Pro-Football, Inc. v. Harjo

• Citation: 415 F.3d 44
• Decision Date: 15 July 2005
• Docket Number: No. 03-7162.,03-7162.
• Parties: PRO-FOOTBALL, INC., Appellee v. Suzan S. HARJO, et al., Appellants
• Court: United States Courts of Appeals. United States Court of Appeals (District of Columbia)

415 F.3d 44

PRO-FOOTBALL, INC., Appellee v. Suzan S. HARJO, et al., Appellants

No. 03-7162.

United States Court of Appeals, District of Columbia Circuit.

Argued April 8, 2005.

Decided July 15, 2005.

Appeal from the United States District Court (USDC) for the District of Columbia (No. 99cv01385).

Philip J. Mause argued the cause for appellants. With him on the briefs was Norm D. St. Landau.

Thomas C. Morrison argued the cause for amici curiae National Congress of American Indians, et al. in support of appellants. With him on the brief was Walter Echo-Hawk.

Adam L. Barea and Robert R. Vieth were on the brief for amicus curiae Inter-Faith Conference of Metropolitan Washington in support of appellants.

Robert L. Raskopf argued the cause for appellee. With him on the brief were Marc E. Ackerman, Carolyn B. Lamm, and Francis A. Vasquez, Jr.

Before: SENTELLE, RANDOLPH, and TATEL, Circuit Judges.

Opinion for the Court filed PER CURIAM.

PER CURIAM.

In 1992, seven Native Americans petitioned the Trademark Trial and Appeal Board ("TTAB") to cancel the registrations of six trademarks used by the Washington Redskins football team. After the TTAB granted their petition, the team's owner, Pro-Football, Inc., brought suit seeking reversal of the TTAB's decision. The district court granted summary judgment to Pro-Football on two alternate grounds, holding that the TTAB should have found the Native Americans' petition barred by laches and that in any event the TTAB's cancellation decision was unsupported by substantial evidence. The Native Americans now appeal. Because we find that the district court applied the wrong standard in evaluating laches as to at least one of the Native Americans, we remand the record for the district court to revisit this issue.

I.

The Lanham Trademark Act provides protection to trademark owners. See generally 15 U.S.C. §§ 1051-1127, 1141-1141n. To take advantage of many of its provisions, trademark owners must register their marks with the Patent and Trademark Office. Not all marks, however, can be registered. Under 15 U.S.C. § 1052, the PTO must deny registration to certain types of marks, including those which, in subsection (a)'s language, "may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute."

Another section, 15 U.S.C. § 1064(3), provides that if a mark is registered in violation of section 1052(a), "any person who believes that he is or will be damaged by the registration" may file a petition "[a]t any time" with the PTO to cancel the registration. This triggers a proceeding before the TTAB, see 15 U.S.C. § 1067, which takes evidence and determines whether to cancel the mark. Yet another provision, 15 U.S.C. § 1069, states that "[i]n all ... proceedings equitable principles of laches, estoppel, and acquiescence, where applicable may be considered and applied."

This case concerns the registrations of six trademarks owned by Pro-Football, the corporate owner of the Washington Redskins football team, that include the word "Redskin." The first—"The Redskins" written in a stylized script—was registered in 1967, three more in 1974, another in 1978, and the sixth—the word "Redskinettes"—in 1990. Pro-Football uses all these marks in connection with goods and services related to its football team, including merchandise and entertainment services.

In 1992, seven Native Americans petitioned for cancellation of the registrations, claiming that the marks had disparaged Native Americans at the times of registration and had thus been registered in violation of section 1052(a). Pro-Football defended its marks, arguing among other things that laches barred the Native Americans' claim. Rejecting this argument, the TTAB found laches inapplicable due to the "broader interest—an interest beyond the personal interest being asserted by the present petitioners—in preventing a party from receiving the benefits of registration where a trial might show that respondent's marks hold a substantial segment of the population up to public ridicule." Harjo v. Pro Football Inc., 30 U.S.P.Q.2d 1828, 1831 (TTAB 1994).

On the merits, the parties presented the TTAB with a variety of evidence, including (1) dictionary entries for "redskin," some of which contained usage labels identifying the term as offensive and others of which did not; (2) book and media excerpts from the late nineteenth century through the 1940s that used the term "redskin" and portrayed Native Americans in a pejorative manner; (3) a study that found derogatory use of the term in Western-genre films from before 1980; (4) petitioners' testimony about their views of the term; (5) results from a 1996 survey of the general population and Native Americans that asked whether various terms, including "redskin," were offensive; (6) newspaper articles and game program guides from the 1940s onward using Native American imagery in connection with Washington's football team; and (7) testimony and documents relating to Native American protests, including one in 1972, aimed specifically at the team. In a lengthy opinion, the TTAB concluded that a preponderance of the evidence showed the term "redskin" as used by Washington's football team had disparaged Native Americans from at least 1967 onward. Harjo v. Pro-Football Inc., 50 U.S.P.Q.2d 1705 (TTAB 1999). The TTAB cancelled the registrations. Cancellation did not require Pro-Football to stop using the marks, but it did limit the team's ability to go after infringers under the Lanham Act.

