Drafting Trademark Settlement Agreements to Resolve IP Disputes

When dealing with a trademark dispute, the parties should consider settlement options. This would avoid litigation costs and uncertainty. Settlement of the dispute eliminates the risk of an unfavorable result and avoids discovery and the need to produce confidential information.

Counsel to trademark owners must understand and carefully consider the potential ramifications of pursuing a settlement agreement before advising a client to seek or agree to a settlement agreement. Once the determination to settle the dispute has been made, drafting strong, enforceable settlement agreements is critical.

Listen as our authoritative panel of IP attorneys examines settlement agreements and outlines strategies for each stage of the process—from determining whether to pursue an agreement to negotiating and structuring the agreement.

1. Key considerations
   1. Timing
   2. Cost
   3. Other considerations
2. Key provisions
   1. Scope
   2. Exhaustion of infringing materials
   3. Abandonment or cancellation of the alleged infringer’s trademark applications
   4. Removal of materials from the marketplace
   5. Restrictions on mark applications in the future
   6. Transfer of domain names
   7. Tax implications
   8. Confidentiality and non-disparagement
   9. Injunctive relief
   10. Payment
3. Best practices for negotiating and structuring the agreement

The panel will review these and other key issues:

• What factors should counsel consider when weighing use of a settlement agreement?
• What terms should be included in settlement agreements and how should such agreements be framed to best protect the client’s mark?
• What are the risks to be aware of in negotiating settlement agreements?