Posted: March 16th, 2010
By Luke MacDowall
Time: it’s a concept that seemingly presents little difficulty. For centuries, it seemed to be continuous, predictable, and simple. Then, Albert Einstein uncovered the reality that time was not a linear pathway along which history unfolded, but rather something very complex that depended on how one approached it and where one stood in relation to it. Although time’s complexity has no bearing on an individual during daily life as it behaves in that simple and predictable way for all of us, a recent case might be understood as bringing the importance of time’s relativity to the forefront. In Harjo v. Pro Football Inc., 565 F.3d 880 (D.C. Cir. 2009), cert. denied, 130 S.Ct. 631 (2009), the importance time plays in the lawsuit becomes obvious when one considers the arguments used by the NFL. Two common defenses used in trademark cases, the doctrine of laches and secondary meaning, rely on a determination of how time has affected the central issue in Harjo: Does the term “Redskins” as a trademark of the NFL disparage Native American peoples? Although the differing outcomes reached by the Trademark Trial and Appeal Board and the District Court on the question can be understood as simple differences in opinion that arose from a rather dicey set of facts, this blog offers a different explanation. Namely, the jurists understood time differently because they analyzed from different parties’ positions, which gave rise to different perspectives on the importance of time.
In 1992, seven Native Americans filed an action before the U.S. Patent and Trademark Office to cancel six Redskins trademarks because they were “scandalous” and “disparaging” to Native American peoples. Under the Lanham Act, third parties can oppose the registration of marks that are found scandalous to the general public or those that disparage particular groups. Third parties can also cancel a registration using these same arguments after such a mark has been registered. The Native American petitioners brought a third party complaint against Pro-Football alleging that the trademark “Redskins” is both scandalous and disparaging.
The relevant section of the Lanham Act, Section 2(a), directs the PTO to refuse the registration of any mark that is scandalous or disparaging. Specifically, Section 2(a) states:
“No trade-mark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it (a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”
It should be noted that the terms “scandalous” and “disparaging” have very different interpretations and give rise to separate causes of action under the Lanham Act. The prohibition of scandalous marks is designed to protect the public as a whole; the prohibition against disparaging marks is designed to protect particular people, groups, beliefs, institutions, or symbols being damaged by the mark. Lynda J. Oswald, Challenging the Registration of Scandalous and Disparaging Marks Under the Lanham Act: Who has Standing to Sue?, 41 AM. BUS. L.J. 251, 269 (2004). In Harjo, the TTAB clarified the distinctive tests applied for these two terms.
The Test for Scandalous
In Harjo, the TTAB set forth a two-part test for determining whether a mark is scandalous. First, the court or administrative body must determine the likely meaning of the mark. The meaning of the mark is ascertained by looking at the mark and its context in its entirety, including relationship of the mark to the subject matter and the nature of the goods and services to which it applies. Second, given that meaning, the question is whether the mark is perceived as scandalous by a “substantial composite of the general public.”
The Test for Disparaging
There is a similar two-step test for determining whether a mark is disparaging. First, a determination must be made of the meaning of the mark and whether it could be understood to refer to persons in the target group. Second, the TTAB considers whether that meaning might be “disparaging to a substantial composite of the persons or institutions at issue.”
To answer the claim, Pro-Football had to rely on two defenses, both of which rely on the element of time. First, Pro-Football used the equitable defense of laches to assert that too much time had lapsed since the original use of the marks to allow the cancellation of the marks twenty-five years later. The TTAB disagreed, stating that since “a substantial segment of the population” was an object of “public ridicule” due to the use the marks, and since those interests reached well beyond the “personal interest” of the petitioners, laches was inappropriate. Harjo v. Pro Football Inc., 30 U.S.P.Q. 2d 1828, 1831 (TTAB 1994). Then, in 1999, the TTAB found the marks indeed were disparaging and cancelled them. Harjo v. Pro Football Inc., 50 U.S.P.Q. 2d 1705, 1749 (TTAB 1999). Pro-Football appealed the action to the United States District Court for the District of Columbia wherein the court held that the 25 year delay in bringing the action justified dismissing the case under the doctrine of laches. Pro-Football, Inc. v. Harjo, 284 F. Supp. 2d 96, 144 (D.D.C. 2003). The District Court held that Pro-Football must satisfy three elements: (1) Petitioners delayed substantially before commencing their challenge to the marks; (2) Petitioners were aware of the marks during the period of delay; and (3) Pro-Football’s ongoing development of goodwill during the period of delay engendered a reliance interest in the preservation of the marks. The court found that Pro-Football met its burden by establishing that the widespread use of the marks resulted in a twenty-five year delay between the first notice of the mark’s use and the filing of the complaint. The court also found that the amount of time and money spent on marketing and distribution engendered the requisite reliance on the preservation of these marks.
