ILNews

IndyBar: Lessons in Timing from the Washington Redskins Trademark Cancellation

Back to TopCommentsE-mailPrintBookmark and Share

By Constance R. Lindman, SmithAmundsen LLC, and Kaylea Weiler, SmithAmundsen LLC

This article was originally posted on the IndyBar Intellectual Property Section’s webpage at indybar.org/interest-groups/intellectual-property. To subscribe to news based on your practice area and/or interests, update your member profile at indybar.org/account.

Last week, upon petition by five Native American individuals, the Trademark Trial and Appeal Board (TTAB) cancelled six trademarks bearing the word “Redskin” registered to the Washington, D.C., based NFL team between 1967 and 1990. Section 2(a) of the Lanham Act allows the USPTO to refuse or cancel registration for marks which “disparage persons, living or dead, institutions, beliefs or national symbols, or bring them into contempt or disrepute.” Challenges under Section 2(a) may be brought “at any time.”

The TTAB indicated that the relevant inquiry is not whether the term is disparaging in the eyes of the American public as a whole, but whether the referenced group finds the term to be disparaging “as of the various dates of registration of the involved marks.” The TTAB evaluated extensive historical evidence (newspaper articles, television programs, letters of protest, dictionaries) from the relevant time periods to evaluate Native American perception of the term “redskin.” However, the board disregarded evidence that the original owner of the team (then the Boston Redskins), chose the name to honor the team’s Native American head coach, William “Lone Star” Dietz, because the owner’s intent in using the mark is not relevant.

The TTAB ultimately found that the term “redskin” was and is commonly identified as a derogatory racial slur, and is therefore disparaging. One judge dissented.

What now for the Washington Redskins?

The controversy surrounding the trademarks and logos associated with D.C.’s beloved football team is not new. So why did it take so long for the trademark to be cancelled, and can the Redskins organization overcome the decision on appeal? The answer is complex and uncertain.

The very same issues have been in litigation since 1992 when seven other Native American individuals brought a nearly identical petition in Pro-Football, Inc. v. Harjo, 284 F. Supp. 2d 96. The TTAB initially granted the petition and cancelled the registrations in 1999 under Section 2(a), but the DC District Court reversed, finding that (1) there was insufficient evidence to find that “redskins” is disparaging, and (2) the equitable principle of laches applied.

With respect to the laches defense, the District Court held that, because the first Redskin trademark registered in 1967 and the petitioners had not contested such registration until 1992, they had waited too long to seek redress. However, in 2005 the US Court of Appeals for the DC Circuit overturned that decision, noting that one of the Harjo petitioners was only one year old when the first registration issued. It held that any evaluation of laches as to that petitioner must begin as of the time he reached majority, in 1984. Without addressing the District Court’s finding on the issue of whether the mark is “disparaging,” the DC Circuit remanded the case for determination of whether the youngest petitioner had “slumbered on his rights.” See Pro-Football, Inc. v. Harjo, 415 F. 3d 44. On remand, the District Court again found that laches applied, because eight years had passed from the time the petitioner reached the age of majority to the time the petition for cancellation was filed in 1992. That decision essentially ended the litigation for the seven Harjo petitioners.

The 2005 appellate decision, though often overlooked, is an important aspect of this legal drama, because even though the Redskins organization had prevailed in retaining its trademark rights in the Harjo suit, the decision that laches cannot be invoked against a petitioner until he has attained majority has allowed for the filing of yet another petition by a new group of presumably younger individuals.

The US Circuit courts are split on the issue of whether the principle of laches applies to Section 2(a) cancellations which otherwise may be brought “at any time.” Therefore, choice of venue would be important to any party opposing registration or challenging a USPTO cancellation decision. In its 2005 opinion in Harjo, the DC Circuit officially took the position that the statutory language “at any time” does not bar a defense of laches, but such a defense must be separately evaluated as to each individual petitioner. The court pondered, “Why should laches bar all Native Americans from challenging Pro-Football’s ‘Redskins’ trademark registrations because some Native Americans may have slept on their rights?”

Since the TTAB cancellation decision issued last week, the owner of the Washington Redskins has made it clear that the organization intends to continue using the trademarks. The Washington Redskins have filed an appeal and the TTAB has suspended its decision pending the appeal. The Redskins organization is likely banking upon its earlier victory in Harjo, where the District Court of DC held there was insufficient evidence to find the marks were “disparaging.” As the dissenting judge in the 2014 TTAB decision noted, the evidence has not substantially changed from the time of the 2003 District Court ruling and the 2014 TTAB cancellation decision. At this point, the fate of the “Redskins” trademark remains a “coin toss.”•

ADVERTISEMENT

Post a comment to this story

COMMENTS POLICY
We reserve the right to remove any post that we feel is obscene, profane, vulgar, racist, sexually explicit, abusive, or hateful.
 
