Washington Redskins Win, Can Keep Trademark

By Gene Quinn
May 17, 2009

As a fan of the Dallas Cowboys it is hard to write about a Redskins victory, but the victory scored by Pro-Football, Inc. on behalf of the Redskins means that the Redskin trademarks will remain intact.  The ruling providing this victory for the Redskins came down on Friday May, 15, 2009, and should once and for all put this matter to rest.  In Pro Football v. Harjo, the United States Court of Appeals for the District of Columbia issued a ruling affirming the district court and finding that the challenge could not move forward because the challenge to the Redskins trademark occurred to long after it could have been raised.

Those familiar with the case will remember that just about 10 years ago, on April 2, 1999, in a highly publicized decision from the Trademark Trial and Appeals Board, the TTAB issued a cancellation order in which it scheduled the cancellation of the contested trademarks associated with the Washington Redskins of the National Football Leauge.  The TTAB based its decision on the conclusion that the trademarks “may be disparaging of Native Americans to a substantial composite of this group of people,” and “may bring Native Americans into contempt or disrepute.” Since that time Pro-Football, Inc., on behalf of the Washington Redskins and the National Football Leauge, have been engaged in a battle to keep their trademarks in tact.


Before the ruling last week can be understood fully, it is probably best to take a step back and explain what went on in the case from an historical perspective.  On September 30, 2003, the district court ruled that the TTAB’s finding of disparagement was not supported by substantial evidence and that the challenge to the trademark was so late in coming the doctrine of laches precludes consideration of the case. Judge Colleen Kollar-Kotelly explained that the legal question before the TTAB was whether the six trademarks, when used in connection with Pro-Football’s entertainment services, “may disparage” a substantial composite of Native Americans at the time the marks were registered starting in 1967. Those familiar with the case will recall that the best evidence the challengers had was that only 36% of native americans found the mark disparaging in general. They were not asked about the mark in a football context though. Furthermore, the relevant time frame is when the mark is registered. None of the evidence offered by the challengers related in any way to this critical time period, but related to evidence that existed many years later.  Therefore, a major problem with this particular challenge was lack of evidence.  Nevertheless, the primary holding was that the challenge could not move forward because it had not been brought soon enough.

The plaintiffs brought an appeal to the DC Court of Appeals, which reversed the 2003 district court ruling.  The DC Circuit explained that the district court improperly applied the law of laches, which is the specific law relating to whether the case was brought too long after it should have been.  On this point the DC Circuit said that laches attaches only to parties who have unjustifiably delayed, and 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. Because the correct inquiry would have assessed his delay and the consequent prejudice to Pro-Football only from the day of his eighteenth birthday in December 1984, the DC Circuit remanded the matter to the district court to consider, in the first instance, the defense of laches with respect to Romero.

On remand the district court again found the defense of laches was appropriate and ruled in favor of Pro Football.  The district court determined that the seven-year, nine-month “Romero Delay Period” evinced a lack of diligence on Romero’s part.  Following the specific instructions of the DC Circuit, the district court considered both trial and economic prejudice and found that that delay harmed Pro-Football.  On appeal Romero did not challenge the applicability of laches, and did not challenge the district court’s finding of unreasonable delay. The DC Circuit, therefore, confined their review only to the question of whether the district court properly found trial and economic prejudice sufficient to support a defense of laches.

The DC Circuit affirmed the district court and ruled that Pro-Football would suffer unreasonable prejudice based on the delay in challenging the trademark registrations.  On the point of economic prejudice, the DC Circuit specifically pointed to the fact that six years into the Romero Delay Period Pro-Football was not only investing in the Redskins mark, but seeking to expand legal protection of related marks, placing greater reliance on the continued validity of its underlying brand name. The DC Circuit explained:

We thus think it neither a stretch of imagination nor an abuse of discretion to conclude that Pro-Football might have invested differently in its branding of the Redskins and related entities had Romero acted earlier to place the trademark in doubt. We accordingly have no basis for questioning the district court’s determination.

This should, once and for all, put to rest this epic challenge to the Redskins trademarks.  Of course, an appeal to the United States Supreme Court is always possible, and perhaps even probable in this case.  I do not expect the Supreme Court to take this case even if an appeal is made.  The legal ruling is based upon solid ground, and it would do great harm to the doctrine of laches and the expectation that if there is to be a legal challenge it must be brought without unnecessary and unreasonable delay.  I cannot imagine the Supreme Court would overrule such a well established and important legal principle.  This being the case, and given the politically incorrect outcome that would necessarily ensue, I just cannot envision the Supreme Court stepping into this case.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 8 Comments comments.

  1. gary norris gray May 17, 2009 6:24 pm

    Here is an article I wrote which first appeared on BASN in July of 2005, and was republished by BlackAthlete.com in 2007.

    http://www.blackathlete.com/artman2/publish/Football_7/Change_The_Names_Please.shtml

    Excerpt:

    “After 50 years, Native American Indians are still fighting the fight to get American Professional Sports teams to change their names or at least respect the names they have chosen for their teams. African Americans should be supporting our Native American brothers and sisters in this historic effort.

    The Braves, Chiefs, Indians, Redskins, and Warriors are the five professional teams with generic Native American names, names that mean little or nothing to the average American man, woman, or child.

    Now is the time to ask: America, how would Americans feel if some of the professional teams had names like, THE DENVER DARKIES, OR HOUSTON HONKIES, CHICAGO CHINKS maybe THE NEWARK NIGGERS, or even WASHINGTON STATE WHITE BOYS?”

  2. John Welch May 17, 2009 8:19 pm

    Actually, a new petition for cancellation is pending at the TTAB, brought by six native americans who have just recently reached majority age. So I don’t think the appellate court decision necessarily means that this dispute has been ended once and for all.

  3. Alan McDonald May 18, 2009 7:36 am

    New Jersey, Rutgers AND a Cowboys fan?

    Are you my twin separated at birth?

  4. Lisa Fantino, Esq. May 18, 2009 11:34 am

    At some point in this ridiculously politically correct society of ours why does freedom of speech and expression always take a back seat to the hurt feelings of a chosen few seeking their 15 minutes in the spotlight?

    Perhaps as a New Yorker I should be insulted if someone from the south calls me a Yankee. However, as an intelligent woman I am not; in fact, I am proud to be a Yankee, now if only Derek Jeter would call!

  5. Gene Quinn May 18, 2009 11:46 am

    You are a Cowboy fan Alan? Maybe we are brothers.

    -Gene

  6. Gene Quinn May 18, 2009 11:48 am

    Lisa-

    I agree. And, there is nothing wrong with being a Yankee, a Yankee fan or liking Derek Jeter!

    -Gene

  7. Alan McDonald May 18, 2009 4:24 pm

    They used to say that rooting for the Yankees was like rooting for General Motors.

    Would they still say that today?

  8. gary norris gray May 19, 2009 4:02 pm

    would I be A Black-Native American Yankee
    love the Mets, Jets, Devils, Nets, Rangers, Knicks, and Giants too