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Don’t Forget About Mediation: Settlement and Satisfaction

Mediation in trademark disputes is increasingly common. The International Trademark Association (INTA) reports that mediation settlement rates for intellectual property disputes may be as high as 70%. INTA, the World Intellectual Property Association (WIPO), and the European Union Intellectual Property Office (EUIPO) each offer mediation services in trademark cases. Whether a dispute is local, national, regional or multi-national, mediation always should considered when evaluating how to resolve a trademark dispute.

Trademark disputes often are legally and factually complex. They generate uncertainty and sometimes risk bad publicity. The legal costs to litigate a trademark dispute, whether administrative proceedings or judicial proceedings in court, can be substantial, particularly in jurisdictions, like the United States, that provide for extended discovery prior to trial. The legal and factual complexity of trademark disputes also give rise to considerable uncertainty as to the outcome, particularly in situations where such a dispute is submitted to a judge or jury with little or no background in trademark law.

Mediation offers a meaningful opportunity for the parties to explore, often successfully, whether they can resolve the dispute efficiently and cost effectively. Mediators do not sit in judgment of the merits of the dispute; they are not acting as judges or arbitrators. Instead, the role of the mediator is to assist the parties in resolving their dispute by agreement. Thus mediation empowers the parties to fully explore solutions that best address the needs of their situation. Mediation can result in a satisfactory resolution of the dispute, avoiding the uncertain outcome of litigation, often at a fraction of the cost of litigation.

In deciding how to proceed, it is important to try to understand the personalities of the parties and to decide which type of mediation style might work best for your case. Often mediators are described as having three different practice styles: (1) facilitative, (2) evaluative, or (3) transformative. The facilitative style often is considered the norm in mediation, but in actual practice mediators often combine these styles depending on the situation, with the ultimate goal of assisting the parties in exploring options and reaching agreement.

A facilitative mediator may be preferable in situations where the parties are having communication difficulties or have underlying issues that need to be addressed in order to move forward. These situations are not uncommon. A facilitative mediator can help the parties develop options and encourage "outside the box" thinking. This type of mediation style is aimed as resolution overall, rather than evaluating who might have the better legal case.

An evaluative mediator may be preferable in situations where the parties desire the mediator to take a more active role in resolving the dispute, such as commenting on factual and legal issues, offering non-binding opinions and guiding the parties in reaching a settlement based on objective norms.

A transformative mediator may be preferable in situations where the parties have relational issues (business or personal) and their long-term goal is to improve communications to enable the parties to work better together, even if a resolution of the specific dispute is not resolved.

As can be seen, the facilitative, evaluative and transformative styles can be very different in approach, so identifying the mediation style you believe over all will be better suited for your case is an important consideration in the selection of a mediator.

If the factual and legal issues in your case are particularly complex or contentious, a mediator with subject matter expertise may be well suited to assist the parties in working through such obstacles. Or you may prefer a mediator who will focus more on identifying underlying issues and assisting the parties in communicating more effectively, allowing the parties' counsel to essentially function as subject matter "experts" for the mediator's benefit.

Ultimately, the mediation process empowers the parties to move beyond positional bargaining and engage in interest-based negotiations. Doing so successfully requires that you identify your core interests and needs as they relate to the dispute. You should also consider what the other party's interests and needs may be so that you can truly "see" different options and potential outcomes.

Mediation works best if you have identified your goals and what you hope to accomplish by mediating. Conduct a risk analysis of your case by looking at the strengths of your case and the strengths of the other party's case. Determine your "best alternative to a negotiated agreement" (BATNA) and your "worst alternative to a negotiated agreement" (WATNA). Then determine the other party's BATNA and WATNA, as best you can. The better you understand the other party, the greater your flexibility and creativity when generating options. Once you are in the mediation, listen carefully what to the other party is saying to better understand their interests and needs and what they really are seeking to accomplish in the mediation. Solutions become more obvious when you listen carefully, with an open mind.

At the mediation often it is persuasive if you state your case reasonably and use creativity in developing the best "evidence" to explain your case to the mediator. Be an advocate, but be reasonable. Mediation is likely to be more successful, and you are more likely to assist a mediator in facilitating resolution, if you are reasonable in stating your case. Visuals and actual product can be highly effective in helping a mediator understand the underlying issues and facts in a case. Do not hesitate to recreate the "marketplace" if possible.

Consider approaching the mediation as an interest-based negotiation. Mediation is a structured negotiation which can solve the entire case or pieces of the case. To achieve a good outcome in the mediation, consider engaging in interest-based negotiations to seek a workable solution to a shared problem. This approach helps to remove the emotion from the atmosphere and allows you to consider your options for resolution without feeling like you have to win or that you are losing. Remember, essential to a successful mediation are effective communication, building relationships and establishing trust.