The opinion
THIS OPINION IS A
PRECEDENT OF THE T.T.A.B.
Mailed:
May 5, 2011
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Amanda Blackhorse, Marcus Briggs, Phillip Gover,
Jillian Pappan, and Courtney Tsotigh
v.
Pro Football, Inc.
_____
Cancellation No. 92046185
_____
Jesse A. Witten of Drinker, Biddle & Reath LLP for
Blackhorse, Briggs, et. al.
Robert L. Raskopf and Claudia Bogdanos of Quinn Emanuel
Urquhart & Sullivan, LLP for Pro-Football, Inc.
_____
Before Kuhlke, Cataldo and Bergsman,
Administrative Trademark Judges.
Order by Bergsman, Administrative Trademark Judge.
This proceeding mirrors prior litigation before the
Board of a disparagement claim under Section 2(a) of the
Trademark Act of 1946, 15 U.S.C. §1052(a), Harjo v. Pro-
Football, Inc., 50 USPQ2d 1705 (TTAB 1999), but brought by
different plaintiffs. The pleadings in Harjo and in this
cancellation proceeding are identical but for two additional
affirmative defenses based on violations of respondent’s
constitutional right to “due process.”
Cancellation No. 92046185
In an order dated March 15, 2011, the Board exercised
its authority under Trademark Rule 2.120(i)(2) and ordered
the parties to attend a pretrial conference in person at the
office of the Board in Alexandria, Virginia.1 The
conference was held on Wednesday, April 13, 2011. In
attendance for the Board were Administrative Trademark
Judges Karen Kuhlke, Peter Cataldo and Marc Bergsman, as
well as Interlocutory Attorney Richard Kim. Representing
petitioners were Jesse A. Witten, John D. V. Ferman Lee
Roach and Stephen J. Wallace. Representing respondent were
Robert L. Raskopf and Claudia T. Bogdanos.
At the beginning of the conference, the Board informed
the parties that it will be taking a more active role in
pretrial management of cases that the Board identifies as
having the potential to become overly contentious and/or
involve creation by the parties of excessive records. This
cancellation proceeding has been identified as such a case,
in light of prior Board proceedings, and subsequent
appellate proceedings, regarding the involved registrations.
This order recounts the issues that were discussed with the
parties.2
1
Trademark Rule 2.120(i)(2) provides that “the Board may, upon
its own initiative … request that the parties or their attorneys,
under circumstances which will not result in undue hardship for
any party, meet with the Board at its offices for a … pretrial
conference.”
2
In any pretrial conference under Trademark Rule 2.120(i)(2),
the issues to be discussed will depend on the nature of the
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Cancellation No. 92046185
A. Consequences Of Rearguing Issues That Have Been
Decided.
The Board’s decision in Harjo noted the following:
As the record reveals, the parties have
been extremely contentious, and the
evidence and objections thereto are
voluminous. Further, in their zeal to
pursue their positions before the Board,
it appears that the parties have
continued to argue, through the briefing
period and at the oral hearing, certain
issues that have already been decided by
the Board in this case.
Harjo v. Pro-Football, Inc., 50 USPQ2d at 1709.
In the subsequent district court proceeding, Judge
Kollar-Kotelly made the following observation after the
parties responded to her request to submit page citations to
the depositions that the parties considered to be probative
of their respective positions:
Both parties complied with this request.
However, as the old saw goes, in giving
an inch, the parties took a mile. Both
sides filed supplemental evidence,
unrequested by the Court, that the Court
finds unhelpful in resolving the legal
challenge.
Pro-Football Inc. v. Harjo, 284 F.Supp.2d 96, 68 USPQ2d
1225, 1229 (D.D.C. 2003).3
claims and defenses, and the substantive and procedural
particularities of the case at hand. Similarly, any order the
Board issues following such a conference will necessarily be
tailored to the particular circumstances of the case and any
instructions to the parties regarding the conduct of trial will
be apply to that case alone, just as the instructions provided
herein apply to this case alone.
