Trademark Mediation: Preparation, Generating Creative Solutions, and Navigating Impasses to Avoid Trial

Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
Intermediate
- work Practice Area
Trademark and Copyright
- event Date
Wednesday, January 29, 2025
- schedule Time
1:00 p.m. ET./10:00 a.m. PT
- timer Program Length
90 minutes
-
This 90-minute webinar is eligible in most states for 1.5 CLE credits.
This CLE webinar will guide trademark attorneys in understanding the role that mediation can play in resolving their clients' disputes. The panel will provide background for mediation in general, including the different styles of mediation, and explain the typical mediation process, before exploring issues in mediation particular to trademark disputes. The panel will then provide guidance on ways to increase the chances of success in resolving trademark disputes through mediation.
Faculty

Mr. Sloane handles all aspects of trademark and copyright counseling, prosecution and litigation, including counseling clients on trademark adoption, filing trademark and copyright applications, recording registrations with Customs and Border Protection, maintaining domestic trademark registrations, managing global trademark portfolios, handling oppositions and cancellations in the TTAB, and litigating IP disputes in the federal courts. He also deals with related issues such as drafting license agreements, conducting due diligence in mergers and acquisitions, and litigating domain name disputes.

Ms. Lott is a founding partner of Lott & Fischer. She is admitted to practice in the State of Florida, the State of New York, the District of Columbia, the Court of Appeals for the Federal Circuit (formerly U.S. Court of Customs and Patent Appeal), the 11th Circuit Court of Appeals, the United States District Courts for the Southern and the Middle Districts of Florida, and the Southern District Trial Bar. Ms. Lott is an adjunct professor of trademark law at the University of Florida Levin College of Law and has been a speaker at meetings and events sponsored by the American Bar Association, Practising Law Institute, Law Education Institute, International Trademark Association, The Florida Bar, and the South Florida IP Law Association, among others. She has been listed in The Best Lawyers publication every year since 1995. Ms. Lott is also listed in the Guide to the World’s Leading Trademark Law Practitioners, Leading American Attorneys, Who’s Who in American Law, Florida Super Lawyers, 2009 South Florida Legal Guide “Top Lawyers in South Florida ,” and Marquis’ Who’s Who.

Mr. Prutzman is a partner in Tannenbaum Helpern's Intellectual Property practice. His practice encompasses litigation and non-litigated matters. Mr. Prutzman has broad trial and appellate litigation experience, particularly in disputes involving trademark, copyright, art law, photographers' rights, apparel importation, antitrust issues and matters before the International Trade Commission. His litigation experience includes securities regulation and insurance coverage. Mr. Prutzman advises on a wide range of non-litigated intellectual property matters including licensing; purchase and sale of intellectual property assets; website development, hosting and content; data licensing agreements; copyright registration; worldwide trademark registration and prosecution which includes representing clients before the Trademark Trial and Appeal Board, and antitrust and trade regulation advice and compliance. Representing clients from across industries, he has developed a particular focus in the following industry sectors: financial services, fashion, food and beverage, jewelry design, publishing, entertainment, and art and antiques. In addition, Mr. Prutzman's practice areas include Tannenbaum Helpern’s growing Cybersecurity and Data Privacy practice, an interdisciplinary team with experience in the many facets of this important area, including technology issues, cybersecurity and data privacy regulation and compliance, data breach planning and response and dispute resolution. He has helped guide clients in complying with the varying regulations of data privacy and protection in the U.S., Europe and other jurisdictions around the world, and in responding to data security breaches.

Ms. Richard has over 35 years of experience in trademark and copyright law and is consistently ranked one of the top attorneys in her field. She combines her strong legal skills with a business sense that makes her a natural choice for small and large companies alike. Ms. Richard manages worldwide trademark portfolios for major brand owners in the fields of fashion, transportation, retail products and restaurant services, among others. She is also an experienced litigator and works with clients to develop strategies for obtaining desired business results in and out of litigation. Ms. Richard has prosecuted thousands of trademark applications through the U.S. Patent and Trademark Office and routinely handles opposition and cancellation proceedings before the Trademark Trial and Appeal Board. In her copyright practice, she advises clients on copyrightable subject matter and has registered hundreds of copyrights with the U.S. Copyright Office, as well as litigating numerous copyright disputes to decision.
Description
It is beyond doubt that litigation is expensive and time consuming. A small trial can cost tens to hundreds of thousands of dollars and a major trial can cost millions. Increasing court dockets have taxed the ability of the courts to render timely decisions--the time between filing and final judgment often takes years. It should be no surprise then that both litigants and the courts have turned to mediation as a means to try to settle disputes swiftly and inexpensively.
Trademark disputes are no different than other civil actions when it comes to their time and cost, and the role that mediation can play in resolving them. However, there are specifics to trademark cases which attorneys should take into account when advising their clients and in preparing them for mediation. Among other things, trademark cases are often less focused on monetary damages than other civil actions as the parties are often concerned with issues of marketplace use and registration. It is imperative that counsel be sensitive to these nuances and be prepared to help their clients think outside of the box and generate creative solutions that sufficiently protect those interests while avoiding the need for a court-imposed decision.
Listen as our experienced panel discusses their experiences in advising clients on ways to maximize success in trademark mediations. The panel will give context to mediation in general and walk listeners through the typical mediation process. Then, they will discuss the unique issues that come up in trademark mediations and propose ways that practitioners can help their clients amicably resolve their disputes and avoid proceeding to trial.
Outline
- What is mediation?
- Historical background
- Objectives of mediation
- Advantages over litigation
- Different mediation models including facilitative and evaluative approaches
- The mediation process
- Pre-mediation
- Opening statements
- Private sessions
- Negotiation
- Settlement and closing
- Trademark mediation
- Differences between trademark mediation and other subject matters
- Possibilities for coexistence
- Registration issues
- Monetary payments
- Extraterritorial concerns
- How to succeed in trademark mediation
- Generate solutions
- Recognize positions versus interests
- Engage in reality testing
- Sharing information and dealing with confidentiality
- Tackling impasses
Benefits
The panel will review these and other key issues:
- How should attorneys prepare their clients for trademark mediation?
- What can counsel do to help their clients generate solutions during mediation?
- How should attorneys deal with impasses to avoid the need to proceed with trial?
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