Consider the adoption of a different, and perhaps more desirable, mark.
1
Incorporate a distinctive design, different colors or different packaging trade dress.
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Restrict areas or manner of use:
(a) Geographic restriction on distribution, e.g., restrict stores to a specific city;
(b) Category of customer restriction, e.g., women's clothing as opposed to men's shoes; (c) Limit use to a specific product;
(d) Require use only as a house mark;
(e) Limit quality/price category, e.g., costume jewelry vs. gem quality jewelry; (f) Use as a corporate name only.
1
Trade foreign rights for U.S. rights.
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Consider innovative sale or exchange of needed goods or services with great value to one party and little value to other.
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Add a word or term to the mark.
Change or add letters to the mark.
Use only in conjunction with a prominent house mark.
Grant a short or long-term license on a royalty or royalty-free basis with quality standards:
(a) Minimal restrictions can be placed on the licensee by use of existing product standard; (b) The right to terminate the licensee can be limited, as contrasted to the right to require quality standard compliance; (c) Beware of naked licensing (abandonment).
Consolidate trademark ownership in one of the parties (and thereby strengthen ability to pursue third parties) by structuring the settlement as a purchase and license back, with or without royalty, depending upon the circumstances.
Provide alternative mark to other party, e.g., conduct searches, obtain registration or transfer an existing mark and registration.
Agree to permit use but not registration.
Pay for the other party to change its mark, buy inventory, pay for replacement of stationery and related materials, pay for cost of obtaining new corporate name.
Use disclaimer.
Purchase mark and/or business entity. Sometimes after purchase, mark can be changed and business sold for less than cost of litigation.
Use sticker with new mark or obliterate old one.
Suggest "a matter of principle," payment to a charity that may serve the same purpose as damages.
Schedule short or long-term phase-out of materials with conflicting mark.
Execute a large consent judgment with low payment and/or compliance with agreed changes deemed to fully satisfy judgment.
Provide floor and ceiling between conflicting offers and use baseball arbitration system.
Agree to submit dispute to a jointly respected third party for non-binding settlement proposal crafted by business considerations.
Structure the settlement to provide for payments in installments over time.
Co-existence agreements are an alternative, but should only be entered into with great care.
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