Monday, May 16, 2011

Precedential No. 12: TTAB Issues Pre-Trial Order in New REDSKINS Disparagement Case

Following up on its Order of March 15, 2011 [TTABlogged here], the Board held a pre-trial conference on April 13, 2011 in the new REDSKINS disparagement case and issued another pre-trial order (here). Amanda Blackhorse, Marcus Briggs, Phillip Gover, Jillian Pappan, and Courtney Tsotigh v. Pro Football, Inc., 98 USPQ2d 1633 (TTAB 2011) [precedential].

This new proceeding “mirrors” the Harjo case, in which the U.S. Court of Appeals for the District of Columbia Circuit ultimately (in 2009) affirmed the district court's ruling that the Section 2(a) disparagement claims of the Native American plaintiffs were barred by laches. Here, "new" Native American petitioners seek to knock out the same six REDSKINS registrations on the ground of disparagement. The petitioners allegedly “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." [See TTABlog posting here].

Amanda Blackhorse

The Board stated that "it will be taking a more active role in pretrial management of cases that the Board identifies as having the potential to become overly contentious and/or involve creation by the parties of excessive records." While complimenting counsel on their "professionalism and spirit of collegiality," the Board warned against re-argument of issues already decided, over-designation of documents as confidential, and maintenance of unnecessary objections.

It required the parties to submit a detailed table of evidence and asked for further comment on certain issues of law, aiming toward “an agreement regarding the applicable law prior to trial.”

The Board was particularly concerned with one legal issue: Section 2(a) bars the registration of a mark that "consists of or comprises … matter which may disparage … or bring ... into contempt, or disrepute." However, the courts in Harjo left open the question of whether "disparage" and "contempt or disrepute" are to be determined under the same "guidelines."

The Board asked the parties whether they agree that the guidelines for the two aspects of Section 2(a) are the same, but Petitioners asked for time to think it over. And so the Board allowed Petitioners one week ...

"[t]o file notice of their position on the issue with the Board and, if necessary, to explain the differences between the elements of these claims, failing which the Board, as it did in Harjo, will use the same guidelines for determining whether a mark is disparaging and whether it brings persons or institutions into contempt or disrepute."

If Petitioners are unable to explain any differences between the elements of these two claims, "the Board will use the same guidelines as it did in Harjo."

Finally, the Board reviewed Pro Football's affirmative defenses and threw out 10 of twelve, including failure to state a claim, lack of standing (not an affirmative defense), equitable estoppel (overlaps with laches), lack of damage (actual damage not required), and several constitutional violations (not within TTAB’s jurisdiction).

Discovery is set to close at the end of June, and the testimony stage begins at the end of August.

TTABlog comment: Maybe I’m missing something, but why should the parties have to agree on the law? Isn't it up to the Board to "lay down the law" while the parties argue over the facts?

Text Copyright John L. Welch 2011.


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