Trademarks, Threats, and Failure

It’s been almost a week since the letter of clarification (see my previous BLOG entry) was disseminated to limited distribution by the Superintendent of West Point. The damage caused by the Academy’s re-branding and trademarking campaign remains. Hopefully there has been additional and personal back channel communication with parents whose graduates are fighting and continue to die for their country. That they have been profoundly hurt and offended by the Cease and Desist letters they’ve received is a matter of record. 

The USMA Association of Graduates (AOG) is attempting to distance itself from this entire affair and who can blame them? They’re poised to kick off a fund raising campaign in the near future and it’s in their best interest to let the furor die and hope that people will forget. Or, with enough time having passed, at least forgive. This distancing, stating that the Cease and Desist campaign is a unilateral move on the part of the Academy, takes on a pronounced pallor when viewed in light of the fact that the AOG is a beneficiary by contract of a percentage of the income stream generated by the USMA trademarks.

To the extent that his or her staff determines a commander’s effectiveness, the Superintendent’s staff failed him. From the poorly planned and even more poorly executed campaign against graduates and parents by the USMA Office of the Staff Judge Advocate (OSJA – the lawyers), to the lack of effective direction provided by the Academy’s Dr. Seuss quoting Public Affairs Officer, the trademarking and re-branding effort continues to plow along with all the finesse of a drunk at High Tea.

~ Dempsey

Behind the Scenes, a Response

In reaction to the uproar caused by the OSJA, USMA sending threatening letters to West Point Parents Clubs, the Superintendent of West Point today had the email below forwarded to West Point Society, Class, and Parents Club Presidents for whom the AOG, USMA has an email address (I know, it’s signed by the President of the AOG but the original was sent by the Superintendent):

***This message is being sent to Society Presidents.***

Dear Society Leaders:
The Superintendent and Chairman have asked that I share with you a message sent by LTG Hagenbeck to Parents Club Presidents today.  Thank you again for all you do for West Point and its graduates. 

Bob

West Point Society Leaders (West Point Class Leaders),

I know there has been discussion about our recent trademarking efforts so I wanted you to see this email I just sent to our Parents Club Presidents. Hope to see you here for the AOG Leaders Conference in August.

LTG Hagenbeck
Superintendent
Parents Club Presidents,

As many of you know, West Point has begun the necessary task of more stringently enforcing our trademarks, and we have sent letters explaining this to our Parents Clubs. I understand that these letters worried and even offended some of you, our most ardent supporters. For that I apologize. Let me assure you of my continued appreciation and respect for you and your organizations.

However, for the good of the Academy we must continue to ensure all uses of our trademarks are approved and appropriate. This spring, at the Parents Clubs conference, we gave a presentation on the trademark program, and later sent out information letters to the approximately 100 parents clubs. Of those 100 clubs, only nine remained out of compliance and received a second notification.

Trademarks are a type of intellectual property. They are the words, phrases, and symbols that represent West Point. We began registering our marks in the mid-1970s and the program has grown, particularly as the market for sports related goods has exploded. Information on our trademarks has been on our website for several years at <http://www.westpoint.edu/trademark.asp>http://www.westpoint.edu/trademark.asp

Under US law we must protect these trademarks or we will lose our right to the exclusive use of our own marks. Truly, the potential exists that, without the proper enforcement our marks could be used without permission. If that happens, not only could anyone anywhere sell merchandise with our name and logos, costing cadet activities and athletics approximately $400,000 a year, but our marks could be modified and even used in profane or political ways.

The enforcement process is not directed specifically at you, our Parents Clubs, or at our Societies, Class Organizations or the Association of Graduates. We have not, and will not, ask for those who support us to pay for the use of the West Point name or logos. But, to ensure we meet our legal obligations as trademark owners, we do limit the use of our logos and we will work with you to ensure that all items have been licensed with our agent, the Collegiate Licensing Corporation, and any products sold pay the licensing fee.

Thanks for trusting us with your most precious possession, your children, and thanks your continued support of West Point.

Beat Navy!

Buster Hagenbeck
Superintendent

Robert L. McClure ‘76
COL (USA, RET)
President & CEO
West Point Association of Graduates
698 Mills Road
West Point, NY 10996
Phone:  845-446-1600
FAX:  845-446-1696
robert.mcclure@wpaog.org
www.westpointaog.org

Serving West Point and the Long Gray Line

*****

For history regarding the above and other issues, see Behind the Scenes, Behind the Scenes Part II, and Behind the Scenes – Reactions.

