Cancellation of Redskins Trademark - Overview by Trademark Trial and Appeal Board Lyrics
Hearing: Mailed:
March 7, 2013 June 18, 2014
UNITED STATES PATENT AND TRADEMARK OFFICETrademark Trial and Appeal BoardAmanda Blackhorse, Marcus Briggs-Cloud, Philip Gover, Jillian Pappan, and Courtney Tsotigh
v.
Pro-Football, Inc.Cancellation No. 92046185Jesse A. Witten, Jeffrey J. Lopez, John D. V. Ferman, Lee Roach and Stephen Wallace of Drinker, Biddle & Reath LLP for Amanda Blackhorse, Marcus Briggs, Philip Gover, Jillian Pappan, and Courtney Tsotigh.
Robert L. Raskopf, Claudia T. Bogdanos and Todd Anten of Quinn Emanuel Urquhart & Sullivan, LLP for Pro-Football, Inc.Before Kuhlke, Cataldo and Bergsman, Administrative Trademark Judges.
Opinion by Kuhlke, Administrative Trademark Judge:OVERVIEWPetitioners, five Native Americans, have brought this cancellation proceeding pursuant to Section 14 of the Trademark Act of 1946, 15 U.S.C. § 1064(c). They seek to cancel respondent’s registrations issued between 1967 and 1990 for trademarks consisting in whole or in part of the term REDSKINS for professional football-related services on the ground that the registrations were obtained contrary to Section 2(a), 15 U.S.C. § 1052(a), which prohibits registration of marks that may disparage persons or bring them into contempt or disrepute. In its answer, defendant, Pro-Football, Inc., asserted various affirmative defenses including laches.
As explained below, we decide, based on the evidence properly before us, that these registrations must be cancelled because they were disparaging to Native Americans at the respective times they were registered, in violation of Section 2(a) of the Trademark Act of 1946, 15 U.S.C. § 1052(a). This decision concerns only the statutory right to registration under Section 2(a). We lack statutory authority to issue rulings concerning the right to use trademarks. See, e.g., In re Franklin Press, Inc., 597 F.2d 270, 201 USPQ 662, 664 (CCPA 1979).
The Registrations at Issue
The following six registrations (hereinafter referred to collectively as the REDSKINS marks) are the subject of this cancellation proceeding:
1. Registration No. 0836122 for the mark THE REDSKINS (stylized), shown below, for “entertainment services – namely, football exhibitions rendered in stadia and through the media of radio and television broadcasts,” in Class 41;2. Registration No. 0978824 for the mark WASHINGTON REDSKINS, in typed drawing form, for “entertainment services – namely, presentations of professional football contests,” in Class 41;
3. Registration No. 0986668 for the mark WASHINGTON REDSKINS
and design, shown below, for “entertainment services – namely, presentations of professional football contests,” in Class 41;4. Registration No. 0987127 for the mark THE REDSKINS and design,
shown below, for “entertainment services – namely, presentations of professional
football contests,” in Class 41;5. Registration No. 1085092 for the mark REDSKINS, in typed drawing form, for “entertainment services – namely, presentations of professional football contests,” in Class 41; and
6. Registration No. 1606810 for the mark REDSKINETTES, in typed drawing form, for “entertainment services, namely, cheerleaders who perform dance routines at professional football games and exhibitions and other personal appearances,” in Class 41.
Prior Litigation
This is the second time the Board has faced a petition to cancel these registrations. On September 10, 1992, Suzan Harjo and six other Native Americans filed a petition to cancel the above-noted registrations on the ground the marks consist of or comprise matter which disparages Native American persons, and brings them into contempt, ridicule, and disrepute; and the marks consist of or comprise scandalous matter under Section 2(a) of the Trademark Act. Respondent denied the salient allegations in the petition for cancellation and asserted eleven affirmative defenses, including laches. The Board struck all of respondent’s affirmative defenses. Harjo v. Pro Football, Inc., 30 USPQ2d 1828, 1833 (TTAB 1994); and 50 USPQ2d 1705, 1710 (TTAB 1999). After seven years of litigation, involving multiple discovery and pretrial motions, the Board issued its decision on the merits, held that respondent’s REDSKINS marks were disparaging to Native Americans when registered and ordered the registrations canceled. Harjo v. Pro-Football, Inc., 50 USPQ2d at 1743.
