IP Law Daily, TOP STORY—TTAB: USPTO cancels six Washington Redskins marks as disparaging to Native Americans, (Jun 18, 2014)

By Cheryl Beise, J.D.

The Trademark Trial and Appeal Board has granted a petition filed by five Native Americans to cancel six trademarks featuring the term REDSKINS for professional football-related services on the ground that the marks were disparaging to Native Americans at the time they were registered, between 1967 and 1990 (Blackhorse v. Pro-Football Inc., June 18, 2014, Kuhlke, K.). The Board rejected the respondent’s laches defense, despite a district court’s ruling that laches barred an earlier proceeding seeking to cancel the same marks.

This cancellation proceeding was filed by five Native Americans (the “petitioners”), who sought to cancel trademark registrations issued between 1967 and 1990, for trademarks consisting in whole or in part of the term REDSKINS for professional football-related services. The petitioners argued that the registrations should be cancelled because they consisted of or comprised matter that was disparaging to Native Americans. Pro-Football, Inc. (the “respondent”) asserted various affirmative defenses, including laches.

Section 2(a) of the Trademark Act prohibits registration of marks that may disparage persons or bring them into contempt or disrepute.

Prior cancellation proceeding. This was the second petition asserting a claim of disparagement against the same six registrations. In 1992, Suzan Harjo and six other Native Americans filed a petition to cancel the same registrations on the ground that the marks were disparaging to Native Americans. In 1999, the Board held that the respondent’s REDSKINS marks were disparaging to Native Americans when registered and ordered the registrations canceled. Harjo v. Pro- Football, Inc., 50 USPQ2d 1705 (TTAB 1999).

The federal district court in the District of Columbia reversed the Board’s decision, finding that disparagement was not supported by substantial evidence and that the doctrine of laches precluded consideration of the case. Pro-Football, Inc. v. Harjo, 284 F. Supp. 2d 96, 68 USPQ2d 1225 (D.D.C. 2003). On appeal, the U.S. Court of Appeals for the District of Columbia did not address the district court’s disparagement ruling, but held that the court applied the wrong standard in evaluating laches as to one of the petitioners because “laches runs only from the time a party has reached his majority.” Pro-Football, Inc. v. Harjo, 415 F.3d 44, 75 USPQ2d 1525, 1528 (D.C. Cir. 2005).

On remand, the district court again found that laches barred that petitioners’ claim. Pro-Football, Inc. v. Harjo, 567 F. Supp.2d 46, 87 USPQ2d 1891, 1903 (D.D.C. 2008). The D.C. Circuit affirmed the decision of the lower court on the issue of laches, but its review was limited to evidence of prejudice in applying laches. Pro-Football, Inc. v. Harjo, 565 F.3d 880, 90 USPQ2d 1593 (D.C. Cir. 2009).

The present proceeding. While the Harjo case was pending, the petitioners filed the instant petition to cancel the same registrations for the REDSKINS marks. The proceeding was stayed pending the disposition of the Harjo civil action and resumed in March 2010. In 2011, the parties stipulated to use the same record as in the Harjo case.

Disparagement. The determination of the petitioners’ disparagement claim required the Board to determine: (1) the meaning of the matter in question, as it appeared in the marks as used in connection with the goods and services identified in the registrations, and (2) whether the meaning of the marks disparages Native Americans.

As for the first prong, the Board found that the term REDSKINS referred to the respondent’s Washington Redskins professional football team and carried the allusion to Native Americans inherent in the original definition of the word. The evidence of use overwhelmingly supported a determination that the term REDSKINS in the registered marks used in connection with the respondent’s professional football services retained the meaning of Native Americans, the Board said.

In determining whether the term REDSKINS was disparaging in the context of the respondent’s services during the time period 1967-1990, the Board considered dictionary definitions, reference books, and the parties’ experts’ testimony and reports. For the specific views of Native Americans, the Board focused on the National Congress of American Indians’ (“NCAI”) 1993 Resolution 93-11, the deposition of NCAI Executive Director, JoAnn Chase, the deposition of Harold Martin Gross, and various newspaper articles, reports, official records, and letters.