Behind the Scenes – Reactions

Responding to the overwhelming reaction brought about by the USMA OSJA’s overbearing approach to control West Point Parents’ Clubs activities and Web site content, the Chairman of the USMA Association of Graduates issued the following as damage control (SIC), my comments follow:

From: Ted Stroup

Subj: AOG Advisors update on Parents Club “Branding Issue”

This note is to provide you the latest on a controversial issue swirling over the net and telephone circuits about a USMA JAG correspondence with our West Point Parents clubs. I would note that there is a lot of emotion here and not all the information about how  is yet available – but these are the facts as I have picked them up over the last several days.

Let me assure you on two things – 1) your WPAOG has not been engaged in this action between USMA and the Parents Clubs – although we are being erroneously blamed or faulted for the action – more on that later, and 2) the Supe and I have discussed this situation several times and he is energized to take corrective – not punitive action – in both the policy and implementation area – so  you should hear from him first of the week.

WHAT HAS OCCURRED: USMA has undertaken a program over the last year or so to establish protection and ownership of the West Point name and “brand” – meaning images, logos, colors, and names. As I have learned, the initial outreach was to commercial entities that use or have been using West Point ” branding items”. I cannot report on the methodology or success of this effort to date. At some point this spring, USMA communicated to its annual spring Parents Clubs session at West Point that they would be asked to submit a request for use of such West Point items that they use or would use as a Parents club. I am not sure of the extent of effectiveness of this initial contact with the participants and what ’stuck” as to action required. Nevertheless, later this summer,

USMA sent out in legalese a “cease and desist” letter to those clubs that had not response. Hence, the brouhaha that has spiraled around the nets – both WPAOG and WP-ORG. There are a great number of Graduates upset over this action. I have not seen one of the “cure” letters, but what ever the letter(s) said – it has caused a great deal of frustration and hubris – one needs only look at my email traffic. the messages have ranged from “… how could this happen; what does this mean; how can they and of course, how can you WPAOG send out such letters and that was accompanied by “…forget anymore support from me, if you and USMA, act like this to our Parents club.”

WHAT I KNOW : I can tell  you that this action was a  USMA stand alone action that our WPAOG had no participation in – in either process or in the decision tree -leading to this issue development. The Supe is into this from my discussion with him these past several days and will take action and communicate to the Graduates soon. He has an action team meeting Monday to sort through the battlefield debris. We have had a good discussion on this and both acknowledge it is a poorly managed staff action by USMA..I also know that there is a lot of e-talk going about on blogs and forum and class nets – some of which is mis-truths, not factual basis and feeding the fire comments.From some of the comments, it is almost like the blogging going on between Obama and McCain, in the to and fro. Of course, some of these comments paint WPAOG with a tar brush as being the main culprit. To repeat, it ain’t us that is the problem. It is us that is working with the Supe to address the issue and move to solution.

WHAT DOES THIS MEAN TO ME – At -Large, Society, Class. Most of us are connected with our local society as Graduates. Most of the Societies are connected by sponsorship, membership, or participation with our local parents club. Parents Clubs are valuable for both retention and recruiting for our alma mater and their eagerness and stability is important. I would ask that you reach out and contact the your local contact – coordinating especially with you local Society – to ascertain if they are in this “branding” issue box. If so, inform that the USMA action is not punitive – but merely housekeeping from the intellectual property perspective and that the USMA leadership will be providing clarifying info soonest. I have encouraged the Supe to move quickly on this during the coming week. If you are a class advisor, I have sent a separate clarifying email to our class leaders – check and see if it made it and stuck for information.

As I understand from my discussion with the Supe, the program will be brought up at our Leader’s conference next month but the Supe’s immediate action will occur more quickly next week.

