Appeals Court Rules for Redskins in Trademark Case

Jun 19, 2009

The U.S. Court of Appeals for the District of Columbia has upheld a lower court’s ruling, dismissing a claim made by several Native Americans against the Washington Redskins professional football franchise.
Specifically, the plaintiffs had argued that the Redskins had “disparaged” them, by using the “offending” trademarks associated with the franchise.
The panel of judges, however, agreed with the lower court that the complaint could have been filed sooner; and because it was not filed sooner, the defendants would be “unfairly prejudiced” if the claim were allowed to continue.
The controversy began in 1992 when seven Native Americans filed a 1992 action before the Patent and Trademark Office seeking cancellation of six Redskins trademarks that were, they argued, “impermissibly disparaging toward members of their ethnic group.”
The Redskins countered before the Trademark Trial and Appeal Board that its “long-standing use of the name, combined with the plaintiffs’ delay in bringing the case, called for application of laches, an equitable defense that applies where there is (1) lack of diligence by the party against whom the defense is asserted, and (2) prejudice to the party asserting the defense.” Nat’l R.R. Passenger Corp. v. Morgan, 536 U.S. 101, 121–22 (2002).
The TTAB disagreed, noting that the petitioners asserted an interest in preventing “a substantial segment of the population” from being held up “to public ridicule,” and that
insofar as that interest reached “beyond the personal interest being asserted by the present petitioners,” laches was inappropriate. Harjo v. Pro Football Inc., 30 U.S.P.Q. 2d 1828, 1831 (TTAB 1994). Finding on the merits that the marks were indeed disparaging, the TTAB cancelled them. See Harjo v. Pro Football Inc., 50 U.S.P.Q. 2d 1705, 1749
(TTAB 1999), depriving [the defendant] of the ability to pursue infringers.
The Redskins sought relief from the United States District Court for the District of Columbia, which sided with the defendant on the laches issue, “holding that the 25-year delay between the mark’s first registration in 1967 and the TTAB filing in 1992 indeed required dismissal of the action. Pro-Football, Inc. v. Harjo, 284 F. Supp. 2d 96, 144 (D.D.C.2003).”
On appeal, the instant appeals court reversed, finding that “[L]aches attaches only to
parties who have unjustifiably delayed,” Harjo II, 415 F.3d at 49, and “the period of unjustifiable delay cannot start before a plaintiff reaches the age of majority. Id. at 48–49. The youngest plaintiff, Mateo Romero, was only a year old in 1967. Because the correct inquiry would have assessed his delay and the consequent prejudice to Pro-Football only from the day of his eighteenth birthday in December 1984, we remanded the record to the district court to consider, in the first instance, the defense of laches with respect to Romero. Id. at 49–50.”
The district court again, however, found the defense of laches persuasive. “It held that the seven-year, nine-month ‘Romero Delay Period’ evinced a lack of diligence on Romero’s part, Harjo III, 567 F. Supp. 2d at 53–56, and following our instructions to consider both trial and economic prejudice, see Harjo II, 415 F.3d at 50, it found that that delay harmed Pro-Football, Harjo III, 567 F. Supp. 2d at 56–62.
“Reviewing the district court’s analysis of prejudice in light of its considerable discretion, we see no reason to reverse,” wrote the panel. “The district court carefully followed our instruction to assess both trial and economic prejudice arising from the Romero Delay Period, finding both.”
It went on to elaborate on the “economic prejudice” that the Redskins would have suffered. “Undisputed record evidence reveals a significant expansion of Redskins merchandising efforts and sizable investment in the mark during the Romero Delay
Period. Romero believes this investment is irrelevant absent some evidence that Pro-Football would have acted otherwise—by, say, changing the Redskins name—if Romero
had sued earlier. But the district court repeatedly rejected this argument, citing the Federal Circuit’s holding in Bridgestone/Firestone Research, Inc. v. Automobile Club, 245 F.3d 1359, 1363 (Fed. Cir. 2001), that ‘[e]conomic prejudice arises from investment in and development of the trademark, and the continued commercial use and economic promotion of a mark over a prolonged period adds weight to the evidence of prejudice.’ See Harjo III, 567 F. Supp. 2d at 59. The court thus thought it sufficient that the team deployed investment capital toward a mark Romero waited too long to attack, whether or not the team could prove that it would necessarily have changed its name or employed a different investment strategy had Romero sued earlier.”
In its conclusion, the court wrote that “it [is] neither a stretch of imagination nor an
abuse of discretion to conclude that Pro-Football might have invested differently in its branding of the Redskins and related entities had Romero acted earlier to place the trademark in doubt. We accordingly have no basis for questioning the
district court’s determination.”
Pro Football, Inc.v. Suzan S. Harjo, et al., Ct. App. D. C.; No. 03-7162; 5/15/09
Attorneys of Record (for appellants) Philip J. Mause and Jeffrey J. Lopez were on the briefs. (for appellee) Robert L. Raskopf and Sanford I. Weisburst were on the


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