Q: An ex-board member is using my trademark event name without my permission. Do I have standing to issue cease and desist

A: If the ex-board member learned of the trademark while being a board member, (and the source of the trademark is the family board) and then the ex-board member started to use the mark unilaterally after leaving the board, then you may have grounds to issue a Cease-and-Desist letter. This may be due to their fiduciary duties as a previous member of the board to act in the best interests of the board rather than priority of use of a trademark. Where you say you have just started the process to trademark the event name, if the board has already used the trademark in commerce of the public event, then the trademark is already attributed to the board, when making comparisons to anywhere else the mark has been used.

A: Yes, you likely have standing to issue a cease and desist letter. Since your family has been running the event for over 40 years and you have been in control for more than a decade, you have established significant use of the event name. This long-term use can provide you with common law trademark rights, even before the official trademark registration is complete.

By starting the trademark process, you are reinforcing your legal claim to the event name. An ex-board member using the same name without your permission could cause confusion and dilute your brand, which strengthens your position. Your ownership and continued use of the name demonstrate your rights and authority over it.

When drafting the cease and desist letter, clearly state your ownership of the event name and request that they stop using it immediately. Outline the potential legal actions you may take if they do not comply. This approach asserts your rights and can help protect your event’s identity and reputation.