ECC Board of Trustees

Date: August 28, 2014 Subcommittee: Budget, Finance & Contracts Agenda Item: License Agreement between the United States Postal Service and Erie Cqmmunity College This item is for: For Board's Approval Backup Documentation: Attached to this document

Background Information:

The United States Postal Service Legal Department has contacted ECC regarding the use of "Old Post Office" in describing ECC's City Campus location. Those words appear in ECC publications as well as ECC's website. The words "Post Office" and "Old Post Office" have been trademarked by the United States Postal Service.

Reasons for Recommendation:

By entering into a license agreement with the United States postal service, ECC will not run the risk of any possible trademark infringement.

Fiscal Implications:

There are no fees associated with this License Agreement

Consequences of Negative Action:

The United States Postal Service may commence litigation against ECC for the use of its trademark.

Steps Following Approval:

ECC will take steps to ensure that in any promotional materials including websites the appropriate language required by the agreement is included.

Contact Information If Any Questions:

Kristin Klein Wheaton, Executive Vice President Legal Affairs

Telephone 270-4432, or email [email protected] LICENSE AGREEMENT

The parties to this License Agreement are the United States Postal Service also known as the Post Office ("Post Office"), an Independent Establishment of the Executive Branch of the Government of the United States and Erie Community College ("Licensee"), whose principal place of business is 121 Ellicott Street, Buffalo, NY. The Post Office and Licensee may be referred to individually as a "Party" and together as the "Parties" in this License Agreement (the "Agreement"). This agreement is effective on the date of the last signature below (the "Effective Date").

A. The Post Office owns the trade name and trademark POST OFFICE™, which it and its predecessors in interest have used for over two hundred years.

B. Licensee desires to use the POST OFFICE™ mark within the OLD POST OFFICE™ mark (collectively the "Marks") in connection with its downtown campus building located at 121 Ellicott Street, Buffalo, NY that was once a POST OFFICE™ facility (hereinafter, the "Old Post Office TM Building").

To avoid conflict between the Parties and in consideration of the mutual promises and covenants in this Agreement and for other good and valuable consideration the receipt and sufficiency of which is hereby acknowledged, the Parties agree as follows:

1.· The above recitals are incorporated into this Agreement as if fully set forth herein.

2. The Post Office hereby grants to Licensee a non-exclusive, non-transferable, royalty­ free, terminable license to use the Marks in connection with the promotion of the Old Post Office ™ Building in accordance with the following terms and conditions:

a. Licensee shall acknowledge the Post Office's ownership of the POST OFFICE™ trademark on all promotional materials that bear the Marks by including the following statement: "POST OFFICE™ and OLD POST OFFICE™ are trademarks of the United States Postal Service and are used with permission, under license." b. Licensee agrees that all use of the Marks shall be in accordance with standards, specifications and instructions approved by the Post Office from time to time, including use of TM and ® symbols. c. The scope of this license extends only to the use of the Marks and does not include any other Post Office materials, videos, trademarks, service marks or logos. d. This license will automatically terminate should Licensee's business no longer be located in a former POST OFFICE™ facility

3. This agreement shall run from year to year unless either party provides thirty days written notice of termination or the agreement is otherwise terminated as provided for herein.

4. This license does not include the right to assign the license granted herein in whole or in part .. Any such assignment or attempted assignment is void. Licensee may sublicense use of the Marks only upon prior written approval of the Postal Service, which may be given in the Postal Service's sole discretion.

5. Licensee acknowledges and agrees that the Post Office owns all right, title, and interest in and to the Marks and that Licensee's use of the Marks shall inure to the

4539686_1 benefit of the Post Office. Licensee shall not, at any time, acquire any ownership rights in the Marks by virtue of any use it may make of the Marks. To the extent that Licensee has acquired or does acquire trademark, trade name, or similar rights in the Marks, Licensee hereby assigns those rights to the Post Office, along with the goodwill of the business symbolized by the Marks. The Parties agree that the license the Post Office grants to Licensee in this License Agreement constitutes sufficient consideration for this assignment.

