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.
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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
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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
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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
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