Wednesday, May 20, 2009

Back to the Board: Is "REDSKINS" Disparaging or Not?

How many news reports have you seen or read about the REDSKINS case that say the football team "gets to keep using its mark"? Or doesn't "lose its mark"? Or some such nonsense. Of course, a TTAB cancellation proceeding was at the heart of the case, and the issue decided was registration of the marks, not use. [For a quick review of the Harjo rulings, see the recent TTABlog posting here].

The district court, in Harjo I, reversed the TTAB's finding of disparagement, ruling that it was not supported by substantial evidence. The court alternatively reversed on the ground of laches. The subsequent district court and appellate court rulings dealt only with the laches issue, ultimately resulting in a ruling in favor of Pro-Football, Inc.

But there is a "new" petition for cancellation filed in 2006 by six "new" Native American petitioners, seeking to knock out the same six REDSKINS registrations on the ground of disparagement under Section 2(a). Blackhorse v. Pro Football, Inc., Cancellation No. 92046185. The petition alleges that "each of the Petitioners ... [has] only just recently reached the age of majority, the age from which the D.C. Circuit Court of Appeals has determined that laches begins to run."

Amanda Blackhorse

That Blackhorse proceeding has been suspended pending resolution of the Harjo case. When it resumes, there apparently will be no laches problem and the issue of disparagement will be back before the Board. These Petitioners will have the opportunity to create a new factual record, guided by the Harjo I ruling.

The Harjo rulings should have no res judicata effect on the new cancellation proceeding, since the new petitioners were not parties to the prior proceedings. The public perception of the REDSKINS name may well have changed over the past decade. The results of the various controversies over college nicknames suggests that the evidentiary record in Blackhorse may be quite different from that in Harjo. And then the courts will undoubtedly have their say.

In any case, the registration issue isn't over yet. Whether the Redskins continue to use the mark is a whole different ball game.

Text Copyright John L. Welch 2009.


At 6:23 PM, Anonymous Dave Purdue said...

Being from Toledo, Ohio, I know about team mascots/nicknames that make people cringe. We have the Toledo Mudhens baseball team and this fall, the Toledo Walleye hockey team will take the ice for the first time. As silly as these names are, they do not hold a group of people (except maybe Toledoans) up to ridicule the way the Washington Redskins name does, in my opinion.
Anyway, I was ruminating over the machinations of the Redskin trademark wrangling of late when I saw that an associate in the firm that successfully defended the case on the laches defense, wrote a thoughtful response to a "victory" e-mail that was sent to everyone in the firm by the lead counsel. Unfortunately, the associate hit reply all and his private remarks were not only broadcast to everyone in the firm but soon became fodder for the ABA Journal and many other legal news rags. Here's a link to the ABA story which includes a link to the e-mail thread that resulted - (not sure if I am allowed to post comments with links): (
As attorneys, we all have to make some difficult choices sometimes. I am not sure that I could have turned down the chance to make what turned out to be a winning argument (laches) in a cause (using Redskins as a sports team name) with which I have issues. I am pretty sure, however, that I would have passed when I felt tempted to send out a victory e-mail.


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