Washington Redskins Win One - Really

Since the dawn of time man has wandered the Earth. Shortly thereafter, the case of Pro Football, Inc. vs. Harjo began.

On May 15, 2009 the U.S. District Court of Appeals for the District of Columbia issued its latest and once-again ruling in this matter focusing on the narrow issue of laches as it applies to the claims in this matter.

At its heart, this case concerns whether various trademarks related to the Washington Redskins football team disparage Native Americans within the meaning of the Lanham Trademark Act, § 2, 15 U.S.C. §1052(a). But that question has been overshadowed by the defense of laches.

Appellants, seven Native Americans, filed a 1992 action before the Patent and Trademark Office seeking cancellation of six Redskins trademarks that were, they argued, impermissibly disparaging towards members of their ethnic group. Pro-Football, the Redskins’ corporate entity and the owner of the marks, argued to the Trademark Trial and Appeal Board that its long-standing use of the name, combined with plaintiffs’ delay in bringing the case, called for application of laches, an equitable defense that applies where there is “(1) lack of diligence by the party against whom the
defense is asserted, and (2) prejudice to the party asserting the defense,” Nat'l R.R. Passenger Corp. v. Morgan, 536 U.S. 101, 121–22 (2002) (internal quotation marks omitted).

Finding on the merits that the marks were indeed disparaging, the TTAB cancelled them, see Harjo v. Pro Football Inc., 50 U.S.P.Q. 2d 1705, 1749 (TTAB 1999). Pro-Football then exercised its option to dispute this holding by means of a civil action in the United States District Court for the District of Columbia. The district court sided with Pro-Football on the laches issue, holding that the 25-year delay between the mark’s first registration in 1967 and the TTAB filing in 1992 indeed required dismissal of the action. Pro-Football, Inc. v. Harjo, 284 F. Supp. 2d 96, 144 (D.D.C. 2003).

The U.S. District Court of Appeals for the District of Columbia reversed the District Court’s decision having inappropriately begun the running of the period of laches prior to the youngest plaintiff having reached the age of majority.

On remand in this case, the district court again found the defense of laches persuasive. On appeal, the U.S. District Court of Appeals for the District of Columbia has now upheld the application of laches in this matter. Accordingly, once again the Washington Redskins’ trademarks are protected.

However, if history is any judge it is likely that this matter may be headed for further proceedings.

One thing is for sure, the Washington Redskins’ franchise has now had their most significant victory in over a decade.

The Trademark Company