Native American's claim to cancel REDSKINS mark barred by laches

In Pro-Football Inc v Harjo (June 25 2008), the US District Court for the District of Columbia has ruled that Pro-Football Inc was entitled to summary judgment because the last remaining defendant in the Washington Redskins trademark disparagement case, Mateo Romero, was barred by laches from maintaining his claim. Romero had waited almost eight years after reaching the age of majority to petition the Trademark Trial and Appeal Board to cancel the registrations of six trademarks used by the Washington Redskins. The court ruled that such delay was too long.
The court did not address the central issue in the case - whether the REDSKINS trademarks are disparaging and should be cancelled - and stated that the "opinion should not be read as making any statement on the appropriateness of Native American imagery for team names". Instead, the court found that Pro-Football satisfied both elements of a laches defence.  
First, Pro-Football established a lack of diligence on Romero's part because the eight-year delay was unreasonable. The court placed much weight on the fact that Romero:
  • had been aware of the REDSKINS trademarks since he watched the Redskins games as a child; and
  • had no reasonable excuse for the eight-year delay.
Second, the court found both trial and economic prejudice to Pro-Football during the eight-year delay. Trial prejudice was established through the combination of:
  • the loss of the testimony of Edward Bennett Williams, who died in 1988 and was the Redskins team president from 1965 to 1980;
  • the diminished quality of survey evidence currently available; and
  • the loss of several years' worth of financial records by both the Redskin Club and NFL Properties, which owned and managed the REDSKINS trademarks. 
The Redskins' expanded use of, and investment in, the trademarks during the eight-year period and the risk that Romero's cancellation petition posed to the security of the trademarks was sufficient to establish economic prejudice.
Suzan Harjo, the lead plaintiff in the dispute, has announced that she plans to appeal. Should this fail, she has announced that she will proceed with a group of younger plaintiffs whose claims will allegedly not be barred by laches. In light of the history of this litigation, it seems likely that the court will continue to find ways to avoid deciding the central issue - whether the REDSKINS trademarks, when registered in 1967, were disparaging to Native Americans. If that question is ever answered in the affirmative, the trademarks of other teams might also be on the line.
Susan Progoff and Matthew E Black, Ropes & Gray LLP, New York

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