This post was authored by Jennifer Hetu, a partner of mine at Honigman Miller Schwartz and Cohn LLP. Ms. Hetu’s practice focuses on trademark law and brand protection. She advises clients ranging from small businesses to Fortune 500 companies on a wide range of trademark matters in the U.S. and international markets. Ms. Hetu also collaborates with foreign law firms regarding worldwide trademark protection, and provides counseling regarding U.S. use and registration. Prior to joining Honigman, Ms. Hetu worked as a trademark attorney at the United States Patent and Trademark Office (USPTO).
Today, the Trademark Trial and Appeal Board issued a precedential decision granting the petition to cancel six federal trademark registrations owned by Pro Football, Inc. that include the term “Redskins.” The TTAB determined that “Redskins” was disparaging of Native Americans when used in relation with professional football services at the time the registrations issued. (Registrations that are more than five years old can only be cancelled under a disparagement claim if the registration should not have been issued in the first place.)
The TTAB rejected Pro Football’s laches defense, noting that earlier pending litigation related to the marks provided excusable delay until 2008, there was only a minimal delay in seeking cancellation since two of the petitioners did not turn 18 until 2005 (the petition to cancel was filed in August 2006), and that Pro Football did not show that there was economic prejudice due to the delay. Pro Football’s logo marks comprised solely of a depiction of a Native American (shown below) are not subject to this decision, and this decision does not affect Pro Football’s ability to use these marks:
If not appealed, or if the cancellation is affirmed on appeal, the decision to cancel means that Pro Football will lose its six federal trademark registrations that feature the word “Redskins” and the benefits conferred by federal registration (including legal presumptions of ownership, nationwide scope of rights in the marks, and the ability to use the federal registration symbol). However, the ruling does not require the team to change its name or stop using its REDSKINS marks.
The TTAB previously held that Pro Football’s marks featuring the word “Redskins” were disparaging and ordered the registrations canceled in 1999. On appeal, the U.S. District for the District of Columbia reversed the TTAB’s decision, finding that the disparagement claim was not supported by substantial evidence and that laches precluded consideration of the case. The petitioners in that case appealed the decision, and the U.S. Court of Appeals for the District of Columbia Circuit held that the District Court applied the wrong standard for evaluating laches and remanded the case. On remand, the District Court found that laches barred the claim, which was affirmed by the D.C. Circuit. The D.C. Circuit never addressed the TTAB’s finding of disparagement on the merits.
Additional coverage: Ron Coleman’s Likelihood of Confusion(R) blog