The Board concluded that the evidence showed a substantial composite (approximately thirty percent) of Native Americans would have found the term REDSKINS to be disparaging in connection with respondent’s services during the relevant time frame of 1967-1990. Accordingly, the six registrations had to be cancelled under Sections 2(a) and 14(3) of the Trademark Act.

Laches defense. Although the district court in Harjo held that laches barred that proceeding, the Board found that the current cancellation action was distinguishable. In particular, the passage of America Invents Act (“AIA”) in 2011 justified revisiting the legal standard for laches because the AIA changed the venue for district court appeals of USPTO inter partes proceedings to the U.S. District Court for the Eastern District of Virginia from the U.S. District Court of the District of Columbia.

The Board held that “laches does not apply to a disparagement claim where the disparagement pertains to a group of which the individual plaintiff or plaintiffs simply comprise one or more members.” In reaching its conclusion, the Board explained that laches is an equitable defense and that courts and the Board have routinely held laches inapplicable where a broader public policy concern is at issue.

In this case, the Board found that there was an overriding public interest in removing from the register marks that are disparaging to a segment of the population beyond the interests of the individual petitioners. While the Fourth Circuit has not addressed whether laches applies to a claim that a term disparages a substantial composite of an ethnic or cultural group, other Fourth Circuit decisions prohibiting laches when confusion is inevitable suggested that the Fourth Circuit would prohibit the affirmative defense of laches in this case, the Board reasoned.

The application of laches depends on a balancing of the length of the delay and the seriousness of the prejudice with a focus on the reasonableness of the delay, the Board noted. In this case, none of the petitioners unreasonably delayed in bringing the petition to cancel because each of them turned 18 during or after the year 2000.

The Board also rejected the respondent’s assertion that it suffered economic prejudice as a result of the delay in filing this petition, noting that there must be some nexus between a delay in filing the suit and a defendant’s expenditures. The status of the registrations at issue was in question at least up until the district court’s remand decision in 2008 and there was no evidence that the respondent’s business decisions regarding investment in its brand and marks had been influenced in any way by the pendency of this cancellation proceeding, the Board noted. The respondent’s laches defense failed accordingly.

Dissent. Administrative Trademark Judge Marc A. Bergsman filed a dissenting opinion. Judge Bergsman noted that the D.C. Circuit Court of Appeals in Harjo did not overturn the district court’s ruling that the evidence introduced in that cancellation proceeding was insufficient to support the Board’s decision in that case. Because the petitioners in this case simply re-used the trial record from the Harjo litigation, without substantial augmentation, Judge Bergsman would not find that the record was sufficient to prove disparagement.

“By this dissent, I am not suggesting that the term “redskins” was not disparaging in 1967, 1974, 1978, and 1990 (the registration dates at issue),” Judge Bergsman explained. “Rather, my conclusion is that the evidence petitioners put forth fails to show that it was.”

USPTO statement. In a news release issued today, the USPTO clarified that its decision does not require the trademarks in the involved registrations to be changed or no longer be used by the Washington Redskins professional football team. “The Trademark Trial and Appeal Board does not have jurisdiction in a cancellation proceeding to require that a party cease use of a mark, but only to determine whether a mark may continue to be registered,” the agency said.

The case is Cancellation No. 92046185.

Attorneys: Jesse A. Witten, Jeffrey J. Lopez, John D. V. Ferman, Lee Roach, and Stephen Wallace (Drinker, Biddle & Reath LLP) for Amanda Blackhorse, Marcus Briggs, Philip Gover, Jillian Pappan, and Courtney Tsotigh. Robert L. Raskopf, Claudia T. Bogdanos, and Todd Anten (Quinn Emanuel Urquhart & Sullivan, LLP) for Pro-Football, Inc.

Companies: Pro-Football, Inc.

MainStory: TopStory Trademark USPTO