Will the Plaintiff Buy my Trademark?
It’s a situation that many of my clients find themselves in. In filing a trademark application with the United States Patent and Trademark Office (USPTO), the applicant turns into a defendant in the Trademark Trial and Appeal Board (TTAB).
In speaking with me, I like to discuss the merits of the case, the function of the TTAB, and the limits of the TTAB. In most cases in front of the TTAB, the plaintiff is asking to cancel an application or registration based upon likelihood of confusion, trademark dilution, or fraud upon the United States Patent and Trademark Office. (There are other legal causes for these actions, but those are the most common.)
Then the defendant stops and asks me, “Will they just buy my trademark?”
In short, I would doubt it.
In my almost-15 years of practicing law (and all of those years in intellectual property), I have seen less than a handful of cases in the Trademark Trial and Appeal Board settle with some kind of monetary payment. Usually, it is because the defendant has a trademark that can be changed easily to keep the character of the mark intact and the plaintiff would rather see a change than litigate. One problem with this route is that very few cases revolve on such a fine line between the parties’ marks (and it usually is a graphic mark or logo that can be changed). Another problem with this route is that parties would rather not pay defendants to change because those agreements may harm future settlements in trademark infringement lawsuits in federal district court.
A third reason is that the plaintiff is not filing a Trademark Opposition or a Trademark Cancellation in order to purchase the trademark from the defendant. The plaintiff is looking to remove the trademark application or registration from the principal register of the USPTO. The plaintiff is not seeking to use the trademark as defined and outlined in the defendant’s application. The adversarial nature of the TTAB proceedings inherently shows the plaintiff’s willingness to litigate the confusion or dilution. Especially if the plaintiff wins, that helps to raise the value of the plaintiff’s trademark.
So, plaintiffs would rather not pay for trademark applications or registrations of defendants. There are many reasons why the plaintiff has filed the trademark opposition or cancellation proceeding. Buying it from the defendant does not usually enter the question.
That does not mean there are not creative ways to solve the problem of litigation in the Trademark Trial and Appeal Board. I have helped clients by changing designs, changing the spelling of words in a mark, changing words in a mark, or redefining the goods/services description of a trademark application or registration in order to settle TTAB cases. The TTAB may not be able to make monetary judgments, but litigating a case in the TTAB can still cost money. So there are creative settlement solutions and every defendant should look to those creative solutions.