3
Petitioner’s counsel advised the Board during the conference
that they did not represent petitioners until after the above-
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Cancellation No. 92046185
The parties have assured the Board that they are
cooperating, pointing to the “Joint Stipulation Regarding
Admissibility of Certain Evidence and Regarding Certain
Discovery Issues” filed March 14, 2011. The Board
appreciates and encourages this professionalism and spirit
of collegiality.
Nevertheless, once the Board issues an order that
constitutes law of the case and/or preserves an issue for
appeal, any further re-argument of the issue in a subsequent
motion or brief will not be considered. Moreover, the Board
may exercise its discretion and disregard the entire motion
or brief in which the re-argument is included. In this
regard, any motion or brief including a re-argument of a
previously decided issue in this proceeding will be deemed
to be a nonconforming brief and will be given no
consideration.
B. Summary Judgment.
We view this case as particularly unsuited for
disposition by any motion for summary judgment, precisely
because the parties dispute a great many matters of fact, as
well as what conclusions are to be drawn from relevant
evidence. Accordingly, the Board will not entertain any
motions for summary judgment, unless the parties, by written
noted cases were decided. While we appreciate the distinction,
the shadow of the prior proceedings remains.
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Cancellation No. 92046185
stipulation agree that (1) there are no genuine disputes as
to any material facts and (2) notwithstanding such
stipulation, if the Board should note the existence of
genuine disputes about material facts, then the Board would
be free to resolve such issues. Such written stipulation
would have to be approved by the Board prior to the filing
of any motions for summary judgment.
C. Notices of Reliance.
As noted above, the parties have stipulated to the
admissibility of certain evidence; with specified
exceptions, all of the evidence in Harjo submitted by a
notice of reliance, including transcripts of depositions and
exhibits, shall be admissible in this proceeding by notice
of reliance. At the pretrial conference, the parties also
stipulated that any documents could be submitted through a
notice of reliance without the other party waiving the right
to make substantive objections.
D. Protective Order.
The Board noted that because the parties have not filed
a protective order, the Board’s standard protective order is
applicable. Additionally, the Board stated that if the
parties wished to modify the Board’s standard protective
order, they could do so by filing a stipulation for Board
approval.
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Cancellation No. 92046185
E. Confidential Information.
In our discussion regarding whether either party
anticipated introducing any confidential or commercially
sensitive information, respondent indicated that it
anticipated doing so but only minimally and that it was
working on a possible stipulation with petitioners. In this
regard, the Board advised respondent to be circumspect and
to limit the “confidential” designation only to information
that is truly confidential or commercially sensitive. The
Board has observed far too many cases in which the parties
have improperly designated testimony and evidence as
confidential that is not objectively confidential. See, for
example, Edwards Lifesciencs Corp. v. VigiLanz Corp., 94
USPQ2d 1399, 1402 (TTAB 2010). Finally, if respondent
designates more than a minimal amount of evidence as
confidential or commercially sensitive and the designated
information is more than 20 years old, respondent should
anticipate an order to show cause why such information
should warrant a designation as confidential and be shielded
from public view.
F. Table of Evidence.
In anticipation of a voluminous record, we require the
parties to prepare and file tables summarizing their
testimony and other evidence and specifying (1) the
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Cancellation No. 92046185
probative value of particular facts or testimony and (2) the
location in the record of such facts or testimony.
With respect to identifying the location of the
evidence (e.g., depositions, exhibits thereto, and notices
of reliance), the parties will identify the source (e.g.,
petitioner’s first notice of reliance) and the particular
entry in TTABVue, the Board’s electronic case file system,
where the evidentiary items or testimony appear. The
parties have suggested adding Bates Numbers to the tables,
and the Board has agreed to this addition.
The parties will attach the tables to their briefs on
the case. The tables are not included within the page
limits of the briefs. The proposed tables are illustrated
below.
1. Petitioners’ evidentiary table
Source Probative Value TTABVue Entry Bates
and Page No.
Chase Dep., Meaning of the word 57 page 25 303030
p. 23 Redskins
First Notice How Native 43 page 7 202020
of Reliance – Americans perceive
response to the word Redskins
interrogatory
No. 1
2. Respondent’s evidentiary table
Source Probative Value TTABVue Entry Bates
and Page No.
