Using Settlements and Case Resolution to Reduce the High Cost of U.S. Trademark Disputes

Chair of Olshan’s Intellectual Property Law Group and Co-Chair of the firm’s Brand Management & Protection Group Mary Grieco published an IPWatchdog article entitled “Using Settlements and Case Resolution to Reduce the High Cost of U.S. Trademark Disputes.” In the article, Mary draws a comparison between the federal litigation procedure and the Trademark Trial and Appeal Board (TTAB) involving trademark disputes. The TTAB abides by the Federal Rules of Civil Court Procedure, and the fees involved in a trademark opposition or cancellation proceeding in the TTAB are significantly higher than those of similar proceedings in other countries. “A corporate entity is allowed to represent itself in the [TTAB] proceedings,” Mary writes, “which is not permitted in a federal court action. If a party is representing itself and does not have to pay an attorney, this sometimes results in one party taking actions that increase the legal fees of the other, including making frivolous motions or refusing to participate in discovery in good faith, thus necessitating even more motion practice.” Moreover, Mary advises parties to be mindful of risk. Since legal fees can be expensive, sometimes amounting to over $250,000, you should take action before you issue a proceeding with TTAB: “If a party believes it will be damaged by the registration of a trademark, they should almost always reach out to the other party to determine whether a settlement can be reached by taking advantage of the automatic 90-day extension period.”