Page 10 - The Katten Kattwalk - Fall 2025 - Issue 30

Maximizing Success and Avoiding Common Pitfalls
in Trademark Mediation (continued)
as a private mediator. Another disadvantage to
choosing mediation before the court is that a judge
or magistrate judge may not have the substantive
trademark know-how necessary to effectively
communicate with the parties or identify the key
issues in dispute. A true trademark professional may
be better equipped to undertake a creative, “out of
the box” resolution involving licensing, co-existence,
etc.
In sum, whether to utilize the court in connection
with mediation is often dependent upon the facts of
the particular case, the experience and qualifications
of the particular judge or magistrate judge, and other
factors specific to the parties and the dispute at hand.
In many cases, an attempt can be made to start with
a judge in a settlement conference and, if that fails, to
hire a private mediator later.
Qualifications of the mediator in a trademark dispute
One of the key considerations in selecting a mediator
related to trademark litigation is whether they are
sufficiently familiar with substantive trademark
law to evaluate the issues in the dispute from the
perspective of each party and propose creative
solutions. For example, creative resolutions to
trademark disputes may involve structured licensing
arrangements or “consent agreements” that define
what the parties agree to be a “fair use.” Furthermore,
a command of trademark law is an important
qualification if the mediator is to command the
respect of the attorneys and parties.
The mediator’s know-how in mediating a case and/
or participation in numerous mediations is also a very
important ingredient. A professional mediator with
experience overcoming problems involving egos,
resistant lawyers and parties who are not focusing
on proper goals is an extreme “plus” and a potentially
important ingredient for success. In contrast, a
mediator who is satisfied with merely being a
messenger to convey settlement proposals back and
forth between separate conference rooms does no
one any good and, in fact, hinders the settlement
process by keeping the parties at a distance with no
creative solutions.
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Most experienced litigators limit their choice of a
mediator to someone that either they or someone
they trust recommends. The best mediators are often
the busiest, and it may be ideal to wait to enlist the
services of the very best. Additionally, if an opposing
party suggests a mediator, this may benefit the
other party, as it is someone the opposition trusts.
Attorneys who immediately reject the suggestion of
an opposing counsel are making a mistake if they do
not consider the suggestion in good faith.
In sum, the optimal qualifications for a mediator
are knowledge of trademark law, know-how in the
mediation process, and creativity and proactivity in
designing and understanding solutions that address
the legitimate business concerns of each party. Other
desired personality traits include being hardworking,
energetic, an effective communicator, and having the
personality to command respect and credibility, while
being capable of “twisting arms” where necessary.
Finding the proper private mediator
Before a mediator is selected, as mentioned, it is
recommended to ask for references and speak to
attorneys or parties who have worked with the
mediator in the past to ascertain whether the
mediator fulfilled their expectations. Some US
District Courts (for example, the US District Court
for the Northern District of Illinois in Chicago) have
a selected list of mediators who, based on their
experience and knowledge in the area of trademark
law, have satisfied local rules designed to govern
who should mediate trademark or Lanham Act
cases in that district. In addition, there are other
professional organizations offering alternative
dispute resolution services (e.g., JAMS/Endispute)
that employ professional mediators with varied
backgrounds. Many are retired judges, while some are
law professors, and some are both.
Furthermore, in an effort to specifically address the
needs of parties involved in trademark litigation, the
International Trademark Association (INTA) created
the Panel of Neutrals (also known as the Trademark
Mediators Network) as an alternative dispute
resolution resource for members of the general public