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Pro-Football, Inc. v. Blackhorse

United States District Court, E.D. Virginia, Alexandria Division

November 25, 2014

PRO-FOOTBALL, INC., Plaintiff,
v.
AMANDA BLACKHORSE, et al., Defendants

Counsel Amended July 21, 2015.

For Pro-Football, Inc., Plaintiff: Craig Crandall Reilly, LEAD ATTORNEY, Law Office of Craig C. Reilly, Alexandria, VA.

For Amanda Blackhorse, Marcus Briggs-Cloud, Jillian Pappan, Courtney Tsotigh, Defendants: Jesse Witten, Jeffrey Joseph Lopez, LEAD ATTORNEYS, Drinker, Biddle & Reath LLP, Washington, DC; Adam Scott Kunz, Jennifer Tracey Criss, Tore Thomas DeBella, II, Drinker, Biddle & Reath LLP (DC), Washington, DC.

For UNITED STATES OF AMERICA, Interested Party: Dennis Carl Barghaan, Jr., LEAD ATTORNEY, United States Attorney's Office, Alexandria, VA.

Page 499

MEMORANDUM OPINION AND ORDER

Gerald Bruce Lee, United States District Judge.

This matter is before the Court on Defendants Amanda Blackhorse, Marcus

Page 500

Briggs-Cloud, Philip Grover, Julian Pappan and Courtney Tsotigh's (" Defendants" ) Motion to Dismiss (Doc. 18). This action involves a review of the Trademark Trial and Appeal Board (" TTAB" )'s cancellation of Plaintiff Pro-Football Inc. (" Pro-Football" )'s REDSKINS trademarks on the grounds that they are scandalous, disparaging, and may bring Native Americans into contempt or disrepute in violation of the Lanham Act. Defendants move to dismiss the Complaint. Specifically, Defendants allege that there is no judicially cognizable dispute between them and Pro-Football because Defendants do not have a direct stake in the outcome of the case. Further, Defendants allege that they are not " parties in interest" because they have no actual economic or legal interest in the marks. The issues before the Court are (i) whether a " case or controversy" exists between Pro-Football and Defendants and (ii) whether Defendants constitute " parties in interest" under 15 U.S.C. § 1071 giving the Court subject matter jurisdiction over the case.

The Court denies Defendants' Motion to Dismiss for four reasons. First, the legitimate interests of the parties in the registration, or cancellation, of the mark are sufficient to establish Jurisdiction under Article III of the Constitution. Second, 15 U.S.C. § 1071 provides review of a TTAB's decision in the Federal Circuit or a United States District Court, and the alleged harm or controversies decided in such administrative proceedings must carry over into the review of the proceeding. Third, Defendants' cancellation petition demonstrated that they have a sufficient interest in the registration to constitute § 1071 " adverse parties" and " parties in interest." Finally, the prior proceeding before the TTAB was an inter partes proceeding where Defendants were the sole adverse parties. Therefore, the Court finds that a judicially cognizable dispute exists between Pro-Football and Defendants and 15 U.S.C. § 1071 provides the Court with jurisdiction over this case.

I. BACKGROUND

The team name, " REDSKINS" has been a part of the National Football League franchise for over eighty years. (Doc. 1 at 10.) George Preston purchased the team now known as the REDