Will “Redskins” trademark ruling be reversed like the last one?

June 25, 2014

Redskins TMLast week, the Trademark Trial and Appeal Board (TTAB) ruled to invalidate the “Redskins” trademark owned by the Washington Redskins football team.  The ruling was the result of a cancellation petition filed by five Native Americans pursuant to Section 14 and Section 2(a) of the Lanham Act, which allows for the cancellation of a registered trademark “that may disparage persons or bring them into contempt or disrepute.”

In other words, the petitioners claimed that the “Redskins” trademark was disparaging to them as Native Americans, and they wanted to have the mark cancelled – an endeavor in which they succeeded last Wednesday.

Interesting, this wasn’t the first such attempt to invalidate the “Redskins” mark in such a manner: on September 10, 1992, seven Native Americans filed a petition to cancel the “Redskins” mark.

The attempt was ultimately unsuccessful, but the case was not decided on the merits.  However, it seemed likely that, had that case actually been determined on the merits – that is, whether the “Redskins” mark is disparaging to Native Americans – that these earlier challengers would not have succeeded.  The U.S. District Court for the District of Columbia, on appeal from the TTAB, held that there was “insufficient evidence to support an order to cancel the challenged registrations as disparaging.”

You may have noticed that this latest ruling also came down from the TTAB, and will likely be appealed.  So what’s stopping the outcome from being a repeat of last time?  I mean, isn’t the D.C. District Court just going to reverse the TTAB just like before?  While we’re at it, how was the court even able to consider the issue once again, considering that the previous court had ordered that “any motion or brief including a re-argument of a previously decided issue in this proceeding will be deemed to be a nonconforming brief and will be given no consideration.”

Funny story: Because of the 2011 America Invents Act, the venue for appeals from the TTAB has been changed from the D.C. Circuit to the Eastern District of Virginia.  And, according to the TTAB court in this most recent ruling, “the passage of the America Invents Act sufficiently changes the circumstances in this case so as to justify revisiting the issue.”

But if the case wasn’t previously decided on the merits – meaning that the issue was not whether “Redskins” is disparaging to Native Americans – then what is this “issue” that the court “revisited?”

The “laches” defense used by the football team and upheld by the court in the previous case.

For those unfamiliar with the term, “laches” is a defense in equity that is comparable to the statute of limitations.  However, where a statute of limitations is of a set duration, “laches” views delays in taking action case by case, judging the reasonableness of a particular delay on that basis.

In this case (or rather, the previous incarnation of it), the court held that laches precluded consideration of the disparagement issue because the plaintiffs had “waited” for so long since the trademark registration was first granted in 1967.

The current court didn’t see things that way, specifically noting that “where there is a broader public policy concern at issue, the equitable defense of laches does not apply.”  The court noted the “broader public interest” in this case to be the disparagement of “a substantial composite of Native Americans.”  Thus, the court concluded that “there is an overriding public interest in removing from the register marks that are disparaging to a segment of the population beyond the individual petitioners.”

As is apparent from the above quotes, the court had concluded that “Redskins” was disparaging to Native Americans by the point that it reached the issue of laches (there is actually a very, very extensive record to support the court’s conclusion).

It remains to be seen whether the court’s decision will survive appeal, but even if it doesn’t, the Washington Redskins football club has common law trademark protections to rely on, so don’t expect to see a flood of cheap, unlicensed Washington Redskins merchandise anytime soon.

But, should this decision stand, it may serve as an important precedent in cancellation actions against other Native American-themed sports teams – of which there is no shortage.