Respondent appealed the decision to the United States District Court for the District of Columbia. On motion for summary judgment, the District Court reversed the Board for two reasons:The TTAB’s finding of disparagement is not supported by
substantial evidence and must be reversed. The decision
should also be reversed because the doctrine of laches
precludes consideration of the case.Pro-Football, Inc. v. Harjo, 284 F. Supp. 2d 96, 68 USPQ2d 1225, 1263 (D.D.C. 2003).
The petitioners appealed the rulings that the claim of disparagement was not supported by substantial evidence and that the defense of laches may be asserted against a disparagement claim. The United States Court of Appeals for the District of Columbia Circuit held that the District Court applied the wrong standard in evaluating laches as to at least one of the petitioners because “laches runs only from the time a party has reached his majority” and, while retaining jurisdiction over the case, remanded the record to the District Court to evaluate whether laches barred petitioner Mateo Romero’s claim. Pro-Football, Inc. v. Harjo, 415 F.3d 44, 75 USPQ2d 1525, 1528 (D.C. Cir. 2005). The D.C. Circuit did not address the issue of whether substantial evidence supported the Board’s finding of disparagement. On remand, the District Court found that laches did bar the claim:[D]efendant Romero unreasonably delayed his bringing of
a cancellation proceeding and … his eight-year delay
demonstrates a lack of diligence on his part. The court
further finds that Defendant Romero’s delay has resulted
in both trial prejudice and economic prejudice to
Pro-Football, such that it would be inequitable to allow
Defendant Romero to proceed with his cancellation
petition.Pro-Football, Inc. v. Harjo, 567 F. Supp.2d 46, 87 USPQ2d 1891, 1903 (D.D.C. 2008).
Petitioners appealed. The D.C. Circuit affirmed the decision of the lower court on the issue of laches and stated that the petitioners “argue only that the District Court improperly assessed evidence of prejudice in applying laches to the facts at issue” and limited its decision “to that question.” Pro-Football, Inc. v. Harjo, 565 F.3d 880, 90 USPQ2d 1593 (D.C. Cir. 2009). Thus, the D.C. Circuit resolved the case solely on the issue of laches, never addressing the Board’s finding of disparagement on the merits.
The Current Litigation
While Harjo was pending, six new individual petitioners filed a petition to cancel the same registrations for the REDSKINS marks. Proceedings were suspended pending the disposition of the Harjo civil action and resumed in March 2010.
In March 2011, the parties stipulated, with certain exceptions, that the entire Harjo record may be submitted into evidence through a Notice of Reliance. The stipulation provides in pertinent part that:Except as provided below, all evidence submitted with a Notice of Reliance, as well as all deposition transcripts and exhibits thereto submitted by any party, in Harjo … shall be admissible in this proceeding unless the Trademark Trial and Appeal Board ruled in Harjo that the evidence was not admissible, in which case all arguments as to admissibility are preserved.The Parties do not stipulate that any particular piece of evidence described in paragraph 1 is relevant to any issue in this proceeding, and therefore may object to evidence described in paragraph 1 on grounds that it is not relevant.As stipulated, the parties only reserved the right to make objections based on relevance to evidence earlier admitted into the Harjo record and admitted into this case under paragraph 1. All other possible objections, including those based on hearsay, were waived. This was confirmed from both parties at the oral hearing.
In view of the intense pretrial litigation engaged in by the parties in Harjo and because the record created in that case was voluminous, the Board ordered the parties to appear at a pretrial conference.In order to litigate this proceeding as efficiently as
possible, a pretrial conference will help the Board and the
parties focus the evidence and arguments at trial.After briefing by the parties, the Board issued another order setting forth the applicable law relating to the issues of disparagement and laches involved herein.
