Trademark Infringement Lawsuit
On March 4, the United States District Court Chief Judge Deborah Chasanow issued a preliminary injunction in the trademark infringement lawsuit in favor of Potomac Conference and Takoma Academy. An injunction was issued against the breakaway alumni group known as Takoma Academy Alumni Association, Inc.
The Potomac Conference has documented the steps that led up to (and include) the recently issued preliminary injunction (see "two page ruling"). We have also attached a letter dated April 12, 2013 demanding that TA cease and desist from all further use of the name 'Takoma Academy Alumni Association' (see "Finnegan Letter"). This demand contained a threat of legal action if TAAA, Inc.'s demands were not met by April 19, 2013. This action by TAAA, Inc. required a legal response from TA and the Potomac Conference, which ultimately led up to the filing of the suit and the issuance of the preliminary injunction on March 4, 2014. In fact, all of the demands and claims made by TAAA, Inc. in that threating letter were unfounded per the judge's ruling.
We are thankful for the positive ruling that secures ownership of the Takoma Academy brand, protects the good name of our educational ministry and ensures that its legacy remains strong. As a school and alumni we now have the opportunity to move forward in strength together, to fulfill the mission of Takoma Academy, which is to lead young people to Jesus Christ, provide excellence in academics and a commitment to service.
Common Assumptions Explained
The following table explains the assumptions surrounding the TAAA Inc. and Potomac Conference lawsuit. The Potomac Conference has made every effort to provide factual information and documentation. This document will be updated accordingly.
|1. TA filed suit without provocation.||
On April 12, 2013, TA's attorney received the following letter from the Finnegan Law Firm, a prominent international law firm, who represents TAAA, Inc.:
In addition, the letter closes with the following paragraph:
"We ask that TA promptly provide TAAA [Inc.] with written confirmation that TA will comply with these demands. Since we have already seen Alumni Weekend promotional materials utilizing the Mark, we wanted to specifically advise you that any failure in complying with our requests to cease and desist will compound the damages for which TA may be liable. If we do not receive a satisfactory response by April 19, 2013, TAAA [Inc.] is prepared to take all steps necessary to protect its valuable intellectual property rights, without further notice to TA." (Emphasis added.)
So, in other words, TA was facing a lawsuit by TAAA, Inc. if TA did not capitulate by April 19, 2013. Faced with inevitable litigation, the TA board decided to file suit.
|2. When deciding to file the suit, the board contained no TA alumni.||
Ten alumni, 13 past or present parents and four faculty/staff are active board members as of March, 2014.
|3. The group formally known as the Takoma Academy Alumni Association, Inc. had the rights to the TA Alumni name.||
A federal judge has ruled that they had no such rights. (See two-page summary).
|4. Potomac Conference has no interest in settling this lawsuit and just wants control.||
TA and the Potomac Conference wish to bring an end to the lawsuit. Takoma Academy insists that its name, and the name Takoma Academy Alumni Association, properly remain the property of the school, not some independent group. It is critically important that the school and the official alumni group remain in an appropriate legal relationship and work closely together to maintain the confidence and the integrity of the financial support provided by alumni.
PC/TA representatives have met on the following dates to negotiate a settlement of the issues surrounding the lawsuit:
Most recently, TA attempted to meet March 25, 2014, but the request was refused by the breakaway alumni group.
|5. Takoma Academy Alumni Association has changed its name.||
The Takoma Academy Alumni Association has never changed its name and has no intention of doing so. The breakaway alumni group, Takoma Academy Alumni Association, Inc. (TAAA, Inc.), is attempting to change its name to Tiger Alumni Association, Inc.
"The official Takoma Academy Alumni Association is active and strong," Susan Cooksey, President. Alumni weekend, sponsored by the Official Alumni Association, is scheduled for April 25 - 27, 2014.
|6. Takoma Academy Alumni Association, Inc. had "strong defenses" to the lawsuit, but graciously agreed to go along with the court injunction to bring peace.||
Their defenses were found to be without merit by a federal judge. Their agreeing to the injunction is required by court order of a federal court judge.
Click the links below to read injunctions.
|7. The breakaway alumni group only wants to help the school||
The breakaway alumni group does list helping TA as one of its goals, however it has an additional goal of providing financial assistance to fellow TA alumni. TA does not want alumni to give to an independent organization mistakenly thinking that they are helping TA when in fact the monies may be used for other purposes.
The following is a quote from, "Message from the Board of Directors," a letter written by the directors of TAAA, Inc.; dated Jan. 20, 2013.
"The TA Board simply does not support our expanded goal of helping and supporting each other - the alumni. Indeed, according to their letter, the only mission of the Association should be to support the school as the Board so defines. We respectfully disagree. Although TAAA supports and loves our school, students and all members of the TA family, it is important that the alumni be supported as well."
|8. The judge made her ruling based on listening to the evidence produced only by Keith Hallam, Vice President for Education, PC||
This is completely false. The judge based her ruling on the applicable legal statutes and existing case law precedents after listening to the testimony of six witnesses testifying for the school and two witnesses testifying for TAAA, Inc. All witnesses testified under oath before a federal judge. TAAA, Inc. had three lawyers at the hearing and each witness for Takoma Academy was cross-examined by an attorney for TAAA, Inc.
Click the links below to read injunctions.