Page 12 - The Katten Kattwalk - Fall 2025 - Issue 30
P. 12
Maximizing Success and Avoiding Common Pitfalls
in Trademark Mediation (continued)
other. The more information exchanged in advance, Video mediation versus in-person mediation
the more the mediator can use to try to persuade
one party or the other. Nevertheless, there are times The author has been involved in many mediations
that are conducted via video conference (e.g.,
when an advocate may not want to reveal certain
theories or information too early in the mediation Zoom, Microsoft Teams or Cisco Systems). Some
distinguished mediators only handle video mediations.
process. In those instances, advocates can draft a
“confidential supplement” to the mediation brief for In the author’s experience, if the stakes of the
the mediator’s eyes only. litigation are high, in-person mediation is the best
choice and is more often successful. It can increase
There are cases where an exchange of submissions the expense of out-of-town parties, but it has
can anger or inflame one or both parties. Good advantages. Many mediators will travel to a location
mediators make that judgment call by talking that is most convenient to the parties. Although this
individually and/or collectively with counsel for the adds to the mediator’s expense, it may save time and
parties in advance.
expense for the parties.
Some mediators like to read pre-mediation briefs that There is an advantage to eye-to-eye personal contact,
resemble formal litigation briefs. Most, however, care arm-twisting and wearing a party down, and in-person
only that the “brief” be “brief,” and that it is concise, attendance shows a personal commitment to taking
well-organized and easy to read. The more prepared the process most seriously. Having the parties with
the mediator is prior to the first joint session, the authority present helps to facilitate a signed term
more useful they will be to both sides. Make it sheet. Many “deals” fall apart if an agreement is not
easy for the mediator to be prepared. The best reduced to writing. The best mediators stay and work
submissions give the mediator far more ammunition with both parties for as long as progress is being made.
to work with — usually on behalf of the party making
that submission. Consideration of local rules and ethical guidelines
Suggested protocol at the mediation In preparing for mediation, it is important to have a
solid understanding of the local court rules governing
Do the parties have opening statements? Have a joint mediation, including ethical guidelines and rules
meeting? Do the parties or their counsel talk directly adopted by the court related to settlement and
to the opposing parties? While nothing is “written in alternative dispute resolution (ADR).
stone” for every case, the author’s answers to these
three questions are generally: No, no and no. Local rules governing mediation
Usually, the author may have a brief meeting where Certain jurisdictions have implemented mediation
only he does the talking. He will set the rules he programs specifically related to trademark disputes,
uses, confirm he has read everything, compliment encouraging litigants to utilize these programs and
counsel for submissions and allow introductions try mediation either before or after engaging in
(not arguments of the case). He will then begin the discovery. For example, the US District Court for
process of caucusing. the Northern District of Illinois has had in place
for several years a Voluntary Mediation Program
Opening statements by parties or their counsel can
cause polarization. The author, therefore, does not for cases arising under the Lanham Act. Similarly,
in the US District Court for the Northern District
recommend it. Venting to the mediator is fine and
is sometimes therapeutic for the party. However, of California, there is a robust ADR program with
specific rules on the use of mediation and other ADR
venting between the attorneys and parties is not
helpful. procedures in connection with trademark disputes.
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