Ironically, the phases of the Redskins
trademark dispute can be viewed as a battle
between two sides (individual Native
Americans versus Pro-Football, Inc.,
owner of the Redskins’ trademarks) over
four time periods—akin to a football game.
To understand how the contours of the
disparagement doctrine will take shape
going forward, an examination of the
Redskins trademark decision is required.
To do that, we go back to 1992, when
seven Native Americans filed a petition
against Pro-Football in the TTAB to cancel six “Redskins” trademark registrations
on the grounds of disparagement.
After seven years of litigation, the
TTAB held that the Redskins trademarks
were disparaging to Native
Americans at the time when
they were registered and
cancelled the registrations.
It appeared that the
Redskins marks had been
defeated. But Pro-Football
ran a play from its playbook that would
change the outcome: laches.
Pro-Football appealed the decision pursuant to 15 U.S.C. § 1071(b), which at
that time allowed for the appeal of a TTAB
decision by filing a civil action in the
United States District Court for the
District of Columbia.
10 In Pro-Football Inc.
v. Harjo, the court reversed the cancellations, concluding that the evidence did
not support the conclusion of disparagement. The court also said that even if the
trademarks were disparaging, the Native
Americans who filed the cancellation petition were barred from obtaining relief on
the grounds of laches.
The Harjo petitioners appealed the
decision to the United States Court of
Appeals for the District of Columbia
Circuit, which reversed the laches conclusion as to one of the Native Americans who
filed the petition and remanded.
12 The district court on remand found that laches
barred the claim in light of the (i) petitioners’ inaction over eight years in failing to
diligently bring forth and prosecute their
claim and (ii) resulting prejudice, both
economic and at trial, suffered by Pro-Football, which had invested significantly
in the trademarks over that entire period.
Again, the matter went up on appeal,
but this time the D.C. Circuit affirmed,
finding it would be inequitable to allow
the Native American petitioners success on
their cancellation petition on the grounds
of laches. Notably, the D.C. Circuit
resolved the case solely on laches grounds.
Thus, the offense knew what it needed to
do in the second half: find petitioners who
had not sat on their rights and would not
be subject to the laches defense, and hone
the disparagement argument that prevailed
the first time around at the TTAB in
There is a two-part test to determine if a
trademark is disparaging or not.
First, the trier of fact must determine
what is the meaning of the matter in question as it appears in the trademarks, and as
those trademarks are used in connection
with the goods and/or services identified
in the trademark registrations. Second, the
trier of fact must determine if the meaning
of the trademarks is one that would be
found disparaging to a substantial composite of the relevant group (viz., the group
allegedly disparaged by the trademark and
Both questions are to be answered as
of the various dates of registration of
the involved trademarks. In doing so, the
doctrine is structured in a way to prevent
hindsight bias, which could result if the
specific views taken into consideration in
the disparagement calculus were contemporary views of the relevant population.
Cancellation is only granted with “due
caution” and “after a most careful study of
all the facts.”
In the context of everyday life,
disparagement means “to lower in rank or reputation” or “to
depreciate … or speak slightingly about.”
1 But what does it mean
in the context of trademark law? The answer to this question
implicates the rarely used Section 2(a) of the Lanham Act, 15
U.S.C. § 1052(a). Although infrequently encountered in everyday
trademark practice, the Trademark Trial and Appeal Board
(“TTAB”) of the United States Patent & Trademark Office
(“USPTO”) recently cancelled the famous “Redskins” trademarks
associated with the Washington, DC, National Football League
2 This decision enjoyed wide press coverage, with
the merits of the decision debated by everyone from sports radio
talk show hosts to football fans. But it probably won’t end there.
The cancellation likely will breathe new life into the doctrine, with
interest groups and individuals from such groups relying on it to
address trademarks that allegedly cause them reputational harm, as
well as marketplace participants using it as another arrow in their
quiver to attack trademarks used by their competitors.
KEN MOTOLENICH-SALAS is a shareholder at Gallagher &
Kennedy whose practice is concentrated on intellectual property
counseling, protection and litigation. He represents clients in all
areas of intellectual property law, including all patent, trademark
copyright, and trade secret-related matters.