Back in 1992, a group of Native American activists challenged the validity of the Washington Redskins trademarks on the ground the trademarks were impermissibly disparaging towards their ethnic group. After scoring early victories before the Patent and Trademark Office and the Trademark Trial and Appeal Board (TTAB), resulting in a temporary cancellation of the marks (which deprived Pro Football of the ability to go after infringers), the U.S. District Court for the District of Columbia sided with the Washington Redskins about six years ago. The rationale had nothing to do with whether the term “Redskins” is disparaging to Native Americans, but with the equitable defense of “laches.” The Court of Appeals reversed that ruling due to a faulty application of that defense, but the District Court again ruled in favor of Pro Football (the owner of the Redskins trademarks) last year. The matter was again appealed. This time, however, the Court of Appeals affirmed the District Court, solidifying the Redskins’ victory and the validity of the marks.
“Laches” is a doctrine which, like a statute of limitations, serves as a defense to legal proceedings when the plaintiff has waited too long before bringing the claim. It applies where there is (1) lack of diligence by the party against whom the defense is asserted; and (2) prejudice (i.e., harm) to the party asserting the defense.
The first time the question was presented to the District Court, it applied the laches defense because the TTAB proceeding was not brought until 25 years after the marks were first registered. The Court of Appeals reversed that ruling because the defense is intended to apply where there has been unjustified delay by a particular person. One of the plaintiffs was only a year old when the Redskins trademark was first registered. So on remand, the District Court focused only on whether that particular individual, Mateo Romero, delayed in asserting his rights, beginning the analysis with the date of his eighteenth birthday (the legal age of majority). From that perspective, the alleged delay was not 25 years but less than 8.
Still, the District Court found that Mr. Romero should not have waited nearly eight years before asserting that the term “Redskins” is disparaging towards Native Americans and that the delay caused prejudice to Pro Football. In particular, the court reasoned, former Redskins president Edward Bennett Williams had met with various Native American leaders at or around the time the marks were registered (which is the relevant time for determining whether a mark is disparaging towards racial or ethnic groups) to ascertain and consider their views. He passed away prior to the TTAB proceeding. Had Mr. Romero made his complaint earlier, Mr. Williams might have been available to testify regarding his knowledge of 1967 attitudes towards the Redskins name.
The second major reason for the district court’s rejection of the trademark challenge was the fact that Pro Football had stepped up its merchandising efforts in recent years, making a huge investment to protect its trademarks. Had Mr. Romero not “slumbered on his rights,” as the equity saying goes, Pro Football likely would not have made these expenditures.
The Court of Appeals, while observing that Mr. Romero’s legal position was “not without merit,” deferred to the district court’s holding, finding no abuse of discretion.
Is this the end of the saga? According to Philip J. Mause, one of the activists’ attorneys, they are still considering whether to appeal.