Fellows Dep., Meaning of the word 67 page 50 010203
p. 14 Redskins
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Cancellation No. 92046185
Third Notice How Native 70 page 32 040506
of Reliance – Americans perceive
News articles the word Redskins
3. Petitioners’ rebuttal evidentiary table
Source Probative Value TTABVue Entry Bates
and Page No.
Barnhart Rebuttal to 87 page 45 999877
Dep., pp. 34- respondent’s expert
54 testimony regarding
the meaning of the
word Redskins
G. Briefs On The Case: Maintaining Objections.
The Board reminded the parties that evidentiary
objections properly raised by the parties may be maintained
in an appendix or by way of a separate statement of
objections attached to their briefs on the case. The
appendix or separate statement is not included within the
page limit of their briefs. TBMP §801.03 (2nd ed. rev.
2004). When the parties argue their objections in the
appendix to the brief or supplemental statement, the parties
are advised to keep in mind that a cancellation proceeding
is analogous to a bench trial and that the Board is capable
of weighing the relevance and strength or weakness of the
testimony and evidence, including any inherent limitations
(e.g., the information in a newspaper article submitted
through a notice of reliance is hearsay and is proof only
that the information was printed and may have been seen by
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Cancellation No. 92046185
the public, or represents the opinion of the author, rather
than for the truth of what was printed).
The parties are discouraged from maintaining objections
to evidence that are not outcome-determinative or that do
not have a significant effect on either their own position
or the position of their adversary. All too often, the
Board finds parties stating objections at trial to “cover
the bases” and then maintaining more than are necessary in
their briefing of the case.
H. Disparagement vs. “Contempt or Disrepute.”
Under Section 2(a) of the Trademark Act:
No trademark 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 … persons,
living or dead, institutions, beliefs,
or national symbols, or bring them into
contempt, or disrepute….
In Harjo, the Board held that the guidelines for
determining whether a mark is disparaging are equally
applicable to determining whether such matter brings persons
or institutions into contempt or disrepute. Harjo v. Pro-
Football, Inc., 50 USPQ2d at 1740.
The D.C. District Court held that the Board conflated
disparagement and “contempt or disrepute.”
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Cancellation No. 92046185
The TTAB also conflated the “contempt or
disrepute” inquiry with the “disparage”
inquiry. Id. at 1740. In other words,
the TTAB concluded that “the guidelines
enunciated [in its opinion], in
connection with determining whether
matter in a mark may be disparaging are
equally applicable to determining
whether such matter brings ‘persons,
living or dead, institutions, beliefs,
or national symbols into contempt or
disrepute.’” Id. (quoting 15 U.S.C.
§1052(a)). None of the parties argue
that the TTAB's decision to treat
“disparage” in the same manner as
“contempt or disrepute” was error.
Therefore, the Court has not reviewed
this legal determination and in
assessing the TTAB's decision, only
reviews whether the marks at issue “may
disparage” Native Americans, which
includes whether the marks bring Native
Americans into contempt or disrepute.
Pro-Football Inc. v. Harjo, 284 F.Supp.2d 96, 68 USPQ2d
1225, 1239 (D.D.C. 2003).
For purposes of completeness, the conference included
discussion of whether, for this proceeding, there was any
disagreement by the parties that the guidelines for
determining whether a mark is disparaging are equally
applicable to determining whether such matter brings persons
or institutions into contempt or disrepute. Respondent
agreed but petitioners requested time to consider the issue.
In the event that petitioners do not agree, then
petitioners are required to distinguish the disparagement
claim from a claim that the mark may bring persons or
institutions into contempt or disrepute and identify the
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Cancellation No. 92046185
elements necessary for proving that a mark brings persons or
institutions into contempt or disrepute.
Petitioners are allowed until April 20, 2011 to file
notice of their position on the issue with the Board and, if
necessary, to explain the differences between the elements
of these claims, failing which the Board, as it did in
Harjo, will use the same guidelines for determining whether
a mark is disparaging and whether it brings persons or
institutions into contempt or disrepute.