You are legally responsible for what you post and your anonymity is not guaranteed.
 
Posts that insult, defame, threaten, harass or abuse other readers or people mentioned in Indiana Lawyer editorial content are also subject to removal. Please respect the privacy of individuals and refrain from posting personal information.
 
No solicitations, spamming or advertisements are allowed. Readers may post links to other informational websites that are relevant to the topic at hand, but please do not link to objectionable material.
 
We may remove messages that are unrelated to the topic, encourage illegal activity, use all capital letters or are unreadable.
 

Messages that are flagged by readers as objectionable will be reviewed and may or may not be removed. Please do not flag a post simply because you disagree with it.

Sponsored by
ADVERTISEMENT
Subscribe to Indiana Lawyer
  1. Where may I find an attorney working Pro Bono? Many issues with divorce, my Disability, distribution of IRA's, property, money's and pressured into agreement by my attorney. Leaving me far less than 5% of all after 15 years of marriage. No money to appeal, disabled living on disability income. Attorney's decision brought forward to judge, no evidence ever to finalize divorce. Just 2 weeks ago. Please help.

  2. For the record no one could answer the equal protection / substantive due process challenge I issued in the first post below. The lawless and accountable only to power bureaucrats never did either. All who interface with the Indiana law examiners or JLAP be warned.

  3. Hi there I really need help with getting my old divorce case back into court - I am still paying support on a 24 year old who has not been in school since age 16 - now living independent. My visitation with my 14 year old has never been modified; however, when convenient for her I can have him... I am paying past balance from over due support, yet earn several thousand dollars less. I would contact my original attorney but he basically molest me multiple times in Indy when I would visit.. Todd Woodmansee - I had just came out and had know idea what to do... I have heard he no longer practices. Please help1

  4. Yes diversity is so very important. With justice Rucker off ... the court is too white. Still too male. No Hispanic justice. No LGBT justice. And there are other checkboxes missing as well. This will not do. I say hold the seat until a physically handicapped Black Lesbian of Hispanic heritage and eastern religious creed with bipolar issues can be located. Perhaps an international search, with a preference for third world candidates, is indicated. A non English speaker would surely increase our diversity quotient!!!

  5. First, I want to thank Justice Rucker for his many years of public service, not just at the appellate court level for over 25 years, but also when he served the people of Lake County as a Deputy Prosecutor, City Attorney for Gary, IN, and in private practice in a smaller, highly diverse community with a history of serious economic challenges, ethnic tensions, and recently publicized but apparently long-standing environmental health risks to some of its poorest residents. Congratulations for having the dedication & courage to practice law in areas many in our state might have considered too dangerous or too poor at different points in time. It was also courageous to step into a prominent and highly visible position of public service & respect in the early 1990's, remaining in a position that left you open to state-wide public scrutiny (without any glitches) for over 25 years. Yes, Hoosiers of all backgrounds can take pride in your many years of public service. But people of color who watched your ascent to the highest levels of state government no doubt felt even more as you transcended some real & perhaps some perceived social, economic, academic and professional barriers. You were living proof that, with hard work, dedication & a spirit of public service, a person who shared their same skin tone or came from the same county they grew up in could achieve great success. At the same time, perhaps unknowingly, you helped fellow members of the judiciary, court staff, litigants and the public better understand that differences that are only skin-deep neither define nor limit a person's character, abilities or prospects in life. You also helped others appreciate that people of different races & backgrounds can live and work together peacefully & productively for the greater good of all. Those are truths that didn't have to be written down in court opinions. Anyone paying attention could see that truth lived out every day you devoted to public service. I believe you have been a "trailblazer" in Indiana's legal community and its judiciary. I also embrace your belief that society's needs can be better served when people in positions of governmental power reflect the many complexions of the population that they serve. Whether through greater understanding across the existing racial spectrum or through the removal of some real and some perceived color-based, hope-crushing barriers to life opportunities & success, movement toward a more reflective representation of the population being governed will lead to greater and uninterrupted respect for laws designed to protect all peoples' rights to life, liberty & the pursuit of happiness. Thanks again for a job well-done & for the inevitable positive impact your service has had - and will continue to have - on countless Hoosiers of all backgrounds & colors.

ADVERTISEMENT