By Pedro Celis
In Blackhorse v. Pro Football, Inc., a group of Native American plaintiffs is challenging several of the Washington Redskins’ trademarks before the Trademark Trial and Appeal Board (TTAB). They claim that the Redskins trademarks “disparage” Native Americans and “bring them into contempt, or disrepute” in violation of Section 2(a) of the Lanham Act. Public pressure on the Redskins to change their name has increased, and most recently, Washington D.C.’s mayor and congressional delegate urged the Redskins to adopt a less offensive name. Despite the public pressure, Redskins’ owner Dan Snyder has stated that he has no plans to change the team’s name, but this trademark litigation could give him a financial incentive to change his mind. The TTAB heard the case in March, and will likely issue a ruling in a few months.
This is the second time Native American plaintiffs have tried to invalidate the Redskins’ trademark. In Harjo v. Pro-Football, Inc., the TTAB ruled in favor of the plaintiffs, holding that the Redskins’ trademarks violated 2(a) of the Lanham Act, which prohibits trademarks that “disparage… persons, living or dead… or bring them into contempt, or disrepute.” However, the case was reversed without reaching the merits, as the District Court ruled that the doctrine of laches barred the claim because the plaintiffs had waited too long to challenge the trademarks, which were registered in 1967. The case reached the D.C. Circuit, which remanded after holding that the time used to determine whether a claim is barred by laches does not begin until plaintiffs are 18 years old and legally able to bring a suit. On remand, the District Court again barred the claim, holding that the delay between the filing of the suit and the youngest plaintiff reaching the age of majority was too prejudicial. The D.C. Circuit affirmed, and the Supreme Court denied cert. without comment.
Unlike Harjo v. Pro-Football, Inc., the current case will likely survive the laches doctrine and be decided on the merits. Because of the Court of Appeals decision in Harjo, the court will measure the plaintiffs’ delay in in challenging the trademark from time they turned 18. The plaintiffs here in Blackhorse were between the ages of 18 and 24 when they filed, meaning the youngest plaintiff delayed only a few months. Unless the court rules that this delay unreasonably prejudiced the Redskins, the doctrine of laches will not apply and the court will likely decide on the merits of the case. The plaintiffs are optimistic they will prevail on the merits because the TTAB previously ruled in their favor on this issue.
If the plaintiffs prevail, the Redskins would not necessarily have to change their name, but they would have a large financial incentive to do so. The Redskins could continue to use their name without a valid trademark, but they would no longer be able to enforce their trademark against third parties. Third parties would be free to sell Redskins merchandise, which would potentially cause the franchise to lose millions of dollars in revenue. In the Harjo litigation, the Redskins’ counsel stated that losing exclusive rights to the name would result in “every imaginable loss you can think of” so it’s hard to see the Redskins continuing to use the name without a valid trademark if they lose this case.