District court overturns cancellation of REDSKINS trademarks
In Pro-Football Inc v Harjo, the US District Court for the District of Columbia has granted summary judgment in favour of the plaintiff, the owner of the Washington Redskins National Football League team. The ruling reverses a decision of the Trademark Trial and Appeal Board (TTAB), which had granted a petition to cancel six of Pro-Football's marks that incorporated the term 'redskin'. The district court was highly critical of the TTAB's decision, holding in particular that (i) the TTAB's conclusion that these marks "may disparage Native Americans and may bring them into contempt or disrepute" was not supported by "substantial evidence", and (ii) the cancellation action was barred by the doctrine of laches.
In September 1992 Susan Harjo and six other Native Americans petitioned to cancel, under Section 2(a) of the Lanham Act, six registrations for REDSKINS marks covering entertainment services. Section 2(a) prohibits registration of a mark that "consists of or comprises [...] matter, which may disparage [...] persons, living or dead, institutions, beliefs, or national symbols". The TTAB struck out Pro-Football's laches defence and, after a trial, granted the petition to cancel the six registrations. Pro-Football appealed the TTAB's decision by commencing a civil action in the District of Columbia.
The district court first discussed the appropriate standard of review. It agreed with the TTAB that the marks must be disparaging at the time of registration. Section 2(a), in fact, does not address a mark that only becomes disparaging at a later stage. Further, the court agreed that the mark must be disparaging to the group at issue and not merely the US public generally.
Turning to the evidence, the court concluded that the TTAB's "finding that the marks at issue 'may disparage' Native Americans is unsupported by substantial evidence, is logically flawed, and fails to apply the correct legal standard to its own findings of fact". The court cited, among other things, the following examples:
- the inconsistency in the TTAB's finding that a survey reflected "current attitudes as of the time the survey was conducted" and the requirement that the disparagement be as of the date the registrations were issued;
- the TTAB's inference that, if a significant proportion of the US population as a whole found the term 'redskin(s)' offensive, so would a substantial number of Native Americans, notwithstanding the differing survey results as to the attitudes of these two groups; and
- the TTAB's assumption, notwithstanding the absence of evidence, "that because the term 'redskin(s)' dropped out of use as a term for Native Americans it must have been because the term was derogatory".
As a separate basis for reversing the TTAB's decision, the court also held that Pro-Football had satisfied the criteria for its laches defence. Each of the defendants had both constructive and actual notice of Pro-Football's rights, since Pro-Football had been using the name Washington Redskins since 1937 and had obtained registration of its marks in 1967. The court found that Pro-Football was prejudiced as a result of the substantial delay in the filing of an objection to the registration and it also rejected the argument that the laches defence was not available due to public interest. The court reasoned: "The problem with the defendants' argument is that it has no limit. Any public interest that seeks vindication under Section 2(a) would not be subject to a laches defence."
While the US Supreme Court in Dickinson v Zurko required federal courts to accord greater deference to the decisions of the US Patent and Trademark Office, the present case makes clear that, before being accorded such deference, the TTAB must carefully weigh the evidence, make explicit findings of fact, and draw logical conclusions based upon the evidence.
Harjo and the co-defendants have filed a notice of appeal.
Mary Moy, Ladas & Parry, New York
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