I. Applicable Law.
In the March 15, 2011 Order, the Board summarized the
applicable law regarding disparagement and laches as
discussed in the Board’s Harjo decision and by the District
of Columbia District Court and District of Columbia Circuit
Court of Appeals and asked the parties to comment. The
parties submitted their comments to the Board prior to the
pretrial conference. At the conference, the parties
requested, and the Board approved, time for each party to
respond to the comments submitted by the other party. The
purpose of this exercise is to reach an agreement regarding
the applicable law prior to trial in order to allow the
parties to focus their attention on the introduction of
evidence that is truly relevant to the applicable law.
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Cancellation No. 92046185
The parties are allowed until April 25, 2011 to submit
their respective responses to the comments regarding the
applicable law concerning disparagement and laches.
J. Affirmative Defenses.
During the conference, the Board reviewed respondent’s
affirmative defenses. An affirmative defense assumes the
allegations in the complaint to be true but, nevertheless,
constitutes a defense to the allegations in the complaint.
An affirmative defense does not negate the elements of the
cause of action; it is an explanation that bars the claim.
Gwin v. Curry, 161 F.R.D. 70, 71 (N.D. Ill. 1995) (the
affirmative defense concept codifies the common law plea in
confession and avoidance: “Each defendant either expressly
or impliedly treats the factual allegations in a complaint
as true, but then goes on to assert new matter that
eliminates or limites the defendant’s ordinary liability
stemming from those allegations”), citing Black’s Law
Dictionary, p. 297 (6th ed. 1990). In this case, the
affirmative defenses would apply if the term REDSKINS is
found to be disparaging to Native Americans (or to expose
them to contempt or disrepute) when used in connection with
football exhibitions, but the facts comprising the
affirmative defense excuse respondent from liability. With
this background, we discuss each of respondent’s affirmative
defenses.
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Cancellation No. 92046185
1. First Affirmative Defense – The petition for
cancellation fails to state a claim upon which relief can be
granted. Failure to state a claim upon which relief can be
granted is not an affirmative defense. In any event, we
hold that the petition states a claim upon which relief can
be granted. In view thereof, the first affirmative defense
is stricken. See Harjo v. Pro Football Inc., 30 USPQ2d
1828, 1830 (TTAB 1994)
2. Second Affirmative Defense - Petitioners lack
standing. Lack of standing is not an affirmative defense.
Standing is an element of petitioners’ claim. Petitioners
must prove standing as part of their case. In view of the
foregoing, the second affirmative defense is stricken. See
Harjo v. Pro Football Inc., 30 USPQ2d at 1830.
3. Third Affirmative Defense – Equitable Estoppel.
Respondent alleges that because the REDSKINS marks have
been registered for many years and because petitioners have
known about the registrations, petitioners’ claim is barred
by the doctrine of equitable estoppel. Equitable estoppel
is the doctrine by which a person may be precluded by his
act or conduct, or silence when it is his duty to speak,
from asserting a right which he otherwise would have had.
In other words, the defendant justifiably relied on the
plaintiff’s action or inaction. Estoppel by laches
precludes a party from bringing an action when the party
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Cancellation No. 92046185
knowingly failed to claim or enforce a legal right at the
proper time. Because the equitable estoppel affirmative
defense overlaps with the laches defense, and for purposes
of clarity, we are striking the equitable estoppel
affirmative defense.
4. Fourth Affirmative Defense – Laches
We are taking the comments of the parties under
advisement.
5. Fifth Affirmative Defense – Secondary meaning.
Essentially, the basis for this affirmative defense is
that through the long use, advertising and promotion of the
registered REDSKINS marks, those marks have acquired
secondary meaning identifying respondent and that the
favorable goodwill embodied in the names and symbols of the
Washington Redskins football franchise cannot be interpreted
as being disparaging to Native Americans (or exposing them
to contempt or disrepute). We interpret this affirmative
defense as an elaboration of respondent’s denial of
petitioner’s allegation that the term REDSKINS is
disparaging: that is, it is an explanation of why the term
REDSKINS was not disparaging at the time the registrations
issued. In other words, we read respondent’s position as a
contention that the word REDSKINS, when used in connection
with football, was perceived, even by Native Americans, as a
reference to respondent at the time the marks were
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Cancellation No. 92046185
registered. Respondent may submit evidence and argument
regarding this defense.
