Many trademark attorneys believe that the goal of a TTAB discovery conference is to zealously prepare for litigation.  A better approach is to view it through the lens of a favorable settlement outcome.  Since over 90% of trademark oppositions settle prior to trial, it makes sense to do so.

According to U.S. Trademark Trial and Appeal Board rules, the parties are required to engage in a mandatory discovery conference.   This conference usually must take place within thirty days after the Answer has been filed.  As part of the conference, the parties will be required to discuss (1) the nature of and basis for their respective claims and defenses, (2) the possibility of settling the case or at least narrowing the scope of claims or defenses, and (3) arrangements relating to disclosures, discovery and introduction of evidence at trial.

Here are a few recommendations for making the most of a TTAB discovery conference:

  1.   Encourage open communications.    Far too often, attorneys are quite terse during the discovery conference.  Engaging in a five minute discovery conference does not serve the client’s interests.  Instead, discuss the merits of the case openly and candidly with opposing counsel.  It is  not a sign of weakness.
  2.   Be respectful.    Have the other party articulate its interests in defending or opposing a trademark application.  This will provide a useful foundation for further discussions.  It will also set the tone for mutual cooperation that is mandated, but not always followed, by trademark practitioners before the Board.
  3.   Prepare for settlement.   Discuss with your client all settlement options available to it prior to the conference.   These may include that the applicant withdraw its application, narrow its identification of goods, or assign the mark to your client with a license back for limited purposes.

The number one goal of a TTAB discovery conference should be to position your client for a successful case outcome.  This should be done without needlessly escalating risk and costs.  Practitioners should do their best to keep tensions low and cooperation high to better serve their clients.

What’s wrong with trademark litigation today?  Well, in a word, economics.

A national law firm is hired to represent a consumer brand company in a trademark infringement matter and wants to show both the client and the opposing party that it means business.  A flurry of motion practice ensues, aggressive discovery tactics become the norm, and the law firm proudly establishes its very own “war room” to determine what part of the kitchen sink it intends to hurl over the ramparts next. Welcome to Legal Gladiators – Trademark Litigation Edition.

Trademark litigation is an expensive undertaking for trademark owners.  According to a recent survey by the American Intellectual Property Law Association (“AIPLA”), the average legal fees and costs for a case with the amount in controversy under $1 million is $202,000 through the end of discovery and $375,000 through trial.  Coupled with the fact that less than 5% of cases actually proceed to trial, it would seem to make economic sense for trademark attorneys to counsel their clients to consider settlement options as part of an overall trademark dispute strategy.

Continue Reading What Clients Really Want When Hiring a Trademark Law Firm for Litigation Matters