WHAT ARE OTHER ISSUES INVOLVED: Ancillary to the e-discussion going on is the linkage of this issue by USMA and USMA’s denial of WP-ORG from participating in the “R” day membership events in Ike Hall. I dont have the full story here but what I know is that WP-ORG asked to participate in this year’s “R” day events to promote what they do for Graduates and Families – as aside they have done this in the last several years – last year , I personally intervened with USMA C/S to allow WP-ORG to participate last year. Somehow linkage of this “branding issue” and the USMA denial for this year at “R” day has become misconstrued or promoted as a move by WPAOG to put WP-ORG out of business. Furtherest from reality or the truth, we are looking for ways to leverage the energy and talent of both organizations to better serve West Point and its Graduates. This has not occurred yet and I still have it as a goal as your Chairman. I want us to look to future opportunities to exploit the strengths of both organizations. Still waiting to find solution set.

WHAT ELSE AND WHAT’S NEXT: I will keep pressing USMA leadership to get the action back under control. I will ask that you use prudence and judgment in the swirl of e-info going around the net. In particular, we are not at war with WP-ORG on this issue or on their denial by the USMA to participate in this year’s “R” day. I addressed that above.  Hug your local Parents club if  you are engaged with them and tell them nothing nasty will come if they have not responded to the USMA JAG yet. Stay steady and be rational for the facts not the rumors or the “Rush Limbaugh” like speculations or innuendos. And next Beat Navy. Cheers

It’s heartening to hear that the Superintendendent is about to take control of this issue and bring the OSJA back into line. As the AOG attempts to distance itself from the OSJA’s actions, however, there are some issues regarding what’s been written above:

• As to this being a unilateral action on the part of USMA with the AOG having no hand in it, I got a different inpression from a talk I had with the AOG president. It was the president who explicitly told me, “I had to shut down…” an organization selling liquor under the West Point name. This would certainly lead one to believe that the AOG is, to some extent, involved in the above policing action.
• The AOG latches onto cadet/candidate parents at R-Day as a future source of revenue for themselves and USMA.  With that in mind it would seem logical for the two organizations to communicate regarding actions taken that may affect the cash flow.
• The following terms are used to describe recent electronic traffic regarding the issues specified above: “mis-truths”, “not factual basis and feeding the fire comments”, “rumors or the ‘Rush Limbaugh’ like speculations or innuendos”. It would help to identify the specific “mistruths”, etc., so that they may be factually dispelled.
• The paragraph under WHAT ARE OTHER ISSUES INVOLVED would lead the reader to believe that the AOG’s actions toward WP-ORG are altruistic and that denial of our participation at this year’s R-Day was a unilateral action on the part of the USMA OSJA. In fact, during last year’s approval process, wherein WP-ORG was initially denied, the OSJA provided the AOG with WP-ORG’s approval packet. Why? Furthermore, the president of the AOG, not the OSJA, informed me that WP-ORG had been denied participation. Why would he be in possession of this information?

When and if WP-ORG receives answers to its questions or additional information, we’ll let you know. For history regarding the issues addressed here see, Behind the Scenes and Behind the Scenes, Part II.

~ Dempsey

Behind the Scenes, Part II

My recent post, Behind the Scenes, generated a good deal of interest and many pertinent questions. In response and by way of illustration, here is part of an email written on 1 October of last year by WP-ORG advisor Doug Dribben to the USMA Deputy Garrison Commander and the Staff Judge Advocate, COL Robin Swope, in an attempt to clarify exactly what the steps were which WP-ORG should take in the future to ensure that we would be allowed to be at West Point for R-Day. The letter also addresses the trademarking issues regarding the words “West Point” and associated images as controlled by the Academy and the USMA Association of Graduates.

~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~

Mr. Anthony Brown
Acting Deputy Garrison Commander
West Point, NY 10996

Dear Sir:

I am writing on behalf of West-Point.Org, a private 501(c)(3) organization connecting almost 30,000 USMA grads, parents, and friends of West Point since 1996. The organization is supported entirely through user donations and fees for credit card processing and affiliated relationships with non-USMA-related organizations. One of those services is the provision of information at the USMA Reception Day (R-Day), which we have done since 2000.

This year, we were informed that we could not participate in R-Day without receiving approval to operate on the installation as a Private Organization (PO) under the provisions of Army Regulation (AR) 210-22.  We applied, following the guidelines contained in the regulation, even though I had a conversation with Colonel Robin Swope regarding the necessity for such approval, and pointed out that my class and several other graduate private entities participate in activities on the installation with no such requirements.  We were permitted to participate in the R-Day activities.

