Trademark for Unincorporated Association

From Alabama, USA:

Greetings,

I belong to a local sports club that has operated under the same name for the past 25 years. Up until three years ago, this club operated loosely and was open to the public without any dues requirement. Since 2006, the club has required dues for membership (without any other restrictions), operates under a set of bylaws crafted from templates found in Roberts Rules of Order, Revised, and has duly elected officers.

One of the club's original members was the person who came up with the name for the club. Recently, this member became disgruntled with one of the officers, and rather than attempt to seek change by either running for office or using proscribed procedures within the bylaws to seek that officer's removal from office, he claimed that he "owned" the name and by virtue of said ownership was dissolving the club in order to reform it under his leadership. He has continually stated that he can prove he has a "copyright" to the club name, pointing to old tournament flyers that have both the club name and his (as a tournament director) on them. We, the legitimate officers of the club, have pointed out to him that a copyright cannot be conferred to a name (for obvious reasons I don't need to spell out to you lawyers). He has continued on his path to usurp the genuine club by creating a new club operating under the same name, but it functions under a set of bylaws created by him that invest power solely to the board rather than its members, and the only membership requirement is that you sign your name to his bylaws. (Yes, I know it's weird.)

Immediately upon his pronouncement that the existing club was dissolved by his decree, he proclaimed that he would "bring legal action" against anyone else that continued to use the club name (again, by virtue of his "copyright ownership"). With the backing of most of its members (some sycophants peeled off because this person is somewhat of a legend in the sport and up to now has had a solid reputation) the legitimate club officers have continued to carry out their responsibilities, basically ignoring his threats and claims. However, after some modest delving into the issues, we discovered that not only did he have no legal claim to copyright protection, he had not filed for trademark protection, which is available to unincorporated associations (as they are legally referred to) such as ours.

So in an effort to protect the integrity of the club, one of our officers filed an application for trademark protection of the club name (formally referred to as a collective membership mark). The application was accepted and is currently under review. According to the US Patent and Trademark office, conferral of the trademark will probably take about a year or so.

Meanwhile, this rogue usurper continues to operate in the face of much opposition; however, due to his reputation he has garnered deference from the national organization that sanctions events within our sport, and despite our protestations has received santioning for a major event. The national organization has stated that the club name issue is a local one that they will not attempt to resolve by granting either club sanctioning for what have been "traditional" events, but they come up with a weasel-y decision that steps around previous policy. Be that as it may, I'm starting to digress from the issue at hand which I'd like your input on.

In your opinion, does this person indeed hold any right to control the use of the club name? Do we have any rights by which we can protect the use of the name for the legitimate club, either by virtue of our proven history of operation with legally elected officers and dues-paid membership, or by virtue of holding a pending trademark?

Frankly, we've been praying this doofus will "bring legal action" so that we can get this issue in front of a judge who we believe would, upon hearing all the facts, rule in our favor; however, due to the polarizing nature of the conflict within our local sporting community, we don't want to be seen as the "aggressor" by initiating any legal action ourselves at this point. I am unsure that having a pending application for trademark provides any protection at all, but if it is conferred in the future we would be more than willing to issue a cease and desist to this person.

Please advise or at least offer an opinion. Any input from a respectable source would be helpful. Thanks in advance. I appreciate your patience to read through such a long description of what seems like a petty affair.

Respectfully,

C.C.

You may want to have details looked at by counsel as opposed to a forum but it would seem if the club was in fact using the name and had agreed rules and procedures he probably lost it to the club...

And he failed to follow the procedures to make any change.

A judge could rule quickly most likely. It is not being the aggressor to simply seek a clarification of the issue if two sides see it differently.

It would seem you would prevail.