To trademark opposition attorneys, winning a trademark opposition should mean one thing and one thing only: achieving a favorable outcome for the client. In this regard, a successful conclusion to a trademark opposition can take one of two main forms: (1) judgment on the merits; or (2) a negotiated settlement.
Judgment on the Merits
Generally, the best trademark litigation lawyers help achieve a judgment on the merits by having a full working knowledge of the various statutes, rules, and case precedent that are applied by the Trademark Trial and Appeal Board in deciding a trademark cancellation or trademark opposition case. These include a mastery of:
- Federal trademark statutes
- The Trademark Rules of Practice
- Trademark Manual of Examining Procedure (“TMEP”)
- Federal Rules of Civil Procedure;
- Federal trademark case law and TTAB citations; and
- Federal Rules of Evidence
Using the Trademark Board Manual of Procedure as a guide, the trademark opposition attorney can lay the proper legal foundation for a stong and persuasive case.
Obtaining a negotiated settlement in a trademark opposition matter is dependent on several factors, each of which are fact-specific to each individual case. Like many other types of litigation, the motivation of the trademark opposer in filing the notice of opposition must be weighed and gauged against the willingness of the parties to enter into a reasonable settlement. Factors that may contribute to a favorable settlement before the U.S. Trademark Trial and Appeal Board include:
- Use of the TTAB Accelerated Case Resolution program;
- The motiviations of the attorneys in representing their clients
- The willingness of the parties to seek a negotiated resolution;
- Weigning the pro and cons of continuing the case, including the cost and expense
Tips to Remember
As a party who has been served with a trademark cancellation or notice of opposition, it is important to immediately discuss with your trademark attorney the likelihood of success of your case, including all factors that may contribute to an early and favorable settlement so as to achieve an outcome that is in the best interest of your business and brand name protection.
For further tips on trademark opposition or trademark cancellation settlement stategies, feel free to email me or call (800) TMLAW-01 or (203) 244-4264.