We have since been notified that our request for approval was denied, with the sole reason given that we do not meet the minimum requirements for approval.  No specifics were provided.  We were, however, informed that we could participate in R-Day activities without being a PO, contrary to COL Swope’s opinion.  However, we are unaware of the approval process and authority for such participation in the future.

We were also informed that:

“the Department of Army owns the trademarks associated with the United States Military Academy (USMA) and has authorized the Military Academy to administer the trademark program. The marks are controlled by the Office of the Directorate of Intercollegiate Athletics and the Association of Graduates.  To use any USMA-related trademark on any item or in connection with any service, a potential vendor must first obtain a license, or permission, to use the trademark. Only an officially licensed vendor is approved to produce emblematic merchandise bearing USMA-related trademarks. Merchandise produced without written authorization may infringe upon USMA’s trademarks and subject the user to disciplinary action, in addition to  enforcement through all available legal remedies, including seizure of the merchandise. To become a licensee you may contact Collegiate Licensing Company” at 770-956-0520 or visit their web site at www.CLC.com.”

The inclusion of this information in the denial of our application to become a PO is confusing.  The organization sells no merchandise, service, or other West Point-trademarked items.  The CLC web site page for “Licensing Information” states:

“Licensing is the granting of rights to a third party that desires to associate itself commercially (for profit and not for profit) with an institution through the use of trademarks, names, logos, symbols and slogans.

The institutions that are members of the CLC Consortium own their respective trademarks and icons and have contracted with the Collegiate Licensing Company to aid in protecting, managing, and developing their brands.

A license must be obtained by anyone who wishes to use the names or icons of CLC member institutions. Licensing protects the institutions’ names, reputation, and image by permitting only appropriate uses and assuring that only quality products are associated with the institutions.”

The Trademark Electronic Search System of the United States Patent and Trademark Office indicates that The Department of the Army, Office of the Judge Advocate General, Intellectual Property Office, obtained a registration for “West Point” for use on merchandise on February 22, 2000.  The protected goods and services do not include activities such as those that West-Point.Org engages in in support of the West Point grads, parents, and friends.  Although the Academy shield and crest received trademark protection and “West Point Duty Honor Country USMA Honor” received work mark protection in 1984, the disclaimer to that registration notes “No claim is made to the exclusive right to use the words ‘Duty,’ ‘Honor,’ ‘Country,’ ‘West Point,’ ‘MDCCCII,’ apart from the mark as shown.”  On May 22, 2001, the Association of Graduates received trademark protection for “1802 West Point 2002 Bicentennial,” again with a disclaimer that “No claim is made to the exclusive right to use ‘1802 West Point 2002 Bicentennial’ apart from the mark as shown.”  While there are other trademarks with the words “West Point” in them, none claim exclusive use of the words beyond the specific uses in their registrations.  Accordingly, there is no legal requirement for those whose use predates registration to obtain permission from a registrant, especially when the services offered by the original entity are different than those claimed in the trademark registration.

       Regardless of our use predating any trademark registration, West-Point.Org chose to request permission from LTC(R) James Flowers.  I personally spoke with LTC(R) Flowers this year via telephone when the issue of disputed use of the words “West Point” first arose.  He informed me directly that he had given approval for West-Point.Org to use the words “West Point,” as he had informed other members of the organization’s board of advisors.

       In the latest communication, LTC (R) Flowers wrote to West-Point.Org Chief Financial Officer Jack Price: “Jack, We, USMA and your organization, must now formalize our relationships. Please follow the instructions in Mr. Browne’s letter requesting your desires. Thanks Jim.”  Accordingly, we seek to formalize those relationships in the following manner:

       First, West-Point.Org is not a potential vendor.  Accordingly, there are no instructions to follow.  If USMA disagrees, please have USMA identify the product, emblematic merchandise, or service we vend, and we will take appropriate action.

       Second, please confirm or deny in writing that LTC (R)Flowers, on  behalf of the trademark owner, has granted permission for us to use “West Point” even though our use clearly predates the registration, and thus does not require permission.

       Third, please confirm in writing that we do not require permission to act on the installation as a PO for R-Day activities.  Also, please identify with specificity the area in which we did not meet the minimum requirements for PO approval and the regulatory authority for that/those requirements.

       Fourth, please confirm the process by which we obtain permission to participate in annual R-Day activities, including the information required, the approval process, the approving authority, and other organizations that participate in such activities that must undergo the same process.