In regard to the former issue, the Board noted that the test for disparagement comprises a two-step inquiry:What is the meaning of the matter in question, as it appears in the marks and as those marks are used in connection with the goods and services identified in the registrations?Is the meaning of the marks one that may disparage Native Americans?Pro-Football, Inc. v. Harjo, 68 USPQ2d at 1248; Harjo v. Pro-Football, Inc., 50 USPQ2d at 1740-41. See also, In re Geller, __ F.3d ___, 110 USPQ2d 1867, 1869 (Fed. Cir. 2014). Both questions are to be answered as of the various dates of registration of the involved marks. Pro-Football, Inc. v. Harjo, 68 USPQ2d at 1248; Harjo v. Pro-Football, Inc., 50 USPQ2d at 1735, 1741. In deciding the second question, whether the term “redskins” may disparage Native Americans, we look not to the American public as a whole, but to the views of the referenced group (i.e., Native Americans). Pro-Football, Inc. v. Harjo, 68 USPQ2d at 1247; Harjo v. Pro-Football, Inc., 50 USPQ2d at 1739.
The views of the referenced group are “reasonably determined by the views of a substantial composite thereof.” Pro-Football, Inc. v. Harjo, 68 USPQ2d at 1247 (quoting Harjo v. Pro-Football, Inc., 50 USPQ2d at 1739). A “substantial composite” of the referenced group is not necessarily a majority of the referenced group. In re Heeb Media LLC, 89 USPQ2d 1071, 1074 (TTAB 2008); In re Squaw Valley Dev. Co., 80 USPQ2d 1264, 1279 n.12; cf. Ritchie v. Simpson, 179 F.3d 1091, 50 USPQ2d 1023, 1024 (Fed. Cir. 1999) (“Whether a mark comprises immoral and scandalous matter is to be ascertained in the context of contemporary attitudes, and the relevant viewpoint is not necessarily that of a majority of the general public, but of a ‘substantial composite.’”) (quoting In re Mavety Media Group Ltd. , 33 F.3d 1367, 31 USPQ2d 1923, 1925-26 (Fed. Cir. 1994)). What comprises a “substantial composite” of the referenced group is a fact to be determined at trial. In making this determination, “we are charged with taking into account the views of the entire referenced group who may encounter [respondent’s services] in any ordinary course of trade for the identified goods and services.” Heeb Media, 89 USPQ2d at 1075. Finally, any cancellation of a registration should be granted only with “due caution” and “after a most careful study of all the facts.” Rockwood Chocolate Co. v. Hoffman Candy Co. , 372 F.2d 552, 152 USPQ 599, 601 (CCPA 1967) (internal citations omitted).
March 7, 2013 June 18, 2014
UNITED STATES PATENT AND TRADEMARK OFFICETrademark Trial and Appeal BoardAmanda Blackhorse, Marcus Briggs-Cloud, Philip Gover, Jillian Pappan, and Courtney Tsotigh
v.
Pro-Football, Inc.Cancellation No. 92046185Jesse A. Witten, Jeffrey J. Lopez, John D. V. Ferman, Lee Roach and Stephen Wallace of Drinker, Biddle & Reath LLP for Amanda Blackhorse, Marcus Briggs, Philip Gover, Jillian Pappan, and Courtney Tsotigh.
Robert L. Raskopf, Claudia T. Bogdanos and Todd Anten of Quinn Emanuel Urquhart & Sullivan, LLP for Pro-Football, Inc.Before Kuhlke, Cataldo and Bergsman, Administrative Trademark Judges.
Opinion by Kuhlke, Administrative Trademark Judge:OVERVIEWPetitioners, five Native Americans, have brought this cancellation proceeding pursuant to Section 14 of the Trademark Act of 1946, 15 U.S.C. § 1064(c). They seek to cancel respondent’s registrations issued between 1967 and 1990 for trademarks consisting in whole or in part of the term REDSKINS for professional football-related services on the ground that the registrations were obtained contrary to Section 2(a), 15 U.S.C. § 1052(a), which prohibits registration of marks that may disparage persons or bring them into contempt or disrepute. In its answer, defendant, Pro-Football, Inc., asserted various affirmative defenses including laches.
As explained below, we decide, based on the evidence properly before us, that these registrations must be cancelled because they were disparaging to Native Americans at the respective times they were registered, in violation of Section 2(a) of the Trademark Act of 1946, 15 U.S.C. § 1052(a). This decision concerns only the statutory right to registration under Section 2(a). We lack statutory authority to issue rulings concerning the right to use trademarks. See, e.g., In re Franklin Press, Inc., 597 F.2d 270, 201 USPQ 662, 664 (CCPA 1979).