6. Licensee agrees and acknowledges that the license granted herein does not include the right to use the POST OFFICE™ mark on any other services or promotional merchandise. Should Licensee wish to use or sublicense the POST OFFICE™ mark for other services or on merchandise, it must obtain the written permission of the Post Office in the form of a separate agreement. ·

7. Licensee warrants that services offered under the Marks will be offered and advertised in accordance with all applicable laws and regulations. Licensee agrees that it will not use the Marks in a manner that is likely to be viewed as violent, sexually provocative, offensive, obscene, in violation of "hate crime" laws, or otherwise likely to shock or offend the community or in such a way as to bring the Post Office, its officers, employees, or Board of Governors, or its trademarks, service marks, logos, or copyrighted materials into public disrepute, scandal or ridicule, or that derogates from the public image or reflects unfavorably or negatively upon them.

8. If the required quality standards and/or the intellectual property usage notice requirements are not met by Licensee or, if such quality standards or such notice requirements are not maintained throughout the term of this Agreement by Licensee, the Post Office may terminate the Agreement immediately. Licensee acknowledges that such failure to act may result in irreparable harm to the Post Office, and create the right to immediate termination of this Agreement and of the license granted herein by the Post Office.

9. Licensee shall take no action to challenge or harm the Post Office's rights in the Marks or assist any third person in doing so.

10. Should Licensee, despite the lack of any right to change, alter, or modify the Marks or attempt to use the Marks with additional services, proceed to do so, then Licensee's acts of changing, altering, or broadening the Marks shall be deemed an automatic assignment of all rights in the changed, altered, modified or broadened Marks (herein the "New Marks") to the Post Office, and the Post Office shall be deemed to own such New Marks, along with the goodwill symbolized thereby. Any use of New Marks shall inure to the benefit of the Post Office. Licensee hereby confirms assignment of all right, title, and interest in any New Marks to the Post Office, but will memorialize such assignment as necessary in writing and will execute such other papers as are necessary to maintain or register the Post Office's rights in the New Marks.

11. This Agreement may be executed in two or more counterparts, and by facsimile, all of which shall be considered one and the same agreement and shall become effective when one or more counterparts have been signed by each of the parties and delivered to the other party, it being understood that all parties need not sign the same counterpart.

4539686_1 UNITED STATES POSTAL SERVICE ERIE COMMUNITY COLLEGE

By: ______By: ______

Title: ______Title: ______

Date: ------Date:------

4539686_1 ERIE COMMUNITY COLLEGE

By: Jack Quinn ECC President Date: ------

STATE OF NEW YORK COUNTY OF ERIE On the day of , before me personally came Jack Quinn, to me known to be the individual described in, and who, executed, the foregoing instrument and acknowledge that he executed the same. ·

Notary Public

APPROVED AS TO CONTENT:

Name

Date

APPROVED AS TO FORM:

By: Kristin Klein Wheaton, Esq. Executive Vice Pres. Legal Affairs

Date Doc.# ------EXHIBIT A

EXHIBIT A

EXHIBIT A Int. Cis.: 35 aqd 39 Prior U.S. Cis.: 100, 101, 102, and 105 Reg. No. 3,234,924 United States Patent and Trademark Office Registered Apr. 24, 2007

SERVICE MARK PRINCIPAL REGISTER

*****U.S. POST OFFICE

UNITED STATES POSTAL SERVICE (UNITED FOR: PICKUP, TRANSPORTATION, AND DELIV· STATES INDEPENDENT ESTABLISHMENT ERY OF POSTCARDS, LETTERS, PACKAGES, AD· OF THE EXECUTIVE BRANCH OF THE GOV­ VERTISEMENTS, CATALOGS, PUBLICATIONS, ERNMENT OF THE UNITED STATES) !1\"VOICES, AND OTHER ITEMS OF MAIL; RENTAL 475 L'ENFANT PLAZA, S.W. OF :MAIL BOXES , IN CLASS 39 (U.S. CLS. 100 AND 105). WASHINGTON, DC 202601136 FIRST USE 4-1-2006; IN COMMERCE 4-1-2006. FOR: RETAIL STORE SERVICES FEATURING STAMPS, AND VALUE-ADDED MAILING AND OWNER OF U.S. REG. NOS. 2,295,192, 2,295,423, DELIVERY PRODUCTS AND SUPPLIES; MAIL AND 2,295,478. SERVICES, NAMELY, VALUE ADDED SORTING, HANDLING Al'\'D RECEIVING OF POSTCARDS. LETTERS, PACKAGES, ADVERTISEMENTS, CATA~ SEC. 2(F) "U.S. POST OFFICE". LOGS, PUBLICATIONS, Il\"VOICES AND OTHER ITEMS OF MAIL, IN CLASS 35 (U.S. CLS. 100, 101 AND 102). SN 78-650,209, FILED 6-14-2005.

