## Facts

- Pro-Football, Inc. owned six federal trademark registrations containing the term “Redskins,” registered between 1967 and 1990.
- In 1992, seven Native American individuals petitioned the Trademark Trial and Appeal Board (TTAB) to cancel the registrations under Lanham Act § 2(a) (15 U.S.C. § 1052(a)) as disparaging to Native Americans.
- The TTAB found the marks disparaging and ordered cancellation of the registrations.
- Pro-Football sought review in federal district court, which granted summary judgment for Pro-Football.
- The district court held the petition was barred by laches, measuring delay from the first registration in 1967 as to all seven petitioners, including Mateo Romero, who was a minor at that time.
- The district court also ruled in the alternative that the TTAB’s disparagement determination lacked substantial evidence.
- The petitioners appealed to the U.S. Court of Appeals for the D.C. Circuit.

## Issues

1. Whether laches is available as a defense in a Lanham Act cancellation petition brought under 15 U.S.C. § 1064(3) notwithstanding the statute’s statement that such petitions may be filed “at any time.”
2. If laches is available, whether laches was properly applied to a petitioner who was a minor at the time of the first registration, including the correct accrual date for measuring delay.
3. Whether the TTAB’s disparagement finding was supported by substantial evidence.

## Decision

- The court held that laches is available in § 1064(3) disparagement cancellation proceedings despite the “at any time” language.
- The court ruled the district court erred by starting the laches period at the 1967 registration date for all petitioners, including Romero, who could not reasonably be expected to sue as a minor.
- The court vacated and remanded the laches ruling as to Romero for reconsideration under the correct accrual rule.
- The court retained jurisdiction over the remainder of the appeal, including the substantial-evidence issue, pending the remand proceedings.

## Legal Principles

- An “at any time” provision in 15 U.S.C. § 1064(3) removes a statutory limitations period but does not eliminate equitable defenses where Congress has expressly preserved them.
- Under 15 U.S.C. § 1069, equitable principles, including laches, may be considered and applied in inter partes trademark cancellation proceedings where applicable.
- Laches requires (1) lack of diligence by the party against whom it is asserted and (2) prejudice to the party asserting it.
- Laches must be assessed individually for each petitioner; delay is measured from the point the petitioner had legal capacity and a realistic opportunity to act, not from a time when the petitioner was a minor.

## Conclusion

The D.C. Circuit recognized laches as a potential bar to a Lanham Act disparagement-based cancellation petition even when the statute permits filing “at any time,” but required an individualized accrual analysis and remanded because the district court improperly measured delay against the youngest petitioner from a date when he lacked capacity to sue.


Pro-Football, Inc. v. Harjo, 415 F.3d 44 (D.C. Cir. 2005)