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.”•