United States Court of Appeals
FOR THE DISTRICT OF COLUMBIA CIRCUIT
Decided May 15, 2009
Reissued May 27, 2009
No. 03-7162
PRO FOOTBALL, INC.,
APPELLEE
v.
SUZAN S. HARJO, ET AL.,
APPELLANTS
Appeal from the United States District Court
for the District of Columbia
(No. 99cv01385)
Philip J. Mause and Jeffrey J. Lopez were on the briefs
for appellants.
Robert L. Raskopf and Sanford I. Weisburst were on the
brief for appellee.
Before: SENTELLE, Chief Judge, TATEL, and HENDERSON,
Circuit Judges.
Opinion for the Court filed by Circuit Judge TATEL.
2
TATEL, Circuit Judge: At bottom, this case concerns
whether various trademarks related to the Washington
Redskins football team disparage Native Americans within
the meaning of the Lanham Trademark Act, § 2, 15 U.S.C. §
1052(a). But that question has since been overshadowed by
the defense of laches, the basis on which the district court first
entered judgment for the Redskins six years ago. We
reversed that decision, finding that the district court had
misapplied the law of laches to the particular facts of the case.
Pro-Football, Inc. v. Harjo (Harjo II), 415 F.3d 44, 50 (D.C.
Cir. 2005). On remand, the district court reconsidered the
evidence in light of our instructions and again ruled for the
team. Pro-Football, Inc. v. Harjo (Harjo III), 567 F. Supp. 2d
46, 62 (D.D.C. 2008). Now appealing that decision, the
Native Americans who originally petitioned for cancellation
of the mark argue only that the district court improperly
assessed evidence of prejudice in applying laches to the facts
at issue. Limited to that question, we see no error and affirm.
I.
Because previous opinions have already described the
background of this case at length, see Harjo II, 415 F.3d at
46–47; Harjo III, 567 F. Supp. 2d at 48–51, we provide only
the essentials. Appellants, seven Native Americans, filed a
1992 action before the Patent and Trademark Office seeking
cancelation of six Redskins trademarks that were, they
argued, impermissibly disparaging towards members of their
ethnic group. Pro-Football, the Redskins’ corporate entity
and the owner of the marks, argued to the Trademark Trial
and Appeal Board that its long-standing use of the name,
combined with petitioners’ delay in bringing the case, called
for application of laches, 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,” Nat'l R.R. Passenger Corp. v. Morgan,
3
536 U.S. 101, 121–22 (2002) (internal quotation marks
omitted). The TTAB disagreed, observing that petitioners
asserted an interest in preventing “a substantial segment of the
population” from being held up “to public ridicule,” and that
insofar as that interest reached “beyond the personal interest
being asserted by the present petitioners,” laches was
inappropriate. Harjo v. Pro Football Inc., 30 U.S.P.Q. 2d
1828, 1831 (TTAB 1994). Finding on the merits that the
marks were indeed disparaging, the TTAB cancelled them,
see Harjo v. Pro Football Inc., 50 U.S.P.Q. 2d 1705, 1749
(TTAB 1999), depriving Pro-Football of the ability to pursue
infringers.
Pro-Football then exercised its option to dispute this
holding by means of a civil action in the United States District
Court for the District of Columbia. See 15 U.S.C. §
1071(b)(1), (4) (providing choice between district court action
and Federal Circuit appeal). The district court sided with Pro-
Football on the laches issue, holding that the 25-year delay
between the mark’s first registration in 1967 and the TTAB
filing in 1992 indeed required dismissal of the action. Pro-
Football, Inc. v. Harjo, 284 F. Supp. 2d 96, 144 (D.D.C.
2003). We reversed. “[L]aches,” we said, “attaches only to
parties who have unjustifiably delayed,” Harjo II, 415 F.3d at
49, and the period of unjustifiable delay cannot start before a
party reaches the age of majority, id. at 48–49. The youngest
petitioner, Mateo Romero, was only a year old in 1967.
