Supreme Court Denies Certiorari in Trademark Challenge to Washington Redskins Name

On November 16, 2009, the Supreme Court denied a petition for certiorari in the case of Harjo v. Pro-Football, Inc. The underlying action was brought by Native American activists (“Harjo”) who challenged the Washington Redskins’ right to register its team name and logos on the basis that they are scandalous, disparaging and may bring Native Americans into disrepute or contempt. Marks that do any of those things are not entitled to registration, as provided by Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a). The sole issue submitted for the Supreme Court’s review, however, was whether the activists’ claim was barred by laches, as found by the U.S. Court of Appeals for the D.C. Circuit.

Under the Lanham Act, the grounds on which a trademark registration may be cancelled become limited once the registration has existed for five years. For example, after that point, no challenge may be brought on the basis that the mark is merely descriptive. However, the Lanham Act specifies that certain claims may be brought “at any time,” including that a mark is disparaging, that it has been abandoned, or has become generic. 15 U.S.C. § 1064(3).

The issue submitted for the Supreme Court’s review arose out of a Trademark Trial and Appeal Board (“TTAB”) proceeding in which Harjo sought cancellation of a number of the Redskins’ registrations on the basis that the marks are disparaging and scandalous. On April 2, 1999, the TTAB ruled for Harjo on the issue of disparagement and ordered that the registrations be cancelled. Harjo, 50 U.S.P.Q.2d 1705 (TTAB 1999). The Washington Redskins then appealed that decision to the U.S. District Court for the District of Columbia, and that court held that the activists’ claim was barred under the doctrine of laches, i.e. that the activists had waited too long to bring the claim. Pro-Football v. Harjo, 284 F. Supp.2d 96, (D.D.C. 2003). The activists then appealed that decision. The gist of their argument was that laches may not bar a claim that the law explicitly states may be brought “at any time.” The U.S. Court of Appeals for the District of Columbia did not agree, and it affirmed the lower court’s decision on May 15, 2009. Pro-Football, 565 F.3d 880 (D.C. Cir. 2009). The activists then petitioned the Supreme Court for certiorari.

That the Supreme Court has refused to hear this action does not mean that the Redskins’ registrations will stand indefinitely. Another challenge, Blackhorse v. Pro-Football, Inc., is pending before the TTAB, brought by a group of Native Americans who had only recently reached the age of majority (i.e. the age at which the laches clock starts ticking for individuals) at the time their complaint was filed. That proceeding was suspended pending outcome of the Harjo action, and is expected to move forward in view of the Supreme Court’s decision to deny certiorari. So, while the Washington Redskins may have prevailed in Harjo, it remains to be seen how the challenge to the nature of its marks will be resolved.

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