Texas-Licensed Trademark Litigator for Limited-Scope Settlement Negotiations

We are an international mobile software company currently defending a trademark-related lawsuit pending in federal court in Texas. We are seeking an experienced Texas-licensed trademark attorney for a limited-scope engagement focused on evaluating and conducting settlement negotiations with opposing counsel. This initial engagement is not for full litigation defense, discovery, motion practice, or trial. Court filings and litigation deadlines will remain the responsibility of counsel of record unless otherwise agreed in writing. If a settlement cannot be reached, the litigation may be transitioned to a separately selected litigation firm. We are looking for an attorney with actual defendant-side trademark dispute and settlement experience. Trademark application or registration experience alone will not be sufficient. The attorney should be able to evaluate the litigation position, negotiate from a position of informed credibility, and advise us objectively if a proposed settlement is or is not commercially reasonable. The company is open to considering both monetary and non-monetary settlement structures, depending on the legal and commercial terms. Initial Scope of Work The selected attorney will be expected to: Conduct a conflict check before receiving substantive confidential information. Enter into a written attorney-client engagement agreement defining the limited scope of representation. Review a focused case package, including the complaint, relevant trademark records, prior settlement communications, key factual chronology, and the company’s commercial objectives. Participate in an initial strategy call with company decision-makers. Provide a concise assessment of the settlement position, principal risks, recommended opening approach, and proposed negotiation strategy. Communicate directly with opposing counsel for settlement purposes. Conduct up to three substantive rounds of settlement negotiations unless an additional scope is approved. Provide concise written updates following material communications with opposing counsel. Obtain the client’s written authorization before communicating any material settlement offer, counteroffer, or acceptance. If an agreement in principle is reached, prepare or review a settlement term sheet and final settlement documentation under a separately approved milestone. If settlement is not reached, provide a short closing memorandum summarizing the negotiations, remaining disputed issues, and information needed for litigation counsel. Cooperate with existing counsel of record and any later-appointed litigation counsel. Deliverables Phase 1 – Conflict Check and Initial Assessment Completed conflict check; Review of the agreed case materials; Initial strategy call; Concise written settlement assessment; Recommended negotiation plan. Phase 2 – Settlement Negotiations Initial authorized outreach to opposing counsel; Up to three substantive negotiation rounds; Written updates after material communications; Written presentation of all settlement offers; Recommendation regarding acceptance, rejection, or counteroffer. Phase 3 – Only If Settlement Is Reached Settlement term sheet; Settlement agreement; Mutual release or other agreed release structure; Dismissal documentation; Coordination with counsel of record regarding filing and implementation. Matters Outside the Initial Scope The initial engagement does not include: Entering an appearance in the federal lawsuit; Preparing or filing an answer; Preparing a motion to dismiss; Discovery; Depositions; Court hearings; Trial preparation or trial; Appeal; USPTO or TTAB proceedings; Public-relations advice; Tax advice. Any additional work must be separately authorized in writing. Required Qualifications Applicants must have: An active license in good standing with the State Bar of Texas; At least five years of relevant legal practice; Substantial experience with trademark infringement disputes; Experience representing defendants in trademark or Lanham Act matters; Direct experience negotiating settlements with opposing litigation counsel; Experience drafting settlement agreements, releases, and dismissal documents; Strong written and oral communication skills; Ability to work effectively with an international corporate client; Availability to begin promptly; No conflict involving the parties, their affiliates, or counsel. Admission to the U.S. District Court for the Western District of Texas is strongly preferred, although the initial engagement is intended to be negotiation-only. Professional-liability insurance is strongly preferred.