Because the correct inquiry would have assessed his delay
and the consequent prejudice to Pro-Football only from the
day of his eighteenth birthday in December 1984, we
remanded the record to the district court to consider, in the
first instance, the defense of laches with respect to Romero.
Id. at 49–50.
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On remand in this case, the district court again found the
defense of laches persuasive. It held that the seven-year,
nine-month “Romero Delay Period” evinced a lack of
diligence on Romero’s part, Harjo III, 567 F. Supp. 2d at 53–
56, and following our instructions to consider both trial and
economic prejudice, see Harjo II, 415 F.3d at 50, it found that
that delay harmed Pro-Football, Harjo III, 567 F. Supp. 2d at
56–62. Now appealing from that decision, Romero
challenges neither the applicability of laches vel non nor the
district court’s finding of unreasonable delay. We thus
confine our review to the only question Romero does raise:
whether the district court properly found trial and economic
prejudice sufficient to support a defense of laches.
II.
Before turning to that question, we must first resolve a
preliminary matter flagged but left undecided by our previous
opinion: the standard of review. In Harjo II, we noted an
apparent conflict between Daingerfield Island Protective
Society v. Lujan, 920 F.2d 32, 38 (D.C. Cir. 1990), and
CarrAmerica Realty Corp. v. Kaidanow, 321 F.3d 165, 172
(D.C. Cir. 2003), over the standard for reviewing a laches
determination made on summary judgment. 415 F.3d at 50.
In Daingerfield, an appeal from summary judgment, we
applied abuse of discretion review, noting the consistent view
of the courts that “[b]ecause laches is an equitable doctrine,”
it is “primarily addressed to the discretion of the trial court.”
920 F.2d at 38 (internal quotation marks omitted); see also
Coalition for Canyon Preservation v. Bowers, 632 F.2d 774,
779 (9th Cir. 1980). By contrast, CarrAmerica seems to have
reviewed a laches determination de novo, see 321 F.3d at 172
(“The District Court held that laches did not apply because it
determined that Appellants had suffered no prejudice from
Appellee's delay. Upon our de novo review, we determine
that Appellants did indeed suffer prejudice.”), but it is unclear
5
whether this represented a considered opinion on the
appropriate standard for reviewing laches decisions or merely
referred to the more general standard that typically applies on
summary judgment, see id. at 170 (referring to general
summary judgment standard). Indeed, both standards are
relevant: we review the existence of material facts in dispute
or the sufficiency of the evidence to support a legal
proposition under the familiar de novo summary judgment
standard, even while deferring to the district court’s
considerable discretion on the question of how to apply the
equitable principles of laches to the undisputed facts. See,
e.g., Hot Wax, Inc. v. Turtle Wax, Inc., 191 F.3d 813, 818–19
(7th Cir. 1999). We are thus bound by precedent to apply
abuse of discretion review, at least where, as here, an
appellant concedes that “the material facts are not in dispute,”
Appellants’ Reply. Br. 2.
Reviewing the district court’s analysis of prejudice in
light of its considerable discretion, we see no reason to
reverse. The district court carefully followed our instruction
to assess both trial and economic prejudice arising from the
Romero Delay Period, finding both. Romero now challenges
those determinations, and while his arguments are not without
merit, the errors alleged cannot overcome our deferential
standard of review.
The district court relied primarily on two factors in
finding trial prejudice: (1) the death of former Redskins
president Edward Bennett Williams during the Romero Delay
Period; and (2) the delay period’s general contribution to the
time lapse from the date of registration. Cf. Harjo, 50
U.S.P.Q. 2d at 1773–75 (disparagement is analyzed at the
time of registration). According to the district court, both
factors limited Pro-Football’s ability to marshal evidence
supporting its mark: Williams had met with Native American
6
leaders close to the time of registration to discuss their views,
while the nearly eight years of further delay made it more
difficult to obtain any other contemporaneous evidence of
public attitudes towards the mark. See Harjo III, 567 F. Supp.
