Article: May 2013 Sports Litigation Update

Is “Redskins” a Disparaging Word or a Famous Mark That Honors Native Americans? A recent hearing before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office provides guidance as to the interpretation, reach, and application of Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a). This section of the federal trademark statute prohibits the registration of marks that contain matter that “may disparage.”

Quinn Emanuel represented Pro-Football in a similar trademark-disparagement case, Suzan Shown Harjo et al. v. Pro-Football, Inc., brought in 1992 by seven Native Americans who petitioned the PTO for cancellation of the federal registrations of the trademark REDSKINS, owned by the Washington Redskins football team. Pro-Football persuaded the District Court that, among other things, the Petitioners’ claims were barred by laches, because they waited over 20 years before filing their cancellation request. On appeal, also handled by Quinn Emanuel, the D.C. Circuit asked the trial court to take briefing and rule upon whether one petitioner, Mateo Romero, who had not reached the age of majority until 1984, was also barred by laches.

The firm briefed this issue to the trial court, and nearly a year and a half later, Judge Kollar-Kotelly ruled Romero’s claims were barred by laches based on his 8-year delay in filing his petition for cancellation. The Court ruled that the 8-year delay resulted in both trial and economic prejudice, and that the length of the delay was comparable to other trademark cases where courts denied a claim based on laches. On appeal, the D.C. Circuit upheld Judge Kollar-Kotelly’s reasoning and affirmed Pro-Football’s laches defense. The Harjo Petitioners filed a petition for certiorari to the Supreme Court, which Quinn Emanuel opposed. On November 16, 2009, the Supreme Court denied the petition, concluding a high-profile dispute that had lasted for the better part of two decades.

After the Supreme Court denied that petition of certiorari, a younger group of Native Americans reactivated the case, now Amanda Blackhorse et al. v. Pro-Football, Inc., seeking to cancel the various registered Washington Redskins trademarks owned by Pro-Football. Quinn Emanuel represents Pro-Football in this identical Blackhorse case brought by the young Native Americans in an attempt to defeat a potential laches defense. Last year, after the parties submitted briefing to the Board as to their positions on the applicable law controlling the issues of the case, the Board issued a decision largely adopting Pro-Football’s legal positions and rejecting the Blackhorse Petitioners’ attempts to broaden the legal standard of trademark disparagement.

Most noteworthy in the Board’s decision is that the evidence must date from the years of registration 1967, 1974, 1978, and 1990; only the views of the referenced group—not the American public as a whole—are relevant; these views are determined by a “substantial composite” of Native Americans, which is not necessarily a majority; disparagement must be considered “in relation to the goods or services identified by the mark in the context of the marketplace”; and, finally, Petitioners need prove only that the marks were “capable” of disparaging, not that they actually were disparaging at the dates in question.

In addition, Quinn Emanuel convinced the Blackhorse Petitioners to agree to limit the record to the same evidence used in the earlier Harjo proceeding, thereby saving Pro-Football significant time, resources, and expenses that would have accompanied protracted discovery. Thus, the same trial evidence as in Harjo was submitted (trials before the Trademark Trial and Appeal Board take place via paper submissions), and final briefing was concluded last fall. The recent oral argument highlighted the legal standards at issue.

Ultimately, the Blackhorse case will test whether the TTAB will follow the direction of the District Court of the District of Columbia and find that there is not sufficient evidence of whether a substantial composite of Native Americans believed the term “Redskins,” as used in connection with the Washington Redskins football club, was disparaging to Native Americans at the times the majority of the trademarks were registered in the 1960s and 1970s.