the Applicant has decided to make the business decision to withdraw its application and not use the mark, it should avoid signing any other documents that would give the Opposer any future right to approve or disapprove new trademarks of the Applicant.
5.   Trademark Mediation.   Mediation is an effective means for the parties to come together to discuss their dispute and narrow their differences between a qualified trademark mediator.   The mediation may be either binding or non-binding at the election of the parties.

Editor’s Note:  The author is an approved mediator with the International Trademark Association Panel of Trademark Mediators, a professional group that is compromised of approximately 175 mediators worldwide.