2d at 56–58. Romero mainly argues that this “lost evidence”
would have had minimal value. He believes that Williams’
testimony would have reflected only a narrow set of views on
the disparaging nature of the Redskins marks, and that any
possibility that 1967 attitudes could have been better surveyed
at the time of an earlier suit is outweighed by other
overwhelming evidence of disparagement. We needn’t cast
doubt on Romero’s view of the evidence to hold that there
was no abuse of discretion. The lost evidence of
contemporaneous public opinion is surely not entirely
irrelevant, and weighing the prejudice resulting from its loss
falls well within the zone of the district court’s discretion. In
reviewing that assessment, we cannot assume that legally
relevant evidence possibly available in an earlier action would
have lacked persuasive content.
Nor can we fault the district court’s evaluation of
economic prejudice. Undisputed record evidence reveals a
significant expansion of Redskins merchandising efforts and
sizable investment in the mark during the Romero Delay
Period. Romero believes this investment is irrelevant absent
some evidence that Pro-Football would have acted
otherwise—by, say, changing the Redskins name—if Romero
had sued earlier. But the district court repeatedly rejected this
argument, citing the Federal Circuit’s holding in Bridgestone/
Firestone Research, Inc. v. Automobile Club, 245 F.3d 1359,
1363 (Fed. Cir. 2001), that “[e]conomic prejudice arises from
investment in and development of the trademark, and the
continued commercial use and economic promotion of a mark
over a prolonged period adds weight to the evidence of
prejudice.” See Harjo III, 567 F. Supp. 2d at 59. The court
7
thus thought it sufficient that the team deployed investment
capital toward a mark Romero waited too long to attack,
whether or not the team could prove that it would necessarily
have changed its name or employed a different investment
strategy had Romero sued earlier.
This was no abuse of discretion. To be sure, a finding of
prejudice requires at least some reliance on the absence of a
lawsuit—if Pro-Football would have done exactly the same
thing regardless of a more timely complaint, its laches defense
devolves into claiming harm not from Romero’s tardiness, but
from Romero’s success on the merits. But in contrast to the
defense of estoppel—which requires evidence of specific
reliance on a particular plaintiff’s silence—laches requires
only general evidence of prejudice, which may arise from
mere proof of continued investment in the late-attacked mark
alone. See Automobile Club, 245 F.3d at 1363 (“‘[S]pecific’
evidence of ‘reliance’ on the Automobile Club’s silence could
relate to proof of estoppel, but it does not apply to laches.
When there has been an unreasonable period of delay by a
plaintiff, economic prejudice to the defendant may ensue
whether or not the plaintiff overtly lulled the defendant into
believing that the plaintiff would not act, or whether or not the
defendant believed that the plaintiff would have grounds for
action.”). We have thus described as sufficient “a reliance
interest resulting from the defendant’s continued development
of good-will during th[e] period of delay,” and treated
evidence of continued investment as proof of prejudice
sufficient to bar injunctive relief. NAACP v. NAACP Legal
Def. & Educ. Fund, Inc., 753 F.2d 131, 137–38 (D.C. Cir.
1985). Such continued investment was unquestionably
present here. The district court thus acted well within our
precedent—as well as the precedent of the Federal Circuit,
which directly reviews TTAB decisions—in finding economic
prejudice on the basis of investments made during the delay
8
period. The lost value of these investments was sufficient
evidence of prejudice for the district court to exercise its
discretion to apply laches, even absent specific evidence that
more productive investments would in fact have resulted from
an earlier suit.
In so holding, we stress two factors. First, as the district
court correctly noted, the amount of prejudice required in a
given case varies with the length of the delay. “If only a short
period of time elapses between accrual of the claim and suit,
the magnitude of prejudice required before suit would be
barred is great; if the delay is lengthy, a lesser showing of
prejudice is required.” Gull Airborne Instruments, Inc. v.