6. Sixth Affirmative Defense – Petitioners will not
be damaged; and
7. Seventh Affirmative Defense – Petitioners have not
alleged any special damages.
The term “damage” as used in Sections 13 and 14 of the
Trademark Act concerns only a party's standing to file an
opposition or petition to cancel, respectively.
Furthermore, a party may establish its standing to oppose or
to petition to cancel by showing that it has a real interest
in the case, that is, a personal interest beyond that of the
general public. There is no requirement that actual damage
be pleaded and proved in order to establish standing or to
prevail in an opposition or cancellation proceeding. See
Books on Tape Inc. v. Booktape Corp., 836 F.2d 519, 5 USPQ2d
1301 (Fed. Cir. 1987); Jewelers Vigilance Committee Inc. v.
Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021 (Fed. Cir.
1987); and International Order of Job's Daughters v.
Lindeburg & Co., 727 Fd.2d 1087, 220 USPQ 1017 (Fed. Cir.
1984). In view thereof, the sixth and seventh affirmative
defenses are stricken.
8. Eighth Affirmative Defense – Section 2(a) of the
Trademark Act violates the right of freedom of speech
guaranteed by the First Amendment;
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Cancellation No. 92046185
9. Ninth Affirmative Defense – Section 2(a) of the
Trademark Act is barred because it is constitutionally
overbroad;
10. Tenth Affirmative Defense – Section 2(a) of the
Trademark Act is barred because it is unconstitutionally
void for vagueness;
11. Eleventh Affirmative Defense –Petitioners’ claim
“deprives Registrant of its constitutional right of due
process” because respondent’s mark was first registered in
1967; and
12. Twelfth Affirmative Defense – Petitioners’ claim
“deprives Registrant of a federally granted property right
Registrant has relied on for almost four decades in
violation of its due process rights.”
Each of these defenses requires the Board to rule on
the constitutionality of the Trademark Act on its face or as
applied. Simply put the Board does not have the authority
to determine constitutional claims. See TBMP § 102.01 (2nd
ed. rev. 2004); see generally In re Mavety Media Group Ltd.,
33 F.3d 1367, 1374, 31 USPQ2d 1923 (Fed. Cir. 1994); In re
International Flavors & Fragrances Inc., 183 F.3d 1361,
1368, 51 USPQ2d 1513 (Fed. Cir. 1999). In view thereof, the
eighth, ninth, tenth, eleventh, and twelfth affirmative
defenses are stricken.
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Cancellation No. 92046185
In Harjo, respondent asserted that it was not
requesting the Board to declare Section 2(a)
unconstitutional, but it was arguing the Board must apply
Section 2(a) in a constitutional manner, and that under the
facts and circumstances of the case, cancellation of its
registrations under Section 2(a) would be an
unconstitutional application of the statute. In regard to
applying the Trademark Act in a constitutional manner, the
duty of the USPTO under the Trademark Act in reviewing
applications for registration is nothing more and nothing
less than to register those marks that identify and
distinguish goods and services in the marketplace, as long
as those marks do not run afoul of any statutory provision
that would prohibit registration. Moreover, the
registration scheme of the Trademark Act is one that is more
inclined to inclusion than exclusion so as to give as
comprehensive a notice as possible to those engaged in
commerce, of the trademarks and service marks in which
others have claimed rights. In re Old Glory Condom Corp.,
26 USPQ2d 1216, 1220 n.3 (TTAB 1993).
In summary, we are striking the first, second, third,
sixth, seventh, eighth, ninth, tenth, eleventh and twelfth
affirmative defenses. As indicated previously in this
order, respondent is precluded from introducing evidence
exclusively associated with those affirmative defenses and
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Cancellation No. 92046185
from rearguing those issues in any subsequent briefs. For
purposes of clarity, our decision is intended to preserve
respondent’s option to argue for application of the relevant
defenses on appeal.
Petitioners are allowed until April 20, 2011 to inform
the Board of their position regarding the “contempt or
disrepute” issue.
The parties are allowed until April 25, 2011 to submit
their responses to the comments regarding the applicable law
regarding disparagement and laches.
Trial dates, including the time for discovery, remain
as set in the stipulation filed on March 30, 2011.
18