United States Court of Appeals
FOR THE DISTRICT OF COLUMBIA CIRCUIT
Argued April 8, 2005 Decided July 15, 2005
Reissued September 13, 2005
No. 03-7162
PRO-FOOTBALL, INC.,
APPELLEE
v.
SUZAN S. HARJO, ET AL.,
APPELLANTS
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 InterFaith Conference of Metropolitan
Washington in support of appellants.
Robert L. Raskopf argued the cause for appellee. With him
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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
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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
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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
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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 (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,
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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 conflicting 1761 land grants that “laches
cannot . . . be imputed” as the “rights do not seem to have been
abandoned; for in 1761, the children were infants, and were
hardly of age, when this action was brought.” Gander’s Lessee
v. Burns, 4 U.S. (4 Dall.) 122 (1792). The Court has since held
to this principle. See Hoyt v. Sprague, 103 U.S. 613, 636-37
(1880) (evaluating laches “after [complainants] came of age”);
Wetzel v. Minn. Ry. Transfer Co., 169 U.S. 237, 240 (1898)
(acknowledging “that the minors were not affected by laches
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until they became of age”); cf. Wagner v. Baird, 48 U.S. (7
How.) 234, 242 (1849) (noting that equity makes allowances for
“circumstances to account for [a party’s] neglect, such as
imprisonment, infancy, coverture, or by having been beyond
seas”); 2 Joseph Story, Commentaries on Equity Jurisprudence,
as administered in England and America 844 n.(b) (photo.
reprint 1988) (Melville M. Bigelow, ed., 13th ed. 1886) (stating
that “[i]t is not laches to wait until one is in a legal condition to
sue”); William MacPherson, A Treatise on the Law Relating to
Infants 338-39 (Philadelphia, John S. Littel 1843) (observing
that “[i]t is a maxim of law that laches is not to be imputed to an
infant, because he is not supposed to be cognizant of his rights,
nor capable of enforcing them”).
Pro-Football asserts that were we to apply this principle
here, it “would logically mean that trademark owners could
never have certainty, since a disparagement claim could be
brought by an as yet unborn claimant for an unlimited time after
a mark is registered.” Appellee’s Br. at 48. At the least, this
assertion is overstated—only owners of those trademarks that
may disparage a population that gains new members (as opposed
to one that disparages, say, a single corporate entity, see, e.g.,
Greyhound Corp. v. Both Worlds Inc., 6 U.S.P.Q.2d 1635
(TTAB 1988)), would face such a prospect. But even if
registrations of some marks would remain perpetually at risk, it
is unclear why this fact authorizes—let alone
requires—abandonment of equity’s fundamental principle that
laches attaches only to parties who have unjustifiably delayed in
bringing suit. Pro-Football forgets that “laches is not, like
limitation, a mere matter of time,” Holmberg v. Armbrecht, 327
U.S. 392, 396 (1946) (internal quotation marks omitted), but
rather turns on whether the party seeking relief “delayed
inexcusably or unreasonably in filing suit” in a way that was
“prejudicial” to the other party, Rozen v. District of Columbia,
702 F.2d 1202, 1203 (D.C. Cir. 1983) (per curiam). Why should
equity give more favorable treatment to parties that harm
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expanding numbers of people (in which case, under Pro-
Football’s theory, laches runs from the date of harm) than it
gives to parties that harm only a few people (in which case
laches runs from whenever those people are free of legal
disabilities)? Why should equity elevate Pro-Football’s
perpetual security in the unlawful registration of a trademark
over the interest of a Native American who challenged this
registration without lack of diligence? Why should laches bar
all Native Americans from challenging Pro-Football’s
“Redskins” trademark registrations because some Native
Americans may have slept on their rights?
The fact that Pro-Football may never have security in its
trademark registrations stems from Congress’s decision not to
set a statute of limitations and instead to authorize petitions for
cancellation based on disparagement “[a]t any time.” See 15
U.S.C. § 1064(3). Congress knew perfectly well how to set
statutes of limitations—as noted earlier, it required that petitions
for cancellations on many other grounds be brought “[w]ithin
five years” of registration, id. § 1064(1)—but consciously
declined to do so with respect to cancellation petitions based on
disparagement. Indeed, Congress may well have denied
companies the benefit of a statute of limitations for potentially
disparaging trademarks for the very purpose of discouraging the
use of such marks. See id. § 1065 (providing that marks “shall
be incontestable” after five years “[e]xcept on a ground for
which application to cancel may be filed at any time under
paragraphs (3) and (5) of section 1064” (emphasis added)); cf.
In re Riverbank Canning Co., 95 F.2d 327, 329 (C.C.P.A. 1938)
(noting that the “field is almost limitless from which to select
words for use as trade-marks, and one who uses debatable marks
does so at the peril that his mark may not be entitled to
registration”).
Here, Romero has brought his own claim, and there is no
reason why the laches of others should be imputed to him. In
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accordance with the context-specific approach required by
equity, the district court should have measured both his delay
and the resulting prejudice to Pro-Football based on the period
between his attainment of majority and the filing of the 1992
cancellation petition.
For several reasons, we prefer not to undertake our own
analysis of Romero’s laches. The district court never addressed
this issue, the parties have briefed it minimally at best, and, most
significantly, we may owe deference to the district court’s
assessment of laches. Compare Daingerfield Island Protective
Soc’y v. Lujan, 920 F.2d 32, 38 (D.C. Cir. 1990) (conducting
abuse-of-discretion evaluation of laches in reviewing a district
court’s summary judgment ruling), with CarrAmerica Realty
Corp. v. Kaidanow, 321 F.3d 165, 172 (D.C. Cir. 2003)
(conducting de novo evaluation of laches in reviewing a district
court’s summary judgment ruling). Therefore, we shall remand
the record for the district court to evaluate Romero’s laches.
In assessing prejudice, the district court should address both
trial and economic prejudice. As to trial prejudice, the court
should consider the extent to which Romero’s post-majority
delay resulted in a “loss of evidence or witnesses supporting
[Pro-Football’s] position,” see Gull Airborne Instruments, 694
F.2d at 844. As to economic prejudice, we express no view as
to how such prejudice should be measured where, as here, what
is at stake is not the trademark owner’s right to use the marks
but rather the owner’s right to Lanham Act protections that turn
on registration. We encourage the district court to take briefing
on whether economic prejudice should be measured based on
the owner’s investment in the marks during the relevant years,
on whether the owner would have taken a different course of
action—e.g., abandoned the marks—had the petitioner acted
more diligently in seeking cancellation, or on some other
measure.
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III.
While retaining jurisdiction over the case, we remand the
record to the district court for the purpose of evaluating whether
laches bars Mateo Romero’s claim.
So ordered.