       Like you, we wish to have the relationship reduced to writing and kept both by us and by the Garrison Commander’s Office, the Office of the Staff Judge Advocate, and the Office of the Director of Intercollegiate Activities so that all concerned know the facts.  It costs this organization time and money to respond to several different entities on West Point that request materials already at West Point and provide contradictory requirements for our activities.  Once we all understand our relationship, we can then continue in the support of the USMA grads, parents, and friends of West Point that we have done for over a decade as a team.  After all, we are both in existence to support and improve the Academy, its graduates, and its friends.

       Please contact me if you have any questions.  Thank you both for your assistance in resolving this matter quickly.

                                                                               Sincerely,

                                                                               Douglas A. Dribben
                                                                               /for/
                                                        Board of Advisors, West-Point.Org

Cc:
LTC(R) James Flowers
Office of the Directorate of Intercollegiate Athletics
United States Military Academy
West Point, NY 10996

COL Robin Swope
Office of the Staff Judge Advocate
United States Military Academy
West Point, NY 10996

~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~

The end result of the above dialogue was that WP-ORG agreed to an MOA (Memorandum of Agreement) with the Academy allowing us to use the words “West Point” and associated Academy images for a period of two years, after which we will again be forced to address this issue. As detailed in “Behind the Scenes” WP-ORG was effectively denied a presence at West Point for R-Day.

Doris Turner, USMA ‘80, writes:

Dempsey and all at WP-ORG

We, the grads and families who use this media to stay connected and to vent our opinions, stand solidily with you and the WP.ORG organization. WE ARE WEST POINT, not some weenie paper-pusher worried about branding. WE are the source of continued support and pride in our Alma Mater. WE are the daily recruiters for future graduates. WE are the power to right the course when USMA goes astray. or stays on point. WE ARE WEST POINT, and have earned the right to display the emblems of our binding source. (I suppose the next step for USMA OSJA is to send a Cease and Desist Letter to US ARMY.)

Thanks very much for your words of support, Doris. It’s that spirit that keeps us at WP-ORG working to make your online presence the best that it can be.

As you know, COL. Swope’s office is indeed peppering the extended West Point community with Cease and Desist letters. Here is the one sent by registered mail to the West Point Parents Club of the Gulf Coast of Florida: 

DEPARTMENT OF THE ARMY

UNITED STATES MILITARY ACADEMY

West Point, New York 10996

June 20, 2008

 

REPLY TO ATTENTION OF:

Administrative and Civil Law Division/

Office of the Staff Judge Advocate

Ron DeCastro

West Point Parents Club of the Gulf Coast of Florida

Dear Mr. DeCastro:

As a West Point supporter, you are well aware of our reputation as the world’s premier leader development institution. Because trademark law requires that owners actively protect their logos, marks, and verbiage, West Point must vigorously pursue and, if necessary, take legal action against those who use our Institutional Names and Identifying Marks without permission.

This letter is written to protest your organization’s unauthorized use of our Institutional Names and Identifying Marks in connection with your private organization’s website located at www.west-point.org/parent/wppc-gulf-coast/aboutus.html. Specifically, your use of the ATHENA HELMET exceeds the license granted to you by the Academy Licensing Director in the authorization letter dated April 4, 2008.

Moreover, to mitigate against consumer confusion, your use of the following disclaimer is required in your organization’s routine operations, including fundraising activity:

“DISCLAIMER: This organization is privately owned and operated. This private organization is not endorsed by the United States Military Academy, United States Army, or Department of Defense.”

I appreciate your immediate cooperation in the removal of the unauthorized mark from your website, as well as inclusion of the mandatory disclaimer. Unless this office receives written confirmation of your compliance with the demands asserted herein, no later than July 20, 2008, we will coordinate further legal action. . This letter is without prejudice to any claim for damages or other relief in the event that litigation proves necessary.

Thank you for your prompt attention to this matter. If you have any questions, please do not hesitate to contact me at laura.heIler@usma.edu.

Sincerely,

Laura H. Heller

Administrative and Civil Law Attorney/

Intellectual Property Law

~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~

I was struck by the threat of legal action against the parents of Cadets and graduates in initial correspondence. I also find it of more than just passing interest that our Association of Graduates stands by and remains silent.

~ Dempsey