HAIL TO THE ____________! by Seth Chadab

11 07 2009

One of trademark law’s most infamous cases may soon be headed back to the headlines. A petition to cancel six of the Washington Redskins’ trademarks (including the ‘Redskinettes’), filed in 2006 by a new group of six plaintiffs, has been on hold pending final word from the Court of Appeals for the District of Columbia.

This past May, the Court ruled (Harjo IV) that the defense of laches was valid and a seven-plus-year delay in filing for cancellation upon reaching the age majority was deemed an unreasonable burden to Pro-Football, Inc., the corporate entity of the Washington Redskins. The Court of Appeals ruling finally puts Harjo to bed, but it does not resolve the major issue in this dispute, whether Redskins’ marks are disparaging and in violation of Section 2(a) of the Lanham Act.

The ultimate resolution of this issue could be major news for the nation’s most popular professional sport, potentially forcing a re-branding of one the oldest pro football teams, established in 1932 and Washington’s own since 1937. Susan Harjo, along with six other Native American petitioners, sought to cancel the Redskins’ marks which have been registered with the United States Patent and Trademark Office since 1967.

The Trademark Trial and Appeal Board (TTAB) ruled in 1994 in favor of Harjo, finding that based on the evidence submitted, “…a trial might show that respondents [Redskins’] marks hold a substantial segment of the population up to public ridicule.” The TTAB also found that the Redskins were not entitled to the defense of laches. Since the TTAB decision in 1994, the District Court and Court of Appeals have gone back and forth solely on the issue of laches, in favor of the Redskins each time.

 The District Court, in the original Harjo decision, overruled the TTAB’s finding of disparagement and found that the TTAB’s decision was “not supported by substantial evidence.” Now that the laches issue has been put aside, many believe that the District Court will soon have to revisit the disparagement issue. The current cancellation petitioners, all aged between 18 and 24, should be able to avoid Pro-Football’s laches defense, having initiated the cancellation proceeding shortly upon reaching the age of majority. These new petitioners, led by Amanda Blackhorse, should be optimistic for a favorable TTAB ruling on disparagement. Since the Harjo ruling, Native American advocacy groups have been successful in persuading organizations and institutions to re-brand and adopt new names or mascots.

Most notably, in 2005 the NCAA banned nicknames and mascots that were “hostile and abusive,” targeting 18 universities throughout the United States. Exceptions were granted by the NCAA in some cases (e.g., Florida State Seminoles), but many schools chose to comply and re-brand. These examples will be cited by the petitioners once the TTAB resumes the Blackhorse proceeding. It remains unclear whether it will be enough to persuade the District Court and Court of Appeals, and a lengthy appeal process is expected. If Daniel Snyder, owner of the Redskins, ultimately loses, more than just loss of control over use of the trademarks is at stake. A suit seeking an injunction against the Redskins name would also be likely.

 The original attorney for Harjo and other petitioners, Steve Baird, recommends that the Redskins re-brand, citing the Washington pro basketball team’s decision to drop the Bullets in favor of the Wizards in 1997. I’m, however, not so convinced Steve’s arguments would be able to persuade many in Washington to voluntarily adopt a new name for their beloved Redskins.

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One response

11 07 2009
schiffrinlaw

Although it seems inevitable that the Trademark Trial and Appeal Board or Federal Circuit will ultimately make a decision as to whether Redskins is disparaging and/or offensive, this determination would only affect the registrabitliy of the trademark REDSKINS (and, presumably, REDSKINETTES).

Even if the registration(s) is/are cancelled, Pro Football, Inc. would still have significant common law rights in REDSKINS and similar marks based on continuous and exclusive use of this trademark for decades. Pro Football, Inc. has nationwide rights in this mark regardless of whether REDSKINS is registered. Regardless of any future ruling regarding registrability, third parties will not have free reign to use REDSKINS in the event the registration is cancelled.

Nevertheless, the Trademark Trial and Appeal Board’s eventual determination of whether REDSKINS is disparaging and/or offensive will be significant in evaluating future trademarks for these same factors, especially in situations where the trademark holder has not established nationwide rights, and needs the federal registration and the presumptions it would afford.

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