## Facts

- Pro-Football, Inc. owned six federal trademark registrations containing the word “Redskins,” registered beginning in 1967.
- In 1992, Suzan Shown Harjo and six other Native American petitioners filed a TTAB petition to cancel the registrations under Lanham Act § 2(a), alleging the marks “may disparage” Native Americans.
- The TTAB ordered cancellation, finding the term disparaging to a substantial composite of Native Americans in connection with Pro-Football’s services.
- Pro-Football sought de novo review in federal district court under 15 U.S.C. § 1071(b).
- The district court entered judgment for Pro-Football, including on laches; on an earlier appeal, the D.C. Circuit held laches could apply but required recalculation as to the youngest petitioner, Mateo Romero, because laches cannot run before majority.
- On remand, the district court again found Romero’s claim barred by laches, citing an approximately eight-year post-majority delay and resulting trial and economic prejudice to Pro-Football.
- In the 2009 appeal, petitioners challenged only the district court’s laches analysis as applied to Romero.

## Issues

1. Whether the district court abused its discretion or clearly erred in concluding that laches barred Mateo Romero’s cancellation claim.
2. Whether the evidence supported findings of (a) unreasonable post-majority delay by Romero and (b) trial prejudice and economic prejudice to Pro-Football caused by that delay.

## Decision

- The D.C. Circuit affirmed the district court’s judgment for Pro-Football.
- The court held the district court did not clearly err in finding Romero lacked diligence after reaching majority before joining the 1992 cancellation petition.
- The court held the district court did not clearly err in finding prejudice to Pro-Football, including:
  - trial prejudice from loss of witnesses and evidence over time; and
  - economic prejudice from substantial investment and reliance interests in the marks during the delay.
- Because Romero was the only petitioner whose claim could have remained timely after the prior appeal, affirmance of laches as to Romero effectively disposed of the cancellation effort.
- Certiorari was denied.

## Legal Principles

- In Lanham Act cancellation proceedings, equitable defenses such as laches may be applied where applicable. 15 U.S.C. § 1069.
- Laches requires (1) lack of diligence by the claimant and (2) prejudice to the opposing party.
- For laches in trademark disputes, courts may consult the most analogous statute of limitations for presumptions about timeliness.
- Appellate review of a laches determination is for abuse of discretion, with subsidiary factual findings reviewed for clear error, reflecting the fact-intensive character of the inquiry.
- Trial prejudice may be shown by the loss of key witnesses or evidence attributable to delay.
- Economic prejudice may be shown by reliance-based investment, expansion, and potential rebranding costs and loss of goodwill attributable to delay.

## Conclusion

The D.C. Circuit held that laches barred the remaining potentially timely petitioner’s disparagement-based trademark cancellation claim because he waited years after reaching majority and the delay caused both evidentiary and economic prejudice, leaving the registrations intact.


Pro-Football, Inc. v. Harjo, 565 F.3d 880 (D.C. Cir. 2009), cert. denied, 558 U.S. 1025 (2009)