To a trademark opposer, the filing of a trademark opposition is a serious matter with an uncertain outcome. If an opposer loses a trademark opposition case, the trademarks on which it is relying to bring the opposition can be further weakened. On the other hand, if a trademark applicant loses a trademark opposition then the application will be rejected, further jeopardizing the applicant’s plans to use the trademark on certain products and services. Therefore, for both opposer and applicant, a trademark opposition poses unwanted risks to their respective trademarks that perhaps could be avoided by settling the case.
When is the Best Time to Settle a Trademark Opposition?
Generally, there are three (3) opportune times to attempt to settle a trademark dispute with another party: These include:
- Prior to the Filing of the Trademark Opposition – once a trademark cease and desist letter is served;
- Prior to an Answer Being Filed – the trademark applicant might consider first contacting the Opposer to determine what are their business reasons for filing the trademark opposition and whether some sort of Agreement can be reached without the need for litigation
- During the Mandatory Settlement Conference– the parties to a trademark opposition proceeding are required to “meet and confer” – almost always by phone, to discuss the facts and allegations of the dispute and to determine whether a settlement may be achieved. This conference takes place after the filing of the Answer during the early stages of the case
Remember that in trademark opposition cases, timing is everything. Knowing when and how to approach your opponent to discuss settlement is best left to an experienced trademark opposition attorney. This could make the difference between a long, protracted litigation and one that gets resolved quickly.