Monday, July 18, 2005

Court of Appeals Remands "REDSKINS" Case on Laches Issue

In a ruling issued on July 15, 2005, the U.S. Court of Appeals for the District of Columbia Circuit remanded the long-running REDSKINS trademark case to the district court for further consideration of the issue of laches with regard to one of the petitioners. Pro-Football, Inc. v. Harjo, 75 USPQ2d 1525 (D.C. Cir. 2005).

Mateo Romero

The district court granted summary judgment on two alternative grounds: that the TTAB should have found the Native Americas' petition for cancellation barred by laches, and that in any case the TTAB's decision was unsupported by substantial evidence. Pro-Football, Inc. v. Harjo, 68 USPQ2d 1225 (D.D.C. 2003). The TTAB had granted Harjo's petition for cancellation of six registrations for marks containing the word REDSKINS (or a variation thereof) for football entertainment services. It found that the marks "may disparage" Native Americans or "bring them into contempt or disrepute" in violation of Section 2(a) of the Trademark Act.

The court of appeals agreed with the Native Americans that the district court mistakenly applied the doctrine of laches to one of the petitioners -- namely, Mateo Romero, who was only one-year old in 1967 when the district court started the clock for laches. (The petition for cancellation was filed in 1992). The court explained that laches is an equitable doctrine "founded on the notion that equity aids the vigilant and not those who slumber on their rights." It ruled that, as to Romero, the district court's approach ran afoul of the "well-established principle of equity that laches runs only from the time a party has reached his majority."

Wash Redskins

Pro Football argued that such a ruling would mean that trademark owners "could never have certainty, since a disparagement claim could be brought by an as yet unborn claimant for an unlimited time after a mark is registered." The Board was not moved:

"Why should equity elevate Pro-Football's perpetual security in the unlawful registration of a trademark over the interest of a Native American who challenged this registration without lack of diligence. Why should laches bar all Native Americans from challenging Pro-Football's 'Redskins' trademark registrations because some Native Americans may have slept on their rights?"

On remand, the district court is directed to evaluate "Romero's laches," and particularly the "trial and economic prejudice" to Pro-Football that would have been avoided "had the petitioner acted more diligently in seeking cancellation."

TTABlog comment: Even if it turns out that Mr. Romero's claim is barred by laches, how long will it be before another Native American steps forward -- say one who has just reached his or her majority -- to challenge the REDSKINS trademark registrations? Even if the evidence in Harjo turns out to be inadequate, won't the next petitioner provide even more evidence, and the next even more, and so on? I suspect that even if Pro-Football wins the Harjo case, its problems with the REDSKINS registrations will not be over soon.

Text Copyright John L. Welch 2005. All Rights Reserved.


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