FIRST USE 4-1-2006; IN COMMERCE 4-1-2006. JEFFERY COWARD, EXAMINING ATTORNEY Int. Cis.: 35, 36, 38, 39, and 42 Prior U.S. Os.: 100, 101, 102, 104, and 105 Reg. No. 2,840,534 United States Patent and Trademark Office Registered May 11, 2004

SERVICE MARK PR1NCIP AL REGISTER

BRINGING THE POST OFFICE TO THE PEOPLE

UNITED STATES POSTAL SERVICE (UNITED SERVICES, AND PROVIDING INFORMATION IN STATES INDEPENDENT ESTABLISHMENT ALL OF THE FOREGOING FIELDS BY MEANS OF OF THE EXECUTIVE BRANCH OF THE GOV­ A GLOBAL COMPUTER INFORMATION NET­ ERNMENT) WORK, IN CLASS 36 (U.S. CLS. 100, 101 AND 102). LINDA S. PAINE-POWELL 475 L'ENFANT PLAZA W. SW, ROOM 6344 FIRST USE 12-23-2003; IN COMMERCE 12-23-2003. WASHINGTON, DC 202601135

FOR: MAIL SERVICES, NAMELY, RECEMNG, FOR: ELECTR01'.1C TRANSMISSION OF MESSA­ SORTING, A!\'D HANDLING DOCUMENTS, PUB­ GES, DOCUMENTS, AND DATA; ELECTRONIC LICATIONS, PACKAGES, Er-.'VELOPES AND LET­ MAIL SERVICES, NAMELY, RECEIVING AND TRANSMITTING ELECTRONIC MESSAGES, TERS; COMPUTERIZED ON-LINE ORDERING SERVICES IN THE FIELDS OF STATIONERY, DOCUMENTS AND DATA; ELECTRONIC MAIL POSTAGE, MISCELLANEOUS POSTAL PRODUCTS, SERVICES, NAMELY, TRANSMITTING SECURE AND DOCUMENT PACKAGE DELIVERY; MAIL­ MESSAGES, DOCUMENTS Al\'D DATA, AND FOR­ WARDING ELECTRONIC MAIL, Al\'D PROVIDING ING SERVICES, NAMELY, ELECTRONICALLY RE­ CEIVING, SORTING AND HANDLING INFORMATION IN ALL OF THE FOREGOING DOCUMEI\"TS TO BE PRII\'TED ON PAPER AND FIELDS BY MEANS OF A GLOBAL COMPUTER DELIVERED IN "HARDCOPY" FORM; ELECTR0- Il\'FORMATION NETWORK, IN CLASS 38 (U.S. CLS. 100, 101 Al\'D 104). 1\"IC POSTAGE SERVICES, NAMELY, APPLYING POSTAGE TO ELECTRONIC DOCUMENTS, AND APPLYING POSTAGE TO DOCUMEr-.'TS VV\ A FIRST USE 12-23-2003; IN COMMERCE 12-23·2003. GLOBAL COMPUTER INFORMATION NETWORK; PREPARING Iv!AILING LISTS; PROVIDING MEANS FOR: PICKUP, TRANSPORTATION Al\'D DELIV· TO PREPARE AND DISTRIBUTE DIRECT MAIL ERY OF PUBLICATIONS, PACKAGES, PARCELS, ADVERTISING; VENDING MACHINE SERVICES ENVELOPES AND DOCUMEI\'TS BY VARIOUS IN THE FIELDS OF STAMPS, STATIONERY AND MODES OF TRANSPORTATION; ELECTRONIC OTHER PHILATELIC PRODUCTS; AND PROVID­ STORAGE OF MESSAGES Al\'D DATA; DELIVER­ ING INFORMATION IN ALL OF THE FOREGOING ING "HARD COPY" OR PRINTED VERSIONS OF FIELDS BY MEANS OF A GLOBAL COMPUTER DOCUMENTS, CORRESPONDENCE, AND PACKA­ ll\'FORMATION NETWORK, IN CLASS 35 (U.S. CLS. GES THAT ARE PROCESSED, RECEIVED, OR 100, 101 AND 102). TRANSMITTED IN WHOLE OR IN PART ELEC­ TR0!\1CALLY BY VARIOUS MODES OF TRANS­ FIRST USE 12-23-2003; IN COMMERCE 12-23-2003. PORTATION; DELIVERY SERVICES FOR OTHERS, NAMELY, DELIVERY OF DOCUMENTS, CORRE­ FOR: FINANCV\L CARD SERVICES, NAMELY, SPOI\'DENCE, AND PACKAGES THAT ARE IN CREDIT CARD, DEBIT CARD, PHONE CARD, AND WHOLE OR IN PART PROCESSED, RECEIVED, STORE VALUE CARD SERVICES; ELECTR01'.1C OR TRANSMITTED ELECTRONICALLY BY VAR­ MONEY TRANSFER SERVICES; MONEY ORDER IOUS MODES OF TRANSPORTATION; DELIVER­ SERVICES; BILL PAYMENT; REMITTAKCE SERVI­ ING DIRECT MAIL ADVERTISING; DELIVERING CES, NAMELY, ELECTR0!\1C PAYMENT SERVI­ DOCUMENTS THAT REQUIRE COMPUTER CES IN THE FORM OF ELECTRONIC PROCESSING TRANSLATIONS BY VARlO US MODES OF TRANS­ AND TRANSMISSION OF BILL PAYMENT DATA; PORTATION, AND PROVIDING INFORMATION IN . SELF-SERVICE AUTOMATED TELLER MACHINE ALL OF THE FOREGOING FIELDS BY MEANS OF A GLOBAL COMPUTER INFORMATION NET- OF DOCUMENTS, AND PROVIDING INFORMA­ WORK, IN CLASS 39 (U.S. CLS. 100 AND 105). TION IN ALL OF THE FOREGOING FIELDS BY MEANS OF A GLOBAL COMPUTER INFORMA­ FIRST USE 12-23-2003; IN COMMERCE 12-23-2003. TION NE1WORK, IN CLASS 42 (U.S. CLS. 100 AND 101). FOR: POSTMARKING ELECTRO~lC COMMU- 1\lCATIONS AND DOCUMENTS, NAMELY, AU- FIRST USE 12-23-2003; IN COMMERCE 12-23-2003. THENTICATION OF COMPUTERIZED ELECTRONIC MAIL THROUGH THE USE OF SE- OWNER OF U.S. REG. NOS. 2,295,192, 2,295,478, CURITY, ELECTROI\lC SIGNATURE, POSTMARK- AND OTHERS. ING, CERTIFICATES OF AUTHENTICITY, ENCRYPTION SERVICES A!'.:"D APPLYING WA- SN 75-894,910, FILED 1-13-2000. TER·MARKS TO ELECTRONIC DOCUMENTS; AND PROVIDING COMPUTER TRANSLATIONS JEFFERY COWARD, EXAMINING ATTORNEY Int. Cis.: 35 and 39 Prior U.S. Cis.: 100, 101, 102 and 105 Reg. No. 2,295,478 United States Patent and Trademark Office Regislered Nov. 30, 1999

