Redskins Ruling is Consistent with TTAB Precedent

On June 18, 2014, the Trademark Trial and Appeal Board issued a decision in the second proceeding brought by a group of Native Americans to cancel registrations for various “Redskins” marks used by the National Football League and the Washington Redskins. The board held that the marks were disparaging to a substantial composite of Native Americans as of the registration date of each mark, in violation of Section 2(a) of the Lanham Act, which prohibits registration of a mark that “may disparage” persons or “bring them into contempt or disrepute.”² As a result, the board ordered the cancellation of six Redskins trademark registrations owned by Pro-Football Inc., the parent company of the Washington Redskins, issued between 1967 and 1990.

This is not the first time that the board has considered whether a mark is disparaging to a particular group, nor is this the first time the board has considered whether these particular marks are disparaging to Native Americans.

Harjo Line of Cases

In 1992, a different group of Native Americans filed a petition to cancel³ the same registrations on virtually identical grounds. Pro-Football denied that the Redskins marks were disparaging and asserted various affirmative defenses, including laches. After striking all of Pro-Football’s affirmative defenses, the board issued a decision on the merits in 1999, holding that the marks were disparaging when registered and ordering the registrations canceled.⁴ Pro-Football appealed to the District Court for the District of Columbia.

On a motion for summary judgment, the district court reversed the cancellation, stating that the Board’s finding of disparagement was not supported by substantial evidence and that the doctrine of laches precluded consideration of the case.⁵ The petitioners appealed to the Court of Appeals for the District of Columbia Circuit, which ruled that the lower court had applied the wrong standard in evaluating the laches defense as to one of the petitioners.⁶

On remand, the district court held that the claim still was barred by laches (even with application of the correct laches standard)⁷, and the D.C. Circuit affirmed.⁸ Thus, Harjo was resolved solely on the procedural issue of laches and the D.C. Circuit never evaluated the board’s ruling that the Redskins marks were disparaging when registered or the district court’s reversal of the original finding on the merits.

Download: Redskins Ruling is Consistent with TTAB Precedent

1. Cancellation No. 92046185 (June 18, 2014).
2. 15 U.S.C. § 1052(a).
3. Cancellation No. 92021069.
4. Harjo v. Pro-Football, Inc., 50 U.S.P.Q.2d 1705 (T.T.A.B. 1999).
5. Pro-Football Inc. v. Harjo, 284 F.Supp.2d 96; 68 U.S.P.Q.2d 1225 (D.D.C. 2003).
6. Pro-Football Inc. v. Harjo, 415 F.3d 44; 75 U.S.P.Q.2d 1525 (D.C. Cir. 2005).
7. Pro-Football Inc. v. Harjo, 567 F.Supp.2d 46; 87 U.S.P.Q.2d 1891 (D.D.C. 2008).
8. Pro-Football Inc. v. Harjo, 565 F.3d 880; 90 U.S.P.Q.2d 1593 (D.C. Cir. 2009).