Redskins Name Dispute Reaches the Supreme Court

The fight over the appropriateness of the “Redskins” name for Washington D.C.’s NFL football franchise has reached the Supreme Court.  Philip Mause, a partner at Drinker Biddle & Reath represents a group of Native Americans who claim that they are offended by the name.  He recently filed a petition for certiorari in the case titled Susan Harjo v. Pro-Football, Inc..

The case began in 1992 when a petition to cancel the Redskins trademark was filed with the U.S. Patent and Trademark Office.  The petition to cancel was based on language in 15 U.S.C. 1052(a) that effectively prohibits the Patent and Trademark Office from registering a trademark if it:

“Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute”

Summary Judgment was granted by the United States District Court for the District of Columbia and recently the U.S. Court of Appeals for the D.C. Circuit affirmed that the claims were barred by the doctrine of laches.  The court ruled that the youngest member of the group seeking cancellation, Mateo Romero, unreasonably delayed his bringing of a cancellation petition and that his eight-year delay demonstrates a lack of diligence on his part. The Court further found that Romero’s delay has resulted in both trial prejudice and economic prejudice to Pro-Football, such that it would be inequitable to allow Romero to proceed with his cancellation petition

Mause citing  a 2001 ruling by the U.S. Court of Appeals for the 3^rd Circuit asserted that the doctrine does not apply, because the law explicitly allows cancellations of trademarks “at any time.” The opinion by now-Justice Samuel Alito, Jr. in Marshak v. Treadwell, 240 F.3d 184 (3d Cir. N.J. 2001) said trademark cancellation claims are not time-barred.

It appears that there is no consensus in the Circuits as to the availability of laches as a defense to cancellation petitions[1] so it may very well be up to the Supreme Court to iron-out this controversy.  Stay tuned…

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[1] Third Circuit’s suggests laches is not an available defense to cancellation, see Marshak v. Treadwell, 240 F.3d 184, 193-94 & n.4 (3d Cir. 2001).

Federal Circuit permits the defense of laches to a cancellation petition, see Bridgestone/Firestone Research, Inc. v. Auto. Club de L’Ouest de la France, 245 F.3d 1359, 1360-61 (Fed. Cir. 2001), see Pro-Football, Inc. v. Harjo, 415 F.3d 44, 48 (D.C. Cir. 2005).

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