SERVICE MARK ·PRINCIPAL REGISTER

United Stsl(Js ·Post Office

UNITED STATES POSTAL SERVICE (UNITED FOR: POSTAL SERVICES, NAMELY, PACK­ STATES INDEPENDENT. ESTAOLISHMF.NT AGING ARTICLES FOR TRANSPORTATION, OF THE EXECUTIVE BRANCH OF TilE LETTER AND PARCEL DELIVERY AND GOVERNMENT) RENTAL OF MAILBOXES, IN CLASS 39 (U.S. 475 L'ENFANT PLAZA W. S\V, ROOM 6344 CLS. HKl AND lOS). WASHINGTON, DC 202601135 FIRST USE 8-0-1995; IN COMMERCE 8-0-199.5. FOR: MAIL SERVICES, NAMELY, SORTING, OWNER OF U.S. REG. NOS. 1,917,921, 2,137,563 HANDLING, AND RECEIVING PACKAGES AND OTHERS. AND LETTERS; RETAIL STORE SERVICES TilE MARK CONSISTS, IN PART, OF THE FEATURING STAMPS. I'HII.ATELIC !'ROD· STYLIZED HEAD OF AN EAGLE. UCTS, STATIONERY AND OTIIER MAILING SEC. 2(F) AS TO "UNITF.ll STATES POST MATERIALS, NOVELTY ITEMS, AND OTHER OFT' ICE". RELATED MERCHANDISE, IN CLASS 35 (U.S. CLS. 100, 101 AND 102). SER. NO. 75-503,061. FILED J-J-1998. FIRST. USE R-0-1995; IN COMMERCE 8-0-1995. JEFFERY COWARD. EXAMINING ATTORNEY Int. Cis.: 35 and 39 Prior U.S. Cis.: 100, 101, 102 and 105 Reg. No. 2,295,192 United States Patent and Trademark Office Registered Nov. 30, 1999

SERVICE MARK PRINCIPAL REGISTER

UNITEO STATES POST OFFICE

UNITED STATES POSTAL SERVICE (UNITED FOR: f'OSTAL SERVICES, NAMELY, PACK­ STATES INDEPENDENT ESTABLISIIMENT AGING ARTICLES FOR TRANSPORTATION, OF THE EXECUTIVE BRANCH OF THE LETTER AND PARCEL DELIVERY AND GOVERNMENT) PARCEL DELIVERY AND RENTAL OF MAIL· 475 L'ENFANT PLAZA W. SW BOXES, IN CLASS 39 (U.S. CLS. 100 AND lOS). WASHINGTON, DC 202601135 FIRST USE 0-0-1937; IN COMMERCE 0-0-1937. FOR: MAIL SERVICES, NAMELY, SORTING, HANDLING, AND RECEIVING PACKAGES OWNER OF U.S. REG. NOS. 2,132,892, 2,137,563 AND LETTERS; RETAIL STORE SERVICES AND OTHERS. · FEATURING STAMPS, PHILATELIC PROD­ SEC. 2(F) AS TO "UNITED STATES POST UCfS, STATIONERY AND OTHER MAILING OFFICE". MATERIALS, NOVELTY ITEMS, AND OTHER RELATED MERCHANDISE, IN CLASS 35 (U.S. CLS. 100, 101 AND 102). SER. NO. 75-439,531, FILED 1-26-1998. FIRST USE 0-0-1937; IN COMMERCE 0-0-1937. JEFFERY COWARD, EXAMINING ATTORNEY Int. Cis.: 35 and Prior U.S. Cis.: 100, 101, 102 and 105 Reg. No. 2,295,422 United States Patent and Trademark Office Registered Nov, 30, 1999

SERVICE MARK PRINCIPAL REGISTER

UNITED STATES POST OFFfCE EXPRESS

UNITED STATES POSTAL SERVICE (UNITED FOR: POSTAL SERVICES, NAMELY, STATES INDEPENDENT ESTABLISHMENT RENTAL OF MAILBOXES, IN CLASS 39 (U.S. OF THE EXECUTIVE BRANCH OF THE CLS. 100 AND lOS). . GOVERNMENT) FIRST USE 8-0-1995; IN COMMERCE 475 L'ENFANT PLAZA W. SW, ROOM 6344 • 8-0-1995. WASHINGTON, DC 2026011:15 OWNER OF U.S. REG. NOS. 2.l.l2,KIJ2 AND 2,1J7,563. FOR: MAIL SERVICES, NAMELY, SORTING, HANDLING, AND RECEIVING PACKAGES NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "EXPRESS", APART FROM AND LETTERSi RETAIL STORE SERVICES THE MARK AS SHOWN. FEATURING STAMPS, PIIILATELIC PROD­ UCTS, STATIONERY AND OTHER MAILING SEC. 2(F) AS TO "UNITED STATES POST MATERIALS, NOVELTY ITEMS AND OTHER OFFICE". RELATED MERCHANDISE, IN CLASS 35 (U.S. CLS. 100, 101 AND 102). SER. NO. 75-492,131. FILED 5-19-19'18. FIRST USE R-0-1995; IN COMMERCE R-0-1995. JEFFERY COWARD, EXAMINING ATTORNEY