Legal News

It?s Still ?Hail to the Redskins? -- At Least for Now

By Brian Harris

Football fans, beware.  There could be a shakeup coming in the NFC East.  Thanks to a recent ruling from the U.S. Court of Appeals for the D.C. Circuit, the Washington Redskins can keep their trademarks in the name ?Redskins,? but the ruling is only a temporary reprieve for the team.  The court?s ruling is a procedural one, and it leaves open the possibility that the Redskins might lose federal protection for their marks in a second case that is now pending. 

The issue in the cases is whether the name ?Redskins? disparages Native Americans.  If so, then it is not subject to registration as a trademark under the Lanham Act.  On May 15, the D.C. Circuit affirmed a district court ruling that entered judgment in favor of the Redskins in an action challenging six registered trademarks.  The district court held that the defense of laches barred the plaintiffs? action because the plaintiffs delayed in bringing suit.  On appeal, the plaintiffs? challenged the district court?s finding that the Redskins had suffered prejudice.  The D.C. Circuit concluded, however, that the district court was justified in finding both litigation prejudice due to lost information about contemporaneous evidence of public attitudes toward the mark and economic prejudice due to the fact that the Redskins invested in and developed their marks while no litigation was pending. 

However, the D.C. Circuit?s decision will not be the end of this dispute.  In an earlier opinion in the case, the D.C. Circuit laid out a roadmap to avoid the laches defense.  In that opinion, the court explained that a laches defense must focus only delay in the period from a plaintiff?s 18th birthday (when he first has the right to sue) until the day he brings suit.  Delay prior to a plaintiff?s 18th birthday is not relevant.  Thus, to avoid the laches defense, the plaintiffs need only to find a plaintiff who is about to turn or has recently turned 18. 

Not surprisingly, they have already done so.  Two years ago, another suit was filed by various plaintiffs, ranging in age from 18 to 24.  That case had been on hold while the first case was appealed.   Notably, in the first case, the Trademark Trial Appeal Board dismissed the laches defense and ruled on the merits that the Redskins? trademarks were disparaging.  Accordingly, it ordered them cancelled.  That decision, of course, is not precedential in light of the D.C. Circuit?s decision.  But it might be persuasive and, in any event, it suggests that a court might find compelling the arguments in favor of cancelling the trademarks. 

If that were to happen, the Redskins would face a difficult decision:  continue with the trademarks that they have developed and in which they have invested or adopt a new team name and new marks that will allow them the full protection available under federal law.  Depending on that decision, the NFC East could have a ?new? divisional rival in the near future. 

Joshua D. Wolson is a member of the litigation department at Dilworth Paxson.  He can be reached at 215-575-7295 or jwolson@dilworthlaw.com.  This posting is for informational purposes only and should not be construed or interpreted as legal advice on any matter.

Full post as published by The Legal Intelligencer Blog on May 22, 2009 (boomark / email).