In a second defense, Pro-Football argued that the marks had acquired “secondary meaning, such that no reasonable person would or could conceive that the marks referred to the Petitioners or any member of their respective groups.” Lynette Paczkowski, The Best Offense is a Good Defense: How the Washington Redskins Overcame Challenges to their Registered Trademarks, 2004 B.C. INTELL. PROP. & TECH. F. 60803 (2004). The TTAB said that the secondary meaning would not function as a defense because the term could both be “distinctive” and “disparaging” at the same time. Harjo v. Pro-Football, Inc., 30 U.S.P.Q. 2d 1828, 1831 (TTAB 1994). On appeal, the District Court found a lack of substantial evidence to support the disparagement claim. Pro-Football, Inc. v. Harjo, 284 F. Supp. 2d 96, 136 (D.D.C. 2003).
The question remains: why the two different results under the same theories? Of course, some of it can be chalked up to difference of opinion on a very squishy equitable doctrine that allows judicial discretion to arrive at different results. But that simply begs the question: why is there such a fundamental difference in two analyses? The answer lies in the importance of time’s relativity. The TTAB and the court focused on different aspects of the claims by focusing on the position of the parties who themselves stood in different positions and thus had different understandings of how time affected the claim.
For starters, we look to the laches defense. Under that theory there is an inverse relation between the length of the delay and the amount of prejudice required to prove a laches defense, such that the longer the delay the less evidence of prejudice required and vice versa. Pro-Football, Inc. v. Harjo, 565 F.3d 880, 884 (D.C. Cir. 2009). Obviously, the amount of delay was equivalent under both analyses, twenty-five years had elapsed since the original registration of the mark and the filing of the suit. Instead, it was the amount of emphasis placed on the prejudice to Pro-Football in terms of the time that had elapsed which affected the different outcomes. The perceived prejudice changed depending on the perspective the judicial bodies assumed. For the TTAB, justice would not be served by finding Pro-Football was prejudiced because of the importance the disparaging term had on an entire ethnic group. On the other hand, for the District Court, what mattered was this long delay and how it affected the Washington Redskins’ as a franchise. The TTAB seems to have weighed the prejudice in light of the fact that the marks were disparaging to an entire group of people. On the other hand, the District Court did not factor in the importance of the issue to the Native American peoples, focusing instead on the prejudice a time delay had caused the Redskins organization. For instance, the court reasoned that since the mark and its use constituted a “continuing wrong” such that each successive registration and use continued the potential disparaging impact, “a party could, theoretically, delay filing suit indefinitely.” Pro-Football, Inc. v Harjo, 284 F. Supp. 2d 96, 138 (D.D.C. 2003).
This is not to suggest that either the court or the TTAB ignored the other side completely. It’s just to suggest that the positions each body assumed changed their perception of the affect time had on the issue of the case. According to the District Court, the TTAB analyzed the doctrine incorrectly by weighing the importance of the claim to the petitioners against the prejudice to Pro-Football. However, TTAB seemed to see the importance of time differently by assuming the position of the petitioners within its analysis. The twenty-five year delay did not seem as weighty to the TTAB in light of the centuries of meaning and prejudice packed into the term “redskins.” Like Einstein’s theory of relativity, which tells us that a space traveler moving at the speed of light experiences fewer years than those he meets upon his return, the weight of the passage of time in this case just seem different whether one is assuming the position of the petitioners versus the Redskins organization.
Time also played a crucial role under the secondary meaning defense. According to the TTAB, these marks were invalid because they continue to represent a static meaning that made Native Americans an object of “public ridicule.” Both the TTAB and District Court analyzed the marks and meanings “as of the date of registration.” Such a standard precludes the secondary meaning defense because the analysis begins “prior to the acquisition of secondary meaning.” Paczkowski, supra. In a way, that standard institutionalizes the static meaning concept into the legal analysis because it prevents a registrant from arguing that words can acquire new meanings through present use. Here again, we see that time has been warped, in some relative sense, by the law. Even if time continued to run on the Redskins organization and the use of its mark, time for the petitioners and the legal analysis stood still, locked in the past at the point of initial registration.
Similar to the current debate over the re-appropriation of the “n-word” among black teens, terms are given an inherent meaning as if they are infused with the historical legacy that made them such controversial words in the first place. It simply is not possible for a white person to re-appropriate the term in an acceptable way because the term itself means something and speaks for the individual. In this way, the intention of the speaker becomes irrelevant. This is precisely the interpretation given by the TTAB and accepted by the District Court to the Act. Refusing to register marks “which may disparage” has been interpreted to make the intention of the marks owner irrelevant. Pro-Football, Inc. v Harjo, 284 F. Supp. 2d 96, 126 (D.D.C. 2003).
As a last point, we should note that time could make an analytical difference under the disparaging versus scandalous test. Under the scandalous test, the appropriate group of opinions is the nation as a whole. Whereas, under the disparaging test, the appropriate group of opinions stems from the particular target group. This is important because of the effect terms have on particular groups who share some essential trait or characteristic differs from the effect on the nation as a whole. Quite obviously, the term “redskin” means something different for Native Americans than for all Americans. Both stories passed from generation to generation and a collective history for Native Americans keep the term’s disparaging meaning intact. For those who have not dealt with the histories of discrimination through the use of the term, the term can acquire new meaning more quickly. Therefore, the secondary meaning defense is much more likely to succeed under a scandalous test, assuming the nation really has altered its interpretation of a term, than under the disparaging test that deals with a group whose identity, in some ways, might be tied to a particularly harmful meaning.