The Registrations at Issue
The following six registrations (hereinafter referred to collectively as the REDSKINS marks) are the subject of this cancellation proceeding:
1. Registration No. 0836122 for the mark THE REDSKINS (stylized), shown below, for “entertainment services – namely, football exhibitions rendered in stadia and through the media of radio and television broadcasts,” in Class 41;2. Registration No. 0978824 for the mark WASHINGTON REDSKINS, in typed drawing form, for “entertainment services – namely, presentations of professional football contests,” in Class 41;
3. Registration No. 0986668 for the mark WASHINGTON REDSKINS
and design, shown below, for “entertainment services – namely, presentations of professional football contests,” in Class 41;4. Registration No. 0987127 for the mark THE REDSKINS and design,
shown below, for “entertainment services – namely, presentations of professional
football contests,” in Class 41;5. Registration No. 1085092 for the mark REDSKINS, in typed drawing form, for “entertainment services – namely, presentations of professional football contests,” in Class 41; and
6. Registration No. 1606810 for the mark REDSKINETTES, in typed drawing form, for “entertainment services, namely, cheerleaders who perform dance routines at professional football games and exhibitions and other personal appearances,” in Class 41.
Prior Litigation
This is the second time the Board has faced a petition to cancel these registrations. On September 10, 1992, Suzan Harjo and six other Native Americans filed a petition to cancel the above-noted registrations on the ground the marks consist of or comprise matter which disparages Native American persons, and brings them into contempt, ridicule, and disrepute; and the marks consist of or comprise scandalous matter under Section 2(a) of the Trademark Act. Respondent denied the salient allegations in the petition for cancellation and asserted eleven affirmative defenses, including laches. The Board struck all of respondent’s affirmative defenses. Harjo v. Pro Football, Inc., 30 USPQ2d 1828, 1833 (TTAB 1994); and 50 USPQ2d 1705, 1710 (TTAB 1999). After seven years of litigation, involving multiple discovery and pretrial motions, the Board issued its decision on the merits, held that respondent’s REDSKINS marks were disparaging to Native Americans when registered and ordered the registrations canceled. Harjo v. Pro-Football, Inc., 50 USPQ2d at 1743.
Respondent appealed the decision to the United States District Court for the District of Columbia. On motion for summary judgment, the District Court reversed the Board for two reasons:The TTAB’s finding of disparagement is not supported by
substantial evidence and must be reversed. The decision
should also be reversed because the doctrine of laches
precludes consideration of the case.Pro-Football, Inc. v. Harjo, 284 F. Supp. 2d 96, 68 USPQ2d 1225, 1263 (D.D.C. 2003).
The petitioners appealed the rulings that the claim of disparagement was not supported by substantial evidence and that the defense of laches may be asserted against a disparagement claim. The United States Court of Appeals for the District of Columbia Circuit held that the District Court applied the wrong standard in evaluating laches as to at least one of the petitioners because “laches runs only from the time a party has reached his majority” and, while retaining jurisdiction over the case, remanded the record to the District Court to evaluate whether laches barred petitioner Mateo Romero’s claim. Pro-Football, Inc. v. Harjo, 415 F.3d 44, 75 USPQ2d 1525, 1528 (D.C. Cir. 2005). The D.C. Circuit did not address the issue of whether substantial evidence supported the Board’s finding of disparagement. On remand, the District Court found that laches did bar the claim:[D]efendant Romero unreasonably delayed his bringing of
a cancellation proceeding and … his eight-year delay
demonstrates a lack of diligence on his part. The court
further finds that Defendant Romero’s delay has resulted
in both trial prejudice and economic prejudice to
Pro-Football, such that it would be inequitable to allow
Defendant Romero to proceed with his cancellation
petition.Pro-Football, Inc. v. Harjo, 567 F. Supp.2d 46, 87 USPQ2d 1891, 1903 (D.D.C. 2008).
Petitioners appealed. The D.C. Circuit affirmed the decision of the lower court on the issue of laches and stated that the petitioners “argue only that the District Court improperly assessed evidence of prejudice in applying laches to the facts at issue” and limited its decision “to that question.” Pro-Football, Inc. v. Harjo, 565 F.3d 880, 90 USPQ2d 1593 (D.C. Cir. 2009). Thus, the D.C. Circuit resolved the case solely on the issue of laches, never addressing the Board’s finding of disparagement on the merits.
