When to Send a Cease and Desist: Two Real Trademark Cases for Wedding Pros

One of the most common questions I get from wedding professionals who discover someone using a similar name is some version of "can I make them stop?" The answer is almost always "it depends," and what it depends on is a lot more nuanced than most people expect. Let me walk you through two real cases from my practice — both anonymized — to show you how this actually plays out.

The photographer who had to send a trademark cease and desist

The first involved a photographer who had been using her business name since 2019. We ran her trademark quick search, file the mark, and got it approved and fully registered. She later discovered another photographer using a nearly identical name, including the dominant two-word phrase that made her mark distinctive.

The second photographer had only been using the name since early 2024, almost five years after my client's first use and registration. On paper this looked like an open-and-shut case. My client had prior use, federal registration, overlapping services, and the same target market. We sent a cease and desist and the infringing photographer ultimately rebranded. But what made it straightforward wasn't just that someone was using a similar name, it was the combination of a registered mark, clear prior use, and genuine likelihood of consumer confusion.

why timing is everything, and why you should register early

The second case was more complicated and illustrates a trap that catches a lot of people. A wedding venue came to me because they'd discovered another business using their exact name for the exact same thing. They had been using the name since May 2023 and had a pending federal trademark application.

But we had a big problem. The other party also had a pending application that was filed about two months prior, but they were claiming first use in commerce starting June 18, 2023, just three weeks after my client. Suddenly what looked like a clear infringement case turned into a priority dispute.

The entire case came down to whether my client could prove they were actually selling services under that name before June 18th. An invoice. A payment record. A customer contract. Something with a date. If they couldn't prove it, they might be the ones who had to rebrand.

three things to keep in mind about trademarks

These two cases illustrate the most important things to understand before you send a cease and desist or respond to one.

The first is that federal registration matters enormously. In the first case, my client had it and the infringer didn't. That created a legal presumption of ownership and gave us a clear basis for action. Without registration, you're relying on common law rights, which are real but harder to enforce and easier to dispute. If you're building a brand worth protecting, the registration process exists for exactly this reason.

The second is that prior use determines ownership, not registration date. Trademark rights in the US go to the first person to use the mark in commerce, meaning actually selling something under that name — not the first person to file a trademark application. This is why the second clint case turned on a very short window.

If you haven't registered your mark yet but you've been using it for years, you likely have common law rights. But proving them requires documentation, and most business owners don't keep the kind of records that hold up when someone challenges your first use date.

The third is that likelihood of confusion is the actual legal standard, not exact copying. You don't have to find someone using your identical name to have a case. The question is whether a reasonable consumer could confuse the two businesses. That analysis considers how similar the names are, whether the businesses offer the same or related services, whether they market to the same customers, and how distinctive your mark is. In the Wild Heart case, the dominant phrase was identical and both businesses did boudoir photography. That was enough.

considerations before sending a cease and desist (or after receiving one)

Before you send a cease and desist, or before you ignore one, there are questions you need to answer honestly. Do you have a registered trademark, or are you relying on common law rights? Does the other party have a registration? Who used the name first, and can you prove it? Are the marks similar enough that consumers would actually be confused? Is the juice worth the squeeze, meaning is the potential harm to your brand significant enough to justify the time, money, and stress of enforcement?

If you're on the receiving end of a cease and desist, don't panic and don't ignore it. Read it carefully, figure out whether the sender actually has a registration and legitimate prior use, and get an attorney to help you evaluate your options before you respond. A lot of cease and desist letters are sent on weak legal footing. Some are not. Knowing the difference matters.

And if you're the one considering sending one, the same rule applies. Get help before you do. The goal is to protect your brand, not to start a fight you can't finish.

If you want to get started actually protecting your mark, we’d love to get it registered for you. Start by booking a trademark search here.