Pro-Football, Inc. v. Harjo
Encyclopedia
Pro-Football, Inc. v. Harjo, 415 F.3d 44
(D.C. Cir. 2005), is a case in which the U.S. Court of Appeals for the District of Columbia considered the decision of the United States Patent and Trademark Office
's Trademark Trial and Appeal Board
(TTAB) to cancel the registration of the Washington Redskins
football
team, based on the claim that the name was disparaging
to Native American
s. The Court of Appeals did not actually reach the merits of the TTAB's decision; it sent the case back to the trial court for consideration of a procedural issue.
, which overturned the cancellation on two grounds. The District Court found that the TTAB lacked substantial evidence to find disparagement, and that the petition was barred by laches
- an equitable legal theory which prohibits a party from waiting so long to file a claim that it becomes unfair to the other party. The Redskins had registered their marks as early as 1967 - when the youngest of the complainants was one year old. The complainants then appealed this decision to the Court of Appeals.
The Native Americans claimed that laches should not apply to a disparagement claim at all, because the law specifies that such a claim can be brought "at any time". The Court rejected this, noting that other language in the same statute specifically permits equitable defenses, and laches is such a defense. The Court then considered the applicability of laches to the case at hand. Because the defense depends on the laxity of the plaintiff in pursuing his rights - which can not effectively be pursued until the plaintiff has reached the age of majority - the Court found that the defense could not be applied against the one plaintiff who had been a minor until recently, and therefore that the plaintiff had not slept on his rights.
The Court acknowledged the assertion by the owner that this finding would leave trademarks disparaging a group with a constantly expanding population "perpetually at risk":
for further proceedings. In July 2008, that court found that the doctrine of laches was still applicable to the particular plaintiffs in this case, because the youngest plaintiff had turned 18 eight years before the case was filed. On November 16, 2009, the U.S. Supreme Court declined certiorari and refused hear the Native American group's appeal.
Case citation
Case citation is the system used in many countries to identify the decisions in past court cases, either in special series of books called reporters or law reports, or in a 'neutral' form which will identify a decision wherever it was reported...
(D.C. Cir. 2005), is a case in which the U.S. Court of Appeals for the District of Columbia considered the decision of the United States Patent and Trademark Office
United States Patent and Trademark Office
The United States Patent and Trademark Office is an agency in the United States Department of Commerce that issues patents to inventors and businesses for their inventions, and trademark registration for product and intellectual property identification.The USPTO is based in Alexandria, Virginia,...
's Trademark Trial and Appeal Board
Trademark Trial and Appeal Board
The Trademark Trial and Appeal Board is a body within the United States Patent and Trademark Office responsible for hearing and deciding certain kinds of cases involving trademarks. These include appeals from decisions by USPTO Examiners denying registration of marks, and opposition proceedings...
(TTAB) to cancel the registration of the Washington Redskins
Washington Redskins
The Washington Redskins are a professional American football team and members of the East Division of the National Football Conference in the National Football League . The team plays at FedExField in Landover, Maryland, while its headquarters and training facility are at Redskin Park in Ashburn,...
football
American football
American football is a sport played between two teams of eleven with the objective of scoring points by advancing the ball into the opposing team's end zone. Known in the United States simply as football, it may also be referred to informally as gridiron football. The ball can be advanced by...
team, based on the claim that the name was disparaging
Disparagement
Disparagement, in United States trademark law, is a statutory cause of action that permits a party to petition the Trademark Trial and Appeal Board of the Patent and Trademark Office to cancel a trademark registration that "may disparage or falsely suggest a connection with persons, living or...
to Native American
Native Americans in the United States
Native Americans in the United States are the indigenous peoples in North America within the boundaries of the present-day continental United States, parts of Alaska, and the island state of Hawaii. They are composed of numerous, distinct tribes, states, and ethnic groups, many of which survive as...
s. The Court of Appeals did not actually reach the merits of the TTAB's decision; it sent the case back to the trial court for consideration of a procedural issue.
Facts
In 1992, activist Suzan Harjo led seven Native Americans in petitioning the TTAB to cancel six trademark registrations owned by Pro-Football, Inc., the corporate entity that operates the Washington Redskins. The TTAB granted the petition, and the owner appealed to the United States District Court for the District of ColumbiaUnited States District Court for the District of Columbia
The United States District Court for the District of Columbia is a federal district court. Appeals from the District are taken to the United States Court of Appeals for the District of Columbia Circuit The United States District Court for the District of Columbia (in case citations, D.D.C.) is a...
, which overturned the cancellation on two grounds. The District Court found that the TTAB lacked substantial evidence to find disparagement, and that the petition was barred by laches
Laches (equity)
Laches is an "unreasonable delay pursuing a right or claim...in a way that prejudices the [opposing] party" When asserted in litigation, it is an equitable defense, or doctrine...
- an equitable legal theory which prohibits a party from waiting so long to file a claim that it becomes unfair to the other party. The Redskins had registered their marks as early as 1967 - when the youngest of the complainants was one year old. The complainants then appealed this decision to the Court of Appeals.
Issue
The Court of Appeals was presented with several questions:- Whether the complainants had indeed presented "substantial evidence" to the TTAB
- whether a laches defense should apply at all in a disparagement case; and
- if such a defense should apply, whether it would bar these particular complainants.
Opinion
The Court of Appeals upheld the District Court's holding that laches was a valid defense in a disparagement case. It vacated the District Court's application of laches to one of the complainants, however, and remanded the case for further consideration on that issue only. It retained jurisdiction over the rest of the case (including the question of whether the TTAB's decision had been supported by substantial evidence), pending the District Court's resolution of the laches issue.The Native Americans claimed that laches should not apply to a disparagement claim at all, because the law specifies that such a claim can be brought "at any time". The Court rejected this, noting that other language in the same statute specifically permits equitable defenses, and laches is such a defense. The Court then considered the applicability of laches to the case at hand. Because the defense depends on the laxity of the plaintiff in pursuing his rights - which can not effectively be pursued until the plaintiff has reached the age of majority - the Court found that the defense could not be applied against the one plaintiff who had been a minor until recently, and therefore that the plaintiff had not slept on his rights.
The Court acknowledged the assertion by the owner that this finding would leave trademarks disparaging a group with a constantly expanding population "perpetually at risk":
- The fact that Pro-Football may never have security in its trademark registrations stems from Congress's decision not to set a statute of limitationsStatute of limitationsA statute of limitations is an enactment in a common law legal system that sets the maximum time after an event that legal proceedings based on that event may be initiated...
and instead to authorize petitions for cancellation based on disparagement "at any time".
Later developments
The case was remanded to the United States District Court for the District of ColumbiaUnited States District Court for the District of Columbia
The United States District Court for the District of Columbia is a federal district court. Appeals from the District are taken to the United States Court of Appeals for the District of Columbia Circuit The United States District Court for the District of Columbia (in case citations, D.D.C.) is a...
for further proceedings. In July 2008, that court found that the doctrine of laches was still applicable to the particular plaintiffs in this case, because the youngest plaintiff had turned 18 eight years before the case was filed. On November 16, 2009, the U.S. Supreme Court declined certiorari and refused hear the Native American group's appeal.