Supreme Court Refuses Harjo, Redskins Can Keep Trademark

By Gene Quinn
November 16, 2009

While it is not easy for a Dallas Cowboys fan like myself to write about a Redskins victory with any enthusiasm, the Washington Redskins clearly scored a bigger victory on Monday than any victory this non-playoff team will have all season long on the field. The United States Supreme Court earlier today announced that they will not accept the appeal in the Harjo case, which means that the decision of the the United States Court of Appeals for the District of Columbia will stand as the final decision in the long dispute that sought to strip the team of its trademark as a result of the term “Redskin” being offensive and not susceptible of receiving trademark protection. This non-decision by the Supreme Court will undoubtedly be reported in many popular press circles as the Supreme Court “deciding” that the Washington Redskins can keep their trademark. In fact, the Supreme Court decided nothing other than they were not going to hear the appeal. Thus, it is technically inaccurate to say the Supreme Court decided anything, as a decision to not hear a case is not precedential. Nevertheless, by not accepting the case the decision of the Appeals Court stands, and the Redskins may keep their federally registered trademark.

The ruling of the DC Circuit was handed down on Friday May, 15, 2009, in the case titled Pro Football v. Harjo. In this case 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 lawfully raised. Those familiar with the case will undoubtedly remember that just over 10 years ago, on April 2, 1999, in a highly publicized decision from the Trademark Trial and Appeals Board (TTAB) paved the way to this long, tortured and contentious dispute, which seems to have finally ended today.

The decision of the TTAB in 1999 lead to a cancellation order that canceled the contested trademarks associated with the Washington Redskins of the National Football League. 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 League, have been engaged in a battle to keep their trademarks in tact. Never was their a worry that the Washington Redskins would not be able to continue to use the name “Redskins,” rather what was at stake was whether the term “Redskins” was appropriately awarded federal trademark protection. Nothing in any court ruling would have ever barred the team from using the name, only whether they could have federal protection and rights attach.

After the 1999 ruling of the TTAB the matter proceeded to the district court. 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. Essentially, laches is an equitable remedy subject to the discretion of a court and dependent upon the particular facts of each case. Any time equity is involved the party asserting the equitable theory is asking the court to do what is right and fair, although there may not be a specific legal authority under which to act. Equitable powers are inherent in every judge and court, giving members the judiciary the ability under a defined set of circumstances to do what is proper and justified. To prove laches it is generally required that there be the presence of an unreasonable and inexcusable delay and prejudice or injury resulting from the delay.

On appeal of this 2003 district court ruling the DC Circuit explained that the legal question before the TTAB was whether the six trademarks in question, 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. 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 and none of the evidence offered by the challengers related in any way to this critical time period, but rather related to the opinions and feelings that existed many years after the mark was registered. Therefore, the plaintiffs had a major problem with this particular challenge and that challenge was the complete and total lack of evidence to support their claim on the key legal issue. Nevertheless, the DC Circuit reversed the 2003 district court ruling explaining that the district court improperly applied the law of laches. The DC Circuit pointed out 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 in its May 2009 ruling 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.

After the May 2009 decision of the DC Circuit I wrote that it seemed this saga had come to an end, although an appeal was likely to be made to the US Supreme Court. I opined:

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.

It is impossible to know why the Supreme Court did not decide to hear this case, that information is known only to the Justices on the Supreme Court. What is known, however, is that there were not 4 Justices who wanted to hear the case, which is why it was not accepted by the Supreme Court. I do still continue to believe that the right legal decision has been reached here in this case. There simply was no evidence to support the challenge and the TTAB should never have ruled as they did. While we can argue over whether the term “Redskin” is disparaging, and it almost certainly is disparaging, in order for the plaintiffs to prevail the law would have had to be ignored, and evidence from years after the fact would have needed to be relied upon in exchange for evidence in existence at the relevant time, namely the time or registration. Altering the law and in particular rules of evidence to come to a politically correct decision is not appropriate on any level. You simply cannot change the law to come out with the desired result. The law needs to be constant and predictable, and those who rely on it to order their affairs should not be negatively affected by such reliance.

Clearly, had the Supreme Court heard this case they would have ultimately ruled against the Native American plaintiffs either on the ground of laches or due to the lack of evidence to support their claim. Of course, that doesn’t mean that it is appropriate to continue to use a disparaging name either. I personally think the NCAA has gone overboard in the Native American mascot and name area. There are plenty of names out there that honor the tradition of Native Americans and many tribes that enjoy the affiliation. Blanket rules such as those of the NCAA are rather ridiculous, but then again so is the pejorative use of names that offend. So I am conflicted by this case. Legally the right decision has been reached, but how can one rejoice when there is government sanctioned protection for a racial slur? While your mileage may vary, I personally think there is a big difference between the name “Braves” and “Chiefs” and other names that exalt Native Americans and the use of a pejorative term like “Redskins.”

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.

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Discuss this

There are currently 8 Comments comments.

  1. EG November 16, 2009 5:05 pm

    Gene,

    Sorry, I am and will forever remain a “die-hard” Redskin fan (and it’s certainly been “painful” to be one this year). And this suit was rightly kicked out on the ground of laches.

  2. libhomo November 17, 2009 7:40 am

    I’ve been calling them the Whiteyskins for years. What goes around should come around.