As one of my law school professors used to say, “Well, wait a minute.”  As in all areas of the law, success in a trademark lawsuit is anything but a given, no matter how “airtight” a case you think you have.  There are a variety of factors involved in deciding whether to institute formal litigation (or another proceeding, such as an Opposition at the TTAB), not all of them involving the underlying substantive law.  At the core of reviewing any potential enforcement action is a cost/benefit analysis.

Substantively, this entails reviewing the facts surrounding the particular dispute, the applicable statute(s), and existing case law for the same or analogous facts.  What potential defenses or counterclaims may the other party assert?  What would the result be if those defenses or counterclaims were successful?  Is this a “bet the company” case, or does it involve a relatively minor trademark or product line?  Is the other party’s use such that it MUST be stopped, or would modification of its use be sufficient to prevent any “likelihood of confusion?”

In addition to the uncertainty of the outcome, another reason most disputes never make it to trial and instead result in a settlement is cost.  If a litigation proceeding proceeds through trial, the costs can easily surpass $1,000,000 for each party.   If successful, will you be able to cover any of those costs through an award of damages, let alone receive additional restitution?  What about the cost to your company in time spent preparing for the proceeding, attending depositions, etc.?

Put another way: “What’s the best result that could happen to me, and what’s the worst?”  “What about for the other party?”

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