Earlier today, six trademark registrations for the Washington Redskins football team were cancelled on the basis that they are disparaging. In the long-awaited decision of Blackhorse v. Pro-Football, Inc., the Trademark Trial and Appeal Board (“TTAB”) found that the petitioners had shown “by a preponderance of the evidence that a substantial composite of Native Americans found the term REDSKINS to be disparaging in connection with [the football team’s] services” during the time period when registration was sought.
This is the second action before the TTAB that has challenged the validity of the REDSKINS trademarks. In the first, Harjo v. Pro-Football, Inc., the TTAB also found the marks to be disparaging, as well as scandalous. However, the U.S. District Court for the District of Columbia reversed that decision on the basis that the petitioners’ claims were barred by the doctrine of laches (i.e., because the petitioners waited too long to file their complaint). The U.S. Court of Appeals for the District of Columbia then affirmed that decision. Ultimately, the Supreme Court denied certiorari in Harjo, and the Blackhorse action was permitted to move forward before the TTAB.
The Blackhorse petitioners sought to avoid the laches issue that defeated their cause in Harjo. To do so, they only included as petitioners Native Americans who had recently reached the age of majority as of the time their complaint was filed. That is because the period of delay relevant to a laches claim only begins as of the time an individual reaches the age of majority.
However, in Blackhorse, the TTAB found that “laches does not apply to a disparagement claim where the disparagement pertains to a group of which the individual plaintiff or plaintiffs simply comprise one or more members.” It noted that to bar a claim of disparagement on the basis of laches would “contemplate the retention on the register of a mark determined by the Board to be a racial slur, in blatant violation of the Trademark Act’s prohibition against registration of such matter.” Additionally, the TTAB found that the defense of laches does not apply in this action because a broader public interest is at stake, i.e., the “overriding public interest in removing from the register marks that are disparaging to a segment of the population beyond the individual petitioners.”
Gibbons is monitoring this proceeding to determine whether Pro-Football will appeal the TTAB’s decision.