Redskins Trademarks to Remain Federally Registered, for Now

Redskins Trademarks to Remain Federally Registered, for Now

7/23/2008
By: Steven D. Lustig On June 25, 2008, the United States District Court for the District of Columbia issued a Memorandum Opinion in the case of Pro-Football Inc. v. Suzan Shown Harjo, et al, (Civ. Act. No. 99-1385 (CKK)), which is the latest chapter in a long fought dispute over whether names used by the Washington Redskins football team should remain federally registered trademarks. The conclusion of the Memorandum Opinion - namely that one of the defendants, Mateo Romero, waited an unreasonably long time before petitioning to cancel the "REDSKINS" and "REDSKINETTES" federal trademark registrations - is actually unremarkable given the history of the case. Accordingly, this article will provide a succinct review of the dispute, and the matters being litigated. This case dates back to September 1992, when seven Native Americans petitioned the United States Trademark Trial and Appeal Board ("TTAB") to cancel six federal trademark registrations owned by Pro-Football, Inc., for the trademarks "REDSKINS" and "REDSKINETTES." The petition to cancel was based upon Section 2(a) of the Lanham Trademark Act, 15 U.S.C. ? 1052(a), which states in relevant part: No trademark...shall be refused registration...unless it- (a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute... It is important to understand that Section 2(a) of the Lanham Act only affects the federal registration of trademarks. Unregistered trademarks may still be used in commerce. So, even if the "REDSKINS" and "REDSKINETTES" trademark registrations were cancelled, Pro-Football would still be able to use the names and marks, although its ability to enforce its rights would be somewhat limited. On April 2, 1999, the TTAB issued an order to cancel the subject trademark registrations, holding that the "REDSKINS" and "REDSKINETTES" marks may be disparaging of Native Americans and may bring Native Americans into contempt or disrepute. Harjo v. Pro-Football, Inc., 50 USPQ 2d 1705 (TTAB 1999). Thereafter, in June of the same year, Pro-Football filed a complaint in the United States District Court for the District of Columbia to review and reverse the TTAB's decision. The District Court issued its Memorandum Opinion on September 30, 2003, holding that the TTAB's cancellation decision should be reversed because it was not supported by substantial evidence; and because the suit by the seven Native Americans was barred by the principle of "Laches" - explained below. Pro-Football, Inc. v. Harjo, 284 F. Supp. 2d 96 (DDC 2003). On the issue of substantial evidence, the court stated that the TTAB, "premised its disparagement conclusions on a paucity of actual findings of fact that were linked together through inferential arguments that had no basis in the record..." and that the, "Defendants did not carry their burden of proof." Id at 144. As to "Laches," Laches is a legal defense founded on the principal that equity aids the vigilant and not those who slumber on their rights. To successfully assert a defense of Laches, a party, such as Pro-Football, would have to demonstrate that a plaintiff's delay in bringing a law suit was unreasonable, and that the delay resulted in prejudicial harm to the defendant. In this case, the first of the trademarks in question was registered in 1967. The District Court found that Harjo and the other six Native American plaintiffs waited so long to bring their case, that allowing them to assert their claims in 1992 would cause economic prejudice to Pro-Football, Inc. Accordingly, consideration of the case was precluded. Id at 144-145. After the District Court rendered its decision, Harjo and the other defendants appealed the District Court decision to the United States Court of Appeals for the District of Columbia Circuit. On July 15, 2005, the Court of Appeals found that one defendant, Mateo Romero, was younger than the other defendants, and that the District court failed to properly take Romero's age into consideration when calculating whether or not laches barred any lawsuits brought by Romero. The Court of Appeals, "While retaining jurisdiction over the case...," remanded the record to the district court for the sole purpose of evaluating whether laches barred any clams asserted by Romero. Pro-Football, Inc. v. Harjo, 415 F.3d 44 (DC Cir. 2005). This then brings us to the June 25, 2008 decision by the District Court, holding that, indeed, laches does bar the lawsuit brought by Romero, because he waited too long to file suit. The case will now go back to the Court of Appeals, which will decide whether or not the District Court's 2003 ruling was correct. As the District Court stated, "This is undoubtedly a "test case" that seeks to use federal trademark litigation to obtain social goals." 284 F. Supp. 2d at 145. The District Court also stated on more than one occasion, "The Court's decision...only focuses on the evidence supporting the TTAB's decision and the Defendant's delay in bringing this proceeding. This opinion should not be read as making any statement on the appropriateness of Native American imagery for team names." Id at 144.
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