Once a trademark opposition proceeding has been commenced, there are several procedural and substantive means by which the parties may bring about an amicable resolution of their dispute. Knowing how to effectively negotiate a favorable outcome is essential.
Substantive strategies to settle a trademark opposition proceeding include:
1. By Amendment: by narrowing the identification of goods in the application, it is possible to allay the concerns of the trademark opposer through the deletion of those goods in the application that it finds most objectionable.
2. By Withdrawal: Quite often, the trademark opposer’s main concern is to keep confusingly similar trademarks from appearing on the principal register. In this case, the parties may agree for the trademark applicant to withdraw its application in exchange for a promise that the trademark opposer will not object to the applicant’s use of the trademark in commerce.
3. By Timing: Trademark opposers have little incentive to settle until after the completion of the discovery period. At that time, the parties are better able to assess the strengths and weaknesses of their respective positions. If you are the applicant, it is best to wait to discuss any possible settlement until at least after the Answer has been filed.
Procedural methods to conclude a trademark opposition proceeding include:
1. Withdrawal by Opposer: Under the Code of Federal Regulations that governs trademark opposition proceedings, a trademark opposer may withdraw its opposition without prejudice at any time prior to the Applicant’s filing of the Answer. if the opposition is withdrawn after the answer has been filed, then the written consent of the applicant is required for the opposition to be withdrawn without prejudice. Without such consent, the withdrawal of the opposition will be deemed to be with prejudice to the Opposer’s right to reinstitute a proceeding at a later date.
2. Withdrawal by Applicant: After a trademark opposition has been commenced, an applicant may expressly abandon its trademark application only with the written consent of the Opposer. The failure to obtain the written consent of the Opposer shall result in judgment being entered against the Applicant.
An experienced trademark opposition attorney will be able to discuss the best available options to settle a trademark opposition case in a manner most favorable to his/her client. By doing so, it may save precious time and money in product development and marketing costs associated with the trademarks at issue. Additional trademark opposition settlement strategies will be discussed in future posts.