The Current Litigation
While Harjo was pending, six new individual petitioners filed a petition to cancel the same registrations for the REDSKINS marks. Proceedings were suspended pending the disposition of the Harjo civil action and resumed in March 2010.
In March 2011, the parties stipulated, with certain exceptions, that the entire Harjo record may be submitted into evidence through a Notice of Reliance. The stipulation provides in pertinent part that:Except as provided below, all evidence submitted with a Notice of Reliance, as well as all deposition transcripts and exhibits thereto submitted by any party, in Harjo … shall be admissible in this proceeding unless the Trademark Trial and Appeal Board ruled in Harjo that the evidence was not admissible, in which case all arguments as to admissibility are preserved.The Parties do not stipulate that any particular piece of evidence described in paragraph 1 is relevant to any issue in this proceeding, and therefore may object to evidence described in paragraph 1 on grounds that it is not relevant.As stipulated, the parties only reserved the right to make objections based on relevance to evidence earlier admitted into the Harjo record and admitted into this case under paragraph 1. All other possible objections, including those based on hearsay, were waived. This was confirmed from both parties at the oral hearing.
In view of the intense pretrial litigation engaged in by the parties in Harjo and because the record created in that case was voluminous, the Board ordered the parties to appear at a pretrial conference.In order to litigate this proceeding as efficiently as
possible, a pretrial conference will help the Board and the
parties focus the evidence and arguments at trial.After briefing by the parties, the Board issued another order setting forth the applicable law relating to the issues of disparagement and laches involved herein.
In regard to the former issue, the Board noted that the test for disparagement comprises a two-step inquiry:What is the meaning of the matter in question, as it appears in the marks and as those marks are used in connection with the goods and services identified in the registrations?Is the meaning of the marks one that may disparage Native Americans?Pro-Football, Inc. v. Harjo, 68 USPQ2d at 1248; Harjo v. Pro-Football, Inc., 50 USPQ2d at 1740-41. See also, In re Geller, __ F.3d ___, 110 USPQ2d 1867, 1869 (Fed. Cir. 2014). Both questions are to be answered as of the various dates of registration of the involved marks. Pro-Football, Inc. v. Harjo, 68 USPQ2d at 1248; Harjo v. Pro-Football, Inc., 50 USPQ2d at 1735, 1741. In deciding the second question, whether the term “redskins” may disparage Native Americans, we look not to the American public as a whole, but to the views of the referenced group (i.e., Native Americans). Pro-Football, Inc. v. Harjo, 68 USPQ2d at 1247; Harjo v. Pro-Football, Inc., 50 USPQ2d at 1739.
The views of the referenced group are “reasonably determined by the views of a substantial composite thereof.” Pro-Football, Inc. v. Harjo, 68 USPQ2d at 1247 (quoting Harjo v. Pro-Football, Inc., 50 USPQ2d at 1739). A “substantial composite” of the referenced group is not necessarily a majority of the referenced group. In re Heeb Media LLC, 89 USPQ2d 1071, 1074 (TTAB 2008); In re Squaw Valley Dev. Co., 80 USPQ2d 1264, 1279 n.12; cf. Ritchie v. Simpson, 179 F.3d 1091, 50 USPQ2d 1023, 1024 (Fed. Cir. 1999) (“Whether a mark comprises immoral and scandalous matter is to be ascertained in the context of contemporary attitudes, and the relevant viewpoint is not necessarily that of a majority of the general public, but of a ‘substantial composite.’”) (quoting In re Mavety Media Group Ltd. , 33 F.3d 1367, 31 USPQ2d 1923, 1925-26 (Fed. Cir. 1994)). What comprises a “substantial composite” of the referenced group is a fact to be determined at trial. In making this determination, “we are charged with taking into account the views of the entire referenced group who may encounter [respondent’s services] in any ordinary course of trade for the identified goods and services.” Heeb Media, 89 USPQ2d at 1075. Finally, any cancellation of a registration should be granted only with “due caution” and “after a most careful study of all the facts.” Rockwood Chocolate Co. v. Hoffman Candy Co. , 372 F.2d 552, 152 USPQ 599, 601 (CCPA 1967) (internal citations omitted).