Page 8 - The Katten Kattwalk - Fall 2025 - Issue 30

Maximizing Success and Avoiding Common Pitfalls
in Trademark Mediation (continued)
• Facts or law suggest that the outcome of
litigation is uncertain. 4
• The disputed trademark is not a key element of
the challenged party’s advertising campaign or
long-term business strategy.
• The challenged party’s investment in the
disputed trademark is not significant.
• There is no pattern or practice of counterfeiting,
trademark infringement, etc. (i.e., use of
disputed trademark is not simply the latest in a
series of improper business practices).
• Key decision makers for the challenged party are
not personally invested in continuing to use the
disputed trademark. 5
• The challenging party has a genuine interest
in resolving the matter quickly through the
other party’s discontinued use of the disputed
trademark. At this point, the recovery of
damages is not a “deal point”; regardless, the
mediators should always save any monetary
issues for last.
8 katten.com/fashionlaw
Factors that may decrease the likelihood that a
controversy can be resolved through mediation include:
• The wrong mediator is involved; what defines a
“wrong” mediator will be discussed below.
• Counsel for one or both parties is not committed
to the process and/or does not want the
dispute to settle, or is currently disinterested in
settlement.
• The parties are not prepared to discuss
settlement objectively.
• One of the disputing parties is committed to
litigation based on factors such as an emotional
investment in their position, a strong interest in
trying the case, the need to send a message to
other potential infringers, appearing “tough” to
the opposing party as a message, etc.
• There is a “history” between the parties.
• At least one key decision maker for one of the
parties is incapable of working productively with
the opposing party to seek a resolution.