Attorneys for the petitioners who filed a complaint against the use of the term REDSKINS for the Washington pro football team filed a Petition for Writ of Certiorari with the US Supreme Court on Monday of this week.In 1992, Suzan Harjo led seven Native Americans in petitioning the Trademark Trial and Appeal Board (“TTAB”) to cancel six trademark registrations used by the Washington Redskins and owned by Pro-Football, Inc. The TTAB granted the petition, and the owner appealed to the United States District Court for the District of Columbia, which overturned the cancellation on two grounds. The District Court found that the TTAB lacked substantial evidence to find disparagement, and that the petition was barred by laches – an equitable legal theory which prohibits a party from waiting so long to file a claim that it becomes unfair to the other party. The Redskins had registered their marks as early as 1967 – when the youngest of the complainants was one year old. The complainants then appealed this decision to the DC Court of Appeals.The Court of Appeals upheld the District Court’s holding that laches was a valid defense in a disparagement case. It vacated the District Court’s application of laches to one of the complainants, however, and remanded the case for further consideration on that issue only. It retained jurisdiction over the rest of the case (including the question of whether the TTAB’s decision had been supported by substantial evidence), pending the District Court’s resolution of the laches issue.The Native Americans claimed that laches should not apply to a disparagement claim at all, because the law specifies that such a claim can be brought “at any time”. The Court rejected this, noting that other language in the same statute specifically permits equitable defenses, and laches is such a defense. The Court then considered the applicability of laches to the case at hand. Because the defense depends on the laxity of the plaintiff in pursuing his rights – which can not effectively be pursued until the plaintiff has reached the age of majority – the Court found that the defense could not be applied against the one plaintiff who had been a minor until recently, and therefore that the plaintiff had not slept on his rights.The Court acknowledged the assertion by the owner that this finding would leave trademarks disparaging a group with a constantly expanding population “perpetually at risk”: 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 “at any time”.The case was remanded to the United States District Court for the District of Columbia for further proceedings. In July 2008, that court found that the doctrine of laches was still applicable to the particular plaintiffs in this case, because the youngest plaintiff had turned 18 eight years before the case was filed.The Writ of Certiorari will concern the question of whether a disparagement claim is barred by laches or if it may be brought at any time. A response to the Writ is due by October 16, 2009. Of the approximately five thousand cases a year for which review by the US Supreme Court is sought, fewer than 5 % are granted Certiorari. If the case is denied Cert, the decision below will stand, and the REDSKINS trademark will not be impacted.
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