Most cases settle. Most lawsuits settle. We at Verna Law, P.C. have settled most of our trademark infringement lawsuits or trademark oppositions or trademark cancellations.

Navigating Trademark Disputes: A Guide to Alternative Dispute Resolution

Trademark disputes are a common challenge in the business world, arising from conflicts over rights to specific trademarks, allegations of infringement and dilution, or trademark opposition proceedings or trademark cancellation proceedings. These disputes are not only complex but also potentially disruptive and expensive if they escalate to prolonged legal battles. Fortunately, litigation is not the sole path to resolution. Alternative dispute resolution (ADR) offers several efficient and cost-effective methods for resolving such conflicts amicably. This article explores the ADR options available for trademark disputes, highlighting their advantages and practical considerations.

Mediation: A Collaborative Approach

Mediation is a voluntary and confidential process where a neutral third party—the mediator—helps disputing parties negotiate a resolution. The mediator assists by clarifying interests, fostering mutual understanding, and guiding the parties toward a compromise.

Advantages of Mediation:

  • Cost Efficiency: Mediation is generally less expensive than court proceedings as it bypasses many legal formalities.
  • Speed: Disputes can be resolved quickly since mediation sessions can be organized flexibly and without court schedules.
  • Relationship Preservation: By promoting cooperation, mediation helps maintain professional relationships post-dispute.

Mediation Considerations:

  • Voluntary Participation: Mediation requires all parties’ willingness to participate, which may not always be present. Some courts do require mediation to be tried before the court itself will interject in a settlement attempt. Some courts will allow a magistrate judge to help settle a lawsuit. This is a favorite tactic of Verna Law, P.C. because magistrate judges in federal court understand the issues involved better than many private mediators and judges can comment on the case in a frank manner.
  • Binding Agreements: Solutions reached in mediation are binding once formalized in a written agreement, underscoring the importance of clear documentation.

Arbitration: Expert Resolution

In arbitration, one or more arbitrators (neutral third parties) hear the evidence and arguments from all involved parties and then make a binding decision. Arbitration can be managed through independent procedures or organized by entities like the World Intellectual Property Organization (WIPO).

Advantages of Arbitration:

  • Expertise: Arbitrators typically possess deep knowledge of trademark law, ensuring well-informed decisions.
  • Confidentiality: The arbitration process is private, protecting sensitive information.
  • Efficiency: With set timelines and limited discovery, arbitration is streamlined compared to court litigation.

Arbitration Considerations:

  • Finality: The arbitrator’s decision is usually final, with limited scope for appeal.
  • Costs: While generally more cost-effective than litigation, arbitration still incurs fees for the arbitrator and administrative expenses.

Expert Determination: Focused Expertise

Expert determination appoints an independent expert to resolve specific technical or legal issues within a trademark dispute. This method relies on the expert’s specialized knowledge for a binding decision.

Advantages of Expert Determination:

  • Speed: Focus on specific issues allows for quicker resolutions.
  • Specialized Knowledge: Decisions are informed by the expert’s deep understanding of the relevant law and industry practices.

Expert Determination Considerations:

  • Scope: Best suited for disputes where specific, technical resolutions are needed.
  • Expert Selection: The impartiality and expertise of the chosen expert are vital for a fair outcome.

Negotiation and Settlement: Direct Dialogue

Negotiation involves direct discussions between the disputing parties, either independently or through legal representatives, aiming to reach a mutually acceptable resolution without third-party intervention.

Advantages of Negotiation:

  • Control: Parties have significant control over the outcome, tailoring the resolution to meet their needs.
  • Cost-Effectiveness: This method avoids the expenses associated with more formal ADR processes or litigation.

Negotiation Considerations:

  • Collaboration: Success depends on a willingness from all parties to compromise.
  • Documentation: It’s critical to formalize any settlement in a written agreement to ensure enforceability.


While trademark disputes can be daunting, ADR offers several pathways that can lead to efficient and effective resolutions, allowing businesses to continue their operations with minimal disruption. Whether through mediation, arbitration, expert determination, or direct negotiation, these methods provide substantial benefits over traditional litigation, preserving resources and relationships. When faced with a trademark dispute, businesses should consider these alternatives as strategic solutions to protect their brand integrity and market position.

If you have any questions about your trademark dispute, please contact Verna Law, P.C. at or call at 914-908-6757.

Here is a lightly-edited transcript of the video blog:

Right before Christmas, my wife had to pick me up from the airport and it’s not fun to go from the airport straight to my parents. Where was I? I was in Los Angeles at a mediation.

While I have the philosophical problem with a federal court ordering the parties to a private mediation, that’s what happened in this case. So let’s talk about what happens if you have a trademark infringement suit and are going to mediation.

Number one, you need to expect to be compromising on your case in order to settle it. If a court is ordering you to mediation, whether that’s a judge-led mediation or a private mediation, the judge really is expecting you to settle your case. That means that you have to compromise. Well, both parties have to compromise. That means you as the plaintiff can’t be expecting $10 million if there’s only, for example, 1000 sales. Of course, depending upon the price of the product.

Number two, you need to understand the weaknesses for that particular situation. If your trademark is not registered, that is a weakness. 

Number three, you’re also going to be sitting down with somebody who probably doesn’t necessarily have a lot of power but will be able to hopefully talk to both sides. So that person is going to prepare for the case. So, also, you have to know the strengths of your case and you also have to know the weaknesses of your case. That is very key in a mediation and it’s certainly something that that personally I struggle with with my clients.

I want to show you the strengths of the case, but I also am obligated to say here’s why your case is not necessarily worth $10 million or here’s why your case, you know is going to need to settle during this particular phase.

Number four, understand that also there’s going to be a lot of downtime at a mediation. The mediator is going to talk to us, the mediator is going to talk to the other side and there’s a whole lot of thinking for what doesn’t exactly seem like a whole lot of action.

Don’t expect a whole lot of action, expect a lot of downtime and trying to settle a case. It’s going to take time, but hopefully during the mediation, the lawsuit can settle.

Understand your case, understand the weaknesses of your case. Expect the private mediator to talk to both sides in order to get that resolution and ultimately expect to compromise on that resolution. But during that private mediation, get the resolution and then your case will be settled and then both sides can move on with the business that that, that they’re doing. I’m Anthony Verna, managing partner of Verna Law, where we focus on IP and advertising law. Thank you.