The Long Road To Settling a Trademark Case: Proactive Steps for Success

Chair of Olshan’s Intellectual Property Law Group and Co-Chair of the firm’s Brand Management & Protection Group Mary Grieco and associate Morgan Spina published a New York Law Journal article entitled “The Long Road To Settling a Trademark Case: Proactive Steps for Success” about the lengthy, and often expensive, legal proceedings surrounding trademark disputes. These matters often commence at the United States Patent and Trademark Office (USPTO), and these proceedings can be expensive considering a corporate entity is allowed to represent itself, which is not permitted in federal court. “If one party is acting unreasonably in a [Trademark Trial and Appeal Board] proceeding by filing frivolous motion after frivolous motion…it may make sense for the other party to file a federal court action for trademark infringement [especially] when the difficult party is self-represented,” Mary and Morgan explain. “When faced with having to pay legal fees of its own, the party may become more reasonable.” They advise that before initiating a TTAB proceeding, the two sides should determine if there is an alternative to the more typical trademark opposition or cancellation. And although TTAB proceedings can take as long as three to four years, an Accelerated Case Resolution process may be able to bypass many of the lengthy steps and resolve the dispute in a year. However, both sides must agree to participate, and thus it may be difficult if one party is behaving unreasonably. “It may make sense for the USPTO to reevaluate its expensive and lengthy TTAB process at some point,” Mary and Morgan write. “Until then, parties in the United States must comply with the system the way it is designed.”