Table Topic: Trademark Settlement Agreement Tips (TT69)

Moderator: Erik Pelton of ERIK M. PELTON & ASSOCIATES, PLLC

Time: Tuesday, May 17, 2011 | 1:15 pm – 3:15 pm

Introduction: A great majority of trademark disputes are settled or resolved prior to a final
disposition from a court. Trademark settlements come in a variety of flavors. Consideration of
the form and substance of possible resolutions early in a dispute may help better position a client
for a resolution that is quicker (i.e. less expensive) and more favorable. Of course, every case is
unique and any approach to settlement will be hinge on numerous factors. Today’s discussion
will explore some of the important aspects of approaching and engaging in settlement
discussions in trademark and other disputes.

I. Prelude to settlement discussions

a. Cease and desist letter
b. Telephone call
c. Filing a with TTAB
i. Extension of time
ii. Opposition/Cancellation
d. Infringement Action
i. Filed but not served
ii. Filed and served
e. Others

II. Form of initial overture

a. Telephone call
b. Short proposal (bullet points via email or letter)
c. Full draft Agreement
d. Allowing parties to discuss without counsel
e. Other

III. Once involved in a dispute, timing of settlement discussions

a. Before filing of Answer
b. Before discovery
c. During discovery
d. After discovery
 e. After Motion for Summary Judgment filed
f. During Appeal
g. Other

IV. Dealing with unbalanced parties

a. Big company vs small business
b. Big company vs big company
c. Small business vs small business
d. Trolls
e. Bullies

V. Getting assistance
a. Arbitration
b. Mediation

VI. Types of settlement agreement structures

a. Mutual consent with restrictions to avoid likelihood of confusion
b. Cease and desist (with or without phase out)
c. License Agreement
d. Concurrent Use
e. Acquisition of other party
f. Permission to use but not register
g. Non-Assert or “safe harbor” agreement
h. Others

VII. Key terms in many settlement agreements

a. WHEREAS clauses – how significant?
b. Recognition of rights of senior user
c. Timing
i. of phase out
 ii. of abandonment or surrender of application/registration
d. Dismissal
i. With prejudice or without prejudice?
e. Restrictions on use or registration by either party
f. Scope of agreement (US vs worldwide)
g. Rights to register
i. Amendment of goods/services description?
ii. Amendment of mark?
h. Steps to deal with breach
i. Right to cure?
ii. Arbitration clause?
iii. Injunction eligible?
i. Release of claims
j. Financial compensation
k. Binding on successors in interest and others
l. Confidentiality
m. Execute originals only or electronic copies OK?
n. Other