Posted by Mr. Q at 6:00 AM Thursday, July 7, 2011
Dear Rich: I'm on a non-profit board that puts on a race of human powered art machines. The non-profit was formed when “ownership” of the race was tied up in litigation and the artist who started the race asked a group of his friends to find a way to keep the tradition alive. The non-profit was formed, the event name changed and now we have been putting on the race for five years. Further, the non-profit has other fundraisers it does to fund the Memorial Day race. This year the artist’s son claims, as heir to his father’s estate, he “owns” the race and sent a cease and desist letter that we were putting on “his” race illegally. He has not used the old race name in 5 years. We don’t have much money for a legal battle around this, but can find no trademarking of events or races at the USTPO. Battles over who owns festival or event rights are almost always about who owns the name/trademark. (Here's a recent example and here's one from 2010.) It's possible that other issues may arise in these disputes -- for example, contract disputes (if agreements have been made between the parties) or claims of defamation. But in general, if the dispute is about who "owns" the festival, the dispute will come down to who owns the rights to the name and logo. Event names can be registered at the U.S. Patent and Trademark Office (to see examples, visit the USPTO site, choose Search Marks, then Basic Word Mark Search and type in "festival").
What About the Artist's Son's Claims? Because you're using a different name, we're not sure what claims the son may have. The idea of "owning" the race apart from the trademark seems like a weak claim unless there's a breach of an agreement or one party has interfered with a contractual relationship. (What was the result of the litigation?). If the son is planning to use the same name you've been using for the event, you probably have a superior claim because of your five years of use.
What about the son's five years of nonuse of the trademark? Three years of nonuse of a trademark creates a presumption that the trademark has been abandoned. At least that's the rule for federally registered marks. That's just a presumption however and if the son can prove that during the five years he always intended to resume use, then his rights to the mark will not be considered abandoned.
Takeaway points. You should file a federal registration for your trademark (probably in Class 41). Often the success of an event hinges on the organizer's relationship with the government that issues the permits and the merchants who serves as sponsors. It's possible that if you focus on these relationships and maintain your name rights, you will be able to continue without hassle from others.