Battle Over Redskins Trademark

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By: Dana Theriot
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The case challenging use of the “Redskins” trademarks started in the United States Patent and Trademark Office (USPTO) in 1992 and resulted in more than a decade of courtroom battles in the District of Columbia federal courts. The matter was heard by both trial and appellate courts two separate times and is, now once more before the USPTO (but in a different posture). At the outset the issues were seemingly simple but, as demonstrated by the volume of court decisions, involved complex legal issues. In 1992, seven Native Americans filed claim before the USPTO seeking cancellation of six “Redskins” trademarks on the basis that the marks were disparaging towards members of their ethnic group.

The marks in question are owned by Pro-Football, Inc. , the Washington Redskin’ corporate entity, and all the marks use the word “Redskin” in some fashion. The first trademark was registered in 1967, three more in 1974, one in 1978 and, finally, “Redskinettes” in 1990. In response to the USPTO action, Pro-Football argued that it had used the name for a long period of time and that the petitioners had delayed in bringing their claim; therefore, the doctrine of laches should prevent the petitioners from proceeding. Laches in an equitable defense that is used in cases where there is a lack of diligence on the part of the party bringing the underlying claim and prejudice to the party raising the defense. The theory behind the laches is that the law should not aid those who “sleep on their rights.”

The Trademark Trial and Appeal Board (TTAB) disagreed with Pro-Football. TTAB cancelled six marks, finding that the marks were disparaging. Among other things the Native Americans presented evidence including personal testimony, dictionary entries labeling the term offensive, surveys and book and media excerpts using the word “Redskin” in a pejorative manner. The TTAB further noted that the petitioners’ interests were broad and reached “beyond personal interest” as they were preventing a substantial segment of the population from being held up to public ridicule. (Cancellation of the marks did not prevent the football team from continuing to use the marks; cancellation solely limits their ability to go after infringers).

Pro-Football filed a case in federal court challenging this TTAB holding. The U.S. District Court for the District of Columbia ruled in favor of Pro-Football (on a motion for summary judgment). The Court noted that the 25-year delay between the mark’s first registration (1967) and the Native Americans’ TTAB filing (1992) required dismissal of the action based on the doctrine of laches. The decision was appealed. The U.S. Court of Appeals for the District of Columbia reversed the district court decision. The appeals court held that “the period of unjustifiable delay cannot start before a plaintiff reaches the age of majority. The youngest plaintiff, Mateo Romero, was only a year old in 1967. The court explained that the correct inquiry would have assessed Romero’s delay and any resulting prejudice to Pro-Football only from the day of his eighteenth birthday in December 1984. Pro-Football unsuccessfully argued that this position would forever put its marks at risk as “a disparagement claim could be brought by an as yet unborn claimant for an unlimited time after a mark is registered.” The court was not persuaded, and the case was remanded to the district court to consider the defense of laches with respect to Romero. In remanding the case the appellate court specifically instructed the district court to examine Romero’s laches by considering both trial and economic prejudice to Pro-Football. “As to trial prejudice, the court should consider the extent to which Romero’s post-majority delay resulted in a ‘loss of evidence or witness supporting [Pro-Football’s] position.” As to economic prejudice, the Court of Appeals was not as clear. The issue is not whether Pro-Football can use the mark but its right to federal trademark protection. Among other things the district court was advised to consider the owner’s investment in the marks and whether the owner would have taken a different course of action had the Native Americans or, specifically, Romero, acted more diligently.

On remand the district court again found the defense of laches persuasive. The district court held that the seven year, nine-month “Romero Delay-Period” (between 1984 and 1992 evinced a lacked of diligence on Romero’s part, and found that the delay harmed Pro-Football. However, that ruling did not end the case. Romero again appealed to the U.S. Court of Appeals for the District of Columbia. On this (second) appeal Romero questioned whether the district court properly found evidence of trial and economic prejudice to Pro-Football sufficient to support the lower court’s finding that laches barred the Native Americans claim. The Court of Appeals upheld the decision of the district court- that is, the Petitioner’s case was barred by doctrine of laches. The appellate court noted that the district court focused primarily on te fact that Edward Williams, the former Redksins President, had died during the “Romero Delay Period” and that the eight-year delay made it more challenging to find contemporaneous evidence of public attitudes towards the mark. Further, during the “Romero Delay Period,” there was significant evidence that the Redskins increased their “merchandising efforts” and invested heavily in the marks Ultimately, the district court did not err in finding in favor of Pro-Football.

In an effort to avoid the laches problem that plagued the above proceeding, a second group of younger Native Americans filed a claim before TTAB during this time. That matter is still pending. Since the original petition was filed, in 1992, the USPTO has rejected numerous attempts by Pro-Football and others to register

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