Page 13 - The Katten Kattwalk - Fall 2025 - Issue 30
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Timing considerations in the mediation process mediator from INTA’s Panel of Neutrals), and
confidentiality/publicity provisions regarding
Experienced attorneys know that it can be incredibly the specific terms of the settlement (while the
frustrating for their clients to spend substantial
time and money attempting to mediate a case, mediation process is confidential, the terms of a
settlement need not be).
only to reach an impasse. This frustration will be
compounded if mediation ultimately prolongs the • To the extent possible, reach a full and final
litigation. Accordingly, when evaluating a client’s settlement that concludes all matters in dispute.
settlement goals, it is important to consider, among • Attempt to conclude the mediation with a final
other things, the amount of time to devote to the
mediation process as well as the timing of the agreement that is fully executed by the right
individuals with authority to bind the parties;
mediation itself.
at a minimum, it is advisable to get signatures
Often, mediation or a settlement conference can be on a term sheet with the mutual understanding
held early in the case of certain limited information (in writing) that the terms will be formally
being exchanged on a “for mediation purposes documented within a brief period of time
— confidential” only basis. However, do not risk following the mediation.
producing information or documents that would
otherwise be privileged. See e.g. Pac Bell v. GTE (135 1
F.R.D. 187 (ND Cal. 1991); 19 U.S.P.Q.2d (BNA) This article was submitted to the International Trademark Association (INTA)
for a presentation by the author as part of a panel at INTA’s 2025 annual
1612. meeting in San Diego. At INTA, the author serves as Global Co-Chair of its ADR
Subcommittee on Mediation and has been a member of its Panel of Neutrals since
If an early mediation or settlement conference fails, its creation. He is also a mediator for Lanham Act cases at the US District Court
for the Northern District of Illinois. At Katten, the author is an Intellectual Property
a further opportunity to mediate will often present Litigation Partner and the National Co-Chair of the firm’s Trademark, Copyright,
Media and Privacy practice group.
itself again — sometimes after discovery, sometimes 2 The author feels venting at a mediation is best directed toward the Mediator,
after summary judgment motions are filed, and not “necessarily” to parties. Although as is the case with most rules, there are
sometimes even during appeal! exceptions.
3 Depending on the Court and the judicial officer, a sitting judge may be considered
best.
Concluding the mediation 4 Any mediator with experience understands that at the outset, the parties may
Some considerations and goals for effectively not know or may not acknowledge the uncertainty that exists. It is the mediators
challenge to provide clarity without alienation.
concluding the mediation include: 5 It is helpful if the lawyer representing the party who chose the mark did not
clear it for use or registration. However, if so, it is a challenge the mediator must
• Prepare a draft settlement agreement in advance overcome.
of the mediation, setting out best-case-scenario 6 Any carrier should be involved directly or indirectly if this problem emerges. Often
The Rules of the Court require carrier involvement.
settlement terms (and alternatives). The 7 Ordinarily, if the case is a bench trial, the trial judge would not, nor should they
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agreement should include, among other things, 8 conduct the mediation. However, this scenario occasionally happens.
appropriate releases (past, present and future The parties may, of course, seek a stay even if they are using a private mediator.
However, the granting of such relief is never a certainty. Especially if the case has
claims, defined), a choice-of-law provision for been pending from sometime, and/or has been stayed in the past, and/or the date
for a private mediator has not been scheduled.
governing settlement and a forum for future 9 The author does this as a litigator, and also has a rough draft of likely terms
disputes (consider a mediation clause using a available as a mediator.
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