Eight-year delay bars claim that REDSKINS mark disparages Native Americans

United States of America
In Pro Football Inc v Harjo (Case  03-7162, May 15 2009), the US Court of Appeals for the District of Columbia Circuit has affirmed the lower court’s entry of judgment in favour of Pro Football Inc on the grounds that laches barred the plaintiffs’ claim that Pro Football's REDSKINS mark should be cancelled. 
The plaintiffs - seven Native American individuals - filed a petition in 1992 to cancel Pro Football’s US registration for the trademark REDSKINS on the grounds that the term 'redskins' was disparaging towards members of their ethnic group. The US Patent and Trademark Office (USPTO) cancelled the registration, finding that the mark was disparaging. The USPTO also found that because the plaintiffs had asserted an interest in preventing “a substantial segment of the population” from being held up “to public ridicule” and the interests asserted were “beyond personal interests,” laches was inappropriate.
After losing the cancellation action, Pro Football appealed to the US District Court for the District of Columbia, which reversed the decision of the USPTO and entered judgment in favour of Pro Football on the grounds that the 25-year delay in bringing the cancellation action after the mark was originally registered caused Pro Football prejudice and operated to bar the plaintiffs’ claim under laches. 
The group of seven Native Americans appealed the district court's decision to the US Court of Appeals for the District of Columbia. The appellate court reversed and remanded the decision of the district court on the grounds that the time period to evaluate a defence of laches begins only once all of the plaintiffs have reached adulthood (one of the plaintiffs, Romero, was only a year old in 1967, when the REDSKINS mark was registered). On remand, the district court found that the seven-year, nine-month delay between the time Romero turned 18 and the time the plaintiffs' petition to cancel was filed still showed a lack of diligence on the part of the plaintiffs and caused both evidentiary and economic prejudice to Pro Football. On that basis, the lower court again determined that laches barred the plaintiffs’ claim. The plaintiffs again appealed to the US Court of Appeals for the District of Columbia. 
The equitable doctrine of laches applies where there is:
  • a lack of diligence by the party against whom the defence is asserted; and
  • prejudice to the party asserting the defence. 
Moreover, disparagement is analyzed at the time of registration of a mark. 
In affirming the lower court's decision, the appellate court looked at both evidentiary prejudice and economic prejudice that resulted from the nearly eight-year delay between the time Romero turned 18 and the time the original petition to cancel the REDSKINS registration was filed. First, the court considered that the former Redskins president, who had met with Native American leaders to discuss their views around the time of registration and who had subsequently died, would have been able to provide useful testimony if the petition to cancel had been filed earlier. The appellate court also agreed with the district court’s finding that other contemporaneous evidence of public attitudes towards the mark at the time of registration had been lost.
In addition, the appellate court found that the record clearly supported a significant expansion of Redskins merchandising efforts and a substantial investment in the mark in the nearly eight-year delay period. The appellate court thus found that it had no basis to reverse the lower court's decision.
Finally, Romero attempted to argue that he had acted with diligence with respect to the petition to cancel Pro Football’s registration for the REDSKINETTES mark (the name of the Redskins football team’s cheerleaders), since that mark was not registered until 1990. However, the appellate court again agreed with the lower court, finding that the 29-month delay to challenge this registration was unreasonable given the relationship between Romero’s claim against the REDSKINS mark and his claim against the REDSKINETTES mark. In fact, the appellate court found that the REDSKINETTES issue demonstrated that during the delay period, Pro Football was not only “investing in the REDSKINS mark, but placing greater reliance on the continued validity of its underlying brand name”.
The decision highlights the importance of timely bringing claims and demonstrates that evidence of investment in a mark can be afforded significant weight for the purposes of determining prejudice. Moreover, the decision indicates that a defence of laches as to a recently registered trademark may be based on a failure to challenge an earlier, substantially similar mark.

For background discussion of this case please see "District court overturns cancellation of REDSKINS trademarks", "REDSKINS registrations still in the balance", "Additional discovery refused in REDSKINS Case" and "Native American's claim to cancel REDSKINS mark barred by laches".

Susan M Natland and Jeffrey H Larson, Knobbe Martens Olson & Bear LLP, Irvine

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