By Roberta S. Bren, of Oblon Spivak LLP
A federal judge from the Eastern District of Virginia has denied the defendants’ motion to dismiss the appeal of plaintiff Pro-Football Inc. in a case involving the U.S. Patent and Trademark Office (USPTO) Trademark Trial and Appeal Board (TTAB) and its cancellation of Pro-Football’s REDSKINS trademarks, which it found “may disparage” Native Americans.
On November 25, 2014, the court ruled that the Native American defendants are parties of interest and there is a case and controversy for the appeal. As a result, the Native American defendants will remain players, and the “game” before the Eastern District court will continue.
On August 14, 2014, Pro-Football Inc. (PFI) filed an appeal (Civil Action No.: 1:14-cv-1043-GBL-IDD) of the decision by the TTAB scheduling the cancellation of six trademark registrations for the mark REDSKINS. The TTAB, in a ruling 2-1, determined that the marks were not eligible for registration “on the grounds that they are scandalous, disparaging, and may bring Native Americans into contempt or disrepute in violation of the Lanham Act.”
The five defendants, Amanda Blackhorse, Marcus Briggs-Cloud, Phillip Gover, Jillian Pappan and Courtney Tsotigh, filed a motion to dismiss that essentially argued that PFI should have appealed to the Federal Circuit or filed the action against the director of the USPTO rather than the defendants. The defendants asserted that they are not “parties in interest” who may be sued under 15 U.S.C. § 1071(b)(4) and that the Eastern District court lacks subject matter jurisdiction because there is no “case or controversy.” Not surprisingly, PFI aggressively argued against the defendants’ motion.
The court gave four reasons for its denial, namely: (i) the interests of the defendants in requesting cancellation are sufficient to establish jurisdiction under Article III of the Constitution; (ii) review of the TTAB’s decision in the Federal Circuit or a U.S. District Court under 15 U.S.C.§ 1071 must carry into the review of the proceeding; (iii) the cancellation action filed by the defendants demonstrates that the defendants have a sufficient interest to constitute “adverse parties” and “parties in interest” under 15 U.S.C.§ 1071; and (iv) the defendants were the sole adverse parties in the prior inter partes proceeding before the TTAB.
In as much as the motion to dismiss was denied in its entirety, the case will proceed with the Native American defendants.
See http://bit.ly/1zVQtue