Pursuant to 15 U.S.C. § 1071(b), Pro-Football filed suit in the U.S. District Court for the District of Columbia, seeking reinstatement of its registrations on the grounds that: (1) laches barred the Native Americans' petition; (2) the TTAB's finding of disparagement was unsupported by substantial evidence; and (3) section 1052(a) violates the First and Fifth Amendments to the U.S. Constitution both facially and as applied by the TTAB. Although in suits challenging TTAB decisions parties may introduce new evidence in the district court, see Material Supply Int'l, Inc. v. Sunmatch Indus. Co., 146 F.3d 983, 989-90 (D.C.Cir.1998), in this case the only such evidence of note related to laches. After discovery, the parties cross-moved for summary judgment. Without reaching the constitutional issues, the district court granted summary judgment to Pro-Football on the alternate grounds that laches barred the Native Americans' petition and that the TTAB's conclusion of disparagement was unsupported by substantial evidence. Pro-Football, Inc. v. Harjo, 284 F.Supp.2d 96 (D.D.C.2003). This appeal followed.

II.

An equitable doctrine, "[l]aches is founded on the notion that equity aids the vigilant and not those who slumber on their rights." NAACP v. NAACP Legal Def. & Educ. Fund, Inc., 753 F.2d 131, 137 (D.C.Cir.1985). This defense, which Pro-Football has the burden of proving, see Gull Airborne Instruments, Inc. v. Weinberger, 694 F.2d 838, 843 (D.C.Cir.1982), "requires proof of (1) lack of diligence by the party against whom the defense is asserted, and (2) prejudice to the party asserting the defense." Nat'l R.R. Passenger Corp. v. Morgan, 536 U.S. 101, 121-22, 122 S.Ct. 2061, 153 L.Ed.2d 106 (2002) (internal quotation marks omitted). In this case, the Native Americans contend both that the statute bars the defense of laches and that even were laches an available defense, Pro-Football has failed to prove it.

The Native Americans' statutory argument runs as follows: because section 1064(3) permits petitions alleging wrongful registration under section 1052(a) to be filed "[a]t any time," laches is not a valid defense in cancellation proceedings. We disagree. The words "[a]t any time" demonstrate only that the act imposes no statute of limitations for bringing petitions. Those words have nothing to do with what equitable defenses may be available during cancellation proceedings. Indeed, under the Native Americans' logic, equitable defenses would never be available as long as cancellation petitions are brought within the specified statute of limitations—"[a]t any time" for petitions alleging wrongful registration under section 1052(a) or certain other grounds, see 15 U.S.C. § 1064(3)-(5), and "[w]ithin five years" of registration for petitions brought for all other reasons, see id. § 1064(1). This would make section 1069, which explicitly permits consideration of laches and other equitable doctrines, meaningless as to cancellation petitions. For this reason, we disagree with the Third Circuit's suggestion that laches is not an available defense to cancellation petitions brought pursuant to section 1064(3), see Marshak v. Treadwell, 240 F.3d 184, 193-94 & n. 4 (3d Cir.2001). Instead, we join the Federal Circuit, see Bridgestone/Firestone Research, Inc. v. Auto. Club De L'Ouest De La France, 245 F.3d 1359, 1360-61 (Fed.Cir.2001) (permitting the defense of laches to a cancellation petition brought under section 1064(3)), and our own district court, see Pro-Football, Inc. v. Harjo, 57 U.S.P.Q.2d 1140, 1145 (D.D.C.2000), in concluding that the statute does not bar the equitable defense of laches in response to section 1064(3) cancellation petitions.

The Native Americans also offer several reasons why, in their view, the district court erred in its assessment of laches in this case. At this point, we need only consider one: their claim that the district court mistakenly started the clock for assessing laches in 1967—the time of the first mark's registration—for all seven Native Americans, even though one, Mateo Romero, was at that time only one year old.

We agree with the Native Americans that this approach runs counter to the well-established principle of equity that laches runs only from the time a party has reached his majority. The Supreme Court first embraced this principle in 1792, holding in a case dealing with...