Laches
Harjo v. Pro-Football, Inc.
September 16, 2009 12:05 PM
On Monday, a group of Native Americans filed a
petition for certiorari in the U.S. Supreme Court.
They seek review of a decision by the United States
Court of Appeals for the D.C. Circuit that rejected
their claim, on the basis of a laches defense, that
trademarks registered by the Washington Redskins pro
football team that incorporate the term "redskins"
should be cancelled. (Click here for the story and here for the petition for
certiorari.) The case is styled Harjo v.
Pro-Football, Inc., No. 09A122.
Pro-Football, Inc. is the team's corporate name.
The Native Americans argue in the petition that the marks, which the team registered between 1967 and 1990, "should never have been registered and . . . were therefore void ab initio, justifying immediate cancellation. Section 14(3) of the [Lanham] Act provides for cancellation of a registration 'at any time,' if the subject mark was registered 'contrary to the provisions' of Section 2(a) of the Act. 15 U.S.C. § 1064(3). Pursuant to Section 2(a), no mark shall be registered if it consists of or comprises 'matter which may disparage . . . persons, living or dead, . . . or bring them into contempt, or disrepute . . . .' 15 U.S.C. § 1052(a)." (Petition at p. 3).
The Native Americans prevailed at the Trademark Trial and Appeal Board in 1999, but the U.S. District Court for the District of Columbia reversed on the basis of laches, and, after a remand, the D.C. Circuit affirmed. The D.C. Circuit's opinion states, laches is "an equitable defense that applies where there is '(1) lack of diligence by the party against whom the defense is asserted, and (2) prejudice to the party asserting the defense.'"
In the petition, the Native Americans assert that there is a split among circuits on the question of whether laches applies to trademark cancellation petitions. (Petition at 8). The petition cites a Third Circuit opinion that then-Judge (now Supreme Court Justice) Alito wrote in which, according to the petitioners, the court "held that a counterclaim brought under Section 14(3) of the Act was not time-barred" by the doctrine of laches because of the statute's use of the words "at any time." (Id.) Not surprisingly, the cert petition relies heavily on that opinion.
For the most part, I grew up in the Washington, D.C. area, and I've been a fan of the team for a long time, but it's tough for me to see how the term "redskins" isn't disparaging. Whether a court will ever reach that question, however, remains to be seen.
The Native Americans argue in the petition that the marks, which the team registered between 1967 and 1990, "should never have been registered and . . . were therefore void ab initio, justifying immediate cancellation. Section 14(3) of the [Lanham] Act provides for cancellation of a registration 'at any time,' if the subject mark was registered 'contrary to the provisions' of Section 2(a) of the Act. 15 U.S.C. § 1064(3). Pursuant to Section 2(a), no mark shall be registered if it consists of or comprises 'matter which may disparage . . . persons, living or dead, . . . or bring them into contempt, or disrepute . . . .' 15 U.S.C. § 1052(a)." (Petition at p. 3).
The Native Americans prevailed at the Trademark Trial and Appeal Board in 1999, but the U.S. District Court for the District of Columbia reversed on the basis of laches, and, after a remand, the D.C. Circuit affirmed. The D.C. Circuit's opinion states, laches is "an equitable defense that applies where there is '(1) lack of diligence by the party against whom the defense is asserted, and (2) prejudice to the party asserting the defense.'"
In the petition, the Native Americans assert that there is a split among circuits on the question of whether laches applies to trademark cancellation petitions. (Petition at 8). The petition cites a Third Circuit opinion that then-Judge (now Supreme Court Justice) Alito wrote in which, according to the petitioners, the court "held that a counterclaim brought under Section 14(3) of the Act was not time-barred" by the doctrine of laches because of the statute's use of the words "at any time." (Id.) Not surprisingly, the cert petition relies heavily on that opinion.
For the most part, I grew up in the Washington, D.C. area, and I've been a fan of the team for a long time, but it's tough for me to see how the term "redskins" isn't disparaging. Whether a court will ever reach that question, however, remains to be seen.
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