A substantial number of trademark opposition cases before the Trademark Trial and Appeal Board are settled prior to a final determination on the merits. The Board encourages parties to engage in settlement discussions early in the process, and has made these discussions part of the mandatory discovery conference between the parties.
Do the parties take advantage of the opportunity to discuss trademark opposition settlement? Quite often, the answer is no. There are many reasons for this unwillingness to explore an amicable settlement to the dispute, including:
- Personal animosity between the respective parties
- Trademark bullying (discussed elsewhere in this Guide)
- Trademark lawyers who do not wish to see an early resolution of the dispute
- Legitimate legal and business rationale
When faced with a notice of trademark opposition, the first thing to do is to seek advice from a trademark opposition attorney who can explain the nature of the case, potential merits of the claim, likelihood of success, and options for settlement. Litigants should realize that a trademark opposition is a civil litigation that can be long and protracted. Therefore, it is best to understand the options available to the trademark applicant or trademark opposer before proceeding.
Trademark opposition attorneys are well-versed in the complexity and detail of trademark opposition rules of evidence and procedure. Most will provide a complimentary consultation with the party to enable it to make an informed decision on how to best proceed with their trademark opposition case. The trademark opposition lawyer should also discuss its fee options, including either an hourly fee or flat-fee for representation based on the various stages of the case.
Be sure to speak first with an experienced trademark opposition lawyer — you will be glad you did.