How Smart Preparation Transforms Trademark Mediation
Making ADR Work for You
The vagaries of time, uncertainty, and cost together have motivated many in-house counsels to look beyond litigation for different ways to solve disputes. Ralph Cunningham previews Sunday’s panel on ADR and its potential for meeting brand owners’ requirements.
Success in mediation hinges on two crucial factors: selecting the right mediator and fostering a collaborative atmosphere.
The expert panel in ADR: Preparing to Successfully Mediate an IP Dispute (and Avoiding the Pitfalls!) (Sunday, May 18, 11:45 am – 12:15 pm) will show you exactly how to achieve both.
“The most important ingredient is to have a skilled mediator who connects with the parties, can overcome obstacles, and can think outside the box for solutions,” says moderator Tiffany Blofeld (Greenberg Traurig, LLP, USA).
Panelists in this session, which is being presented by INTA’s 2024–2025 Alternative Dispute Resolution Committee, will discuss how brand owners and their counsel can set themselves up for success, while minimizing the risks.
The speakers will reveal proven strategies for preparing successful mediations, including choosing the materials to be submitted to the mediator, and managing client expectations. The panel will also address possible outcomes such as non-monetary solutions and how to navigate the delicate path to brand coexistence.
Alfonso Rivera (Tobar ZVS, Ecuador), who has been a mediator at Quito Chamber of Commerce since 2011, refers to “a genuine willingness from the parties to engage in dialogue and find common ground.”
For Caldwell Camero (Fluke Corporation, USA), a spirit of collaboration means “having open-minded parties who are willing to negotiate and genuinely seek resolution instead of fighting tit for tat on who’s right and who’s wrong.”
“The parties need time to compromise and many settlements are not reached until evening hours after a full day of mediation”
- Tiffany Blofeld | Greenberg Traurig, LLP (USA)
Don’t expect instant resolutions. Ms. Blofeld, a member of the INTA's Directory of Trademark Mediators, dispels this dangerous myth with hard-earned wisdom.
“When I was just starting my career, I did not understand why you could not give your best offer right away, so you did not have to waste the whole day in mediation,” she admits. “After many years of experience, I know that the parties need time to compromise, and many settlements are not reached until evening hours after a full day of mediation.”
Petter Rindforth (Fenix Legal KB, Sweden) says when he was starting out, litigation was where he and his peers put their efforts, but that his experience of mediation has changed that emphasis.
“Looking back to my time as a law student, we were focused on how to win a dispute in court,” he says. “My first participation in mediation gave me a whole new perspective, as I watched the parties amicably shake hands and sign a new agreement.”
The best results from mediation do not always occur when both parties are in the same room, believes Floyd Mandell (Katten, USA).
“I used to feel that if you can get the parties in a room, a good faith dialogue would result in a settlement, given the cost and uncertainty of litigation”, he says. “Over time, as both a mediator and a litigator, I found that you are more likely to be successful if the parties are not in the same room advocating for their position. The right mediator working on each party separately is now my preferred choice of procedure.”
“The right mediator working on each party separately is now my preferred choice of procedure.”
- Floyd Mandell | Katten (USA)
Strategic resources are at your fingertips. Brand owners looking at mediation as a way of reaching a satisfactory conclusion to their trademark dispute now have a substantial amount of advice and resources to lean on from global and regional intellectual property (IP) bodies.
For example, the World Intellectual Property Organization’s Arbitration and Mediation Center (WIPO AMC) actively collaborates with member states’ IP offices and courts to raise awareness of the advantages of ADR methods to prevent and resolve IP and technology disputes.
The potential for mediation in trademark disputes is obvious, at least if brand owners look at the WIPO AMC’s figures. While disputes around copyright and digital content represented more than three quarters (77%) of disputes referred to it in 2024, the number for trademarks was only 16 percent, signaling massive untapped potential for forward-thinking brand owners.
The panelists believe ADR has a bright future because of the expense, uncertainty, and time commitment associated with litigation.
“ADR will have an even bigger impact on IP dispute resolution as litigation costs continue to increase and parties do not want to spend the time and energy that long drawn-out litigation requires,” predicts Ms. Blofeld.
.Mr. Rindforth agrees and adds that he sees technology playing a major role in mediation’s future. “We already see fewer disputes going to court, as the parties realize the advantages of solving the case out of court. For the future, we will see more technical opportunities to mediate globally online, likely even with the assistance of some AI support.”
“Many courts demand an effort at ADR. It is here to stay and will continue to grow,” says Mr. Mandell. “The key is timing, preparing the parties to be open minded and creative, having the right party representatives present, and using a mediator who enhances your chances of a business resolution.”
Time is the issue for companies, according to the in-house counsel on the panel: “It’s not just the uncertainties in general with litigation plus the high costs of IP litigation in particular, but the quicker resolution ADR often provides can be critical for some companies who simply can’t wait years for a case to wind its way through the courts,” says Ms. Camero.
ADR will also help national IP authorities and the justice system, Mr. Rivera said. “ADR will play an increasingly central role, offering faster, more flexible, and cost-effective solutions in a global IP environment that demands agility and cooperation,” he says. “It will also help alleviate backlogs in IP offices and court systems.”
“Trademark litigation can often be avoided via mediation,” says Ms. Blofeld. “Our session discusses how to enhance chances for a successful mediation.”
“My first participation in mediation gave me a whole new perspective, as I watched the parties amicably shake hands and sign a new agreement.”
- Petter Rindforth | Fenix Legal KB (Sweden)