Weinberger, 694 F.2d 838, 843 (D.C. Cir. 1982). This
reflects the view that “equity aids the vigilant and not those
who slumber on their rights,” NAACP, 753 F.2d at 137, as
well as the fact that evidence of prejudice is among the
evidence that can be lost by delay. Eight years is a long
time—a delay made only more unreasonable by Romero’s
acknowledged exposure to the various Redskins trademarks
well before reaching the age of majority. See Harjo III, 567
F. Supp. 2d at 54–55. The second point follows the first:
because laches requires this equitable weighing of both the
length of delay and the amount of prejudice, it leaves the
district court very broad discretion to take account of the
particular facts of particular cases. We have no basis for
finding abuse of that discretion where, as here, the claim of
error ultimately amounts to nothing more than a different take
on hypothetical inquiries into what might have been.
III.
A final issue concerns the trademark of the team’s
cheerleaders, the “Redskinettes,” which Pro-Football first
registered in 1990. As to this mark and only this mark,
Romero argues that he acted with reasonable diligence by
9
filing his action in 1992, only 29 months from the mark’s
registration. The district court disagreed, finding even this
short delay unreasonable given the relationship between the
Redskinettes claim and the other claims on which Romero
was already delaying. See id. & 54 n.5. This view followed
from Romero’s own litigation position. He argued to the
district court, this Court, and the TTAB that the disparaging
nature of the Redskinettes name derives from the disparaging
nature of the Redskins name itself. See, e.g., Appellants’
Opening Br. 28 (“In considering the merits of the
Redskinettes mark, this Court would necessarily have to
examine the TTAB’s analysis of the disparagement associated
with the term ‘redskin’ . . . .”). The district court thus saw no
reason why Romero, fully aware of both the team’s name and
the cheerleaders’ name and six-years into his delay period on
the former, failed to complain immediately about the
registration of the Redskinettes.
While Romero delayed considerably less in attacking the
Redskinettes mark, the district court did not abuse its
discretion by analyzing the reasonableness of this delay in
light of the delay in bringing the underlying claims regarding
the name of the team itself. The Federal Circuit has at least
suggested that a defense of laches as to a recently registered
mark may be based on a failure to challenge an earlier,
substantially similar mark, see Lincoln Logs Ltd. v. Lincoln
Pre-Cut Log Homes, Inc., 971 F.2d 732, 734 (Fed. Cir. 1992),
as has the TTAB, see Copperweld Corp. v. Astralloy-Vulcan
Corp., 196 U.S.P.Q. 585, 590–91 (TTAB 1977). It is unclear
to us how this rule interacts with the requirement to analyze
disparagement at the time of registration, since the factual
context may well have changed. But in any event and in the
context of this case, it is difficult to see how it could be
inequitable to allow Romero to complain about the Redskins
but equitable to allow his complaint about the Redskinettes,
10
particularly because the Redskinettes name had been in use
well before the date of registration. Indeed, the registration of
the Redskinettes mark reflects perhaps the greatest reliance on
the absence of any previous complaints. Thus, without
deciding whether Romero could have avoided laches by
attacking the Redskinettes mark on the day of registration, we
at least see no abuse of discretion in the district court’s
finding that the 29-month delay evinced a lack of reasonable
diligence.
In fact, we think the Redskinettes issue best demonstrates
the reasonableness of the district court’s approach to this case
as a whole. In 1990, six years into the Romero Delay Period,
Pro-Football was not only investing in the Redskins mark, but
seeking to expand legal protection of related marks, placing
greater reliance on the continued validity of its underlying
brand name. It would have been bold indeed for the team to
have sought to register the Redskinettes under their existing
name had the TTAB been considering revocation—or had the
TTAB already revoked—the registration of the Redskins
mark. We thus think it neither a stretch of imagination nor an
abuse of discretion to conclude that Pro-Football might have
invested differently in its branding of the Redskins and related
entities had Romero acted earlier to place the trademark in
doubt. We accordingly have no basis for questioning the
district court’s determination.
IV.
Deciding only the questions presented, and finding no
abuse of discretion in the district court’s resolution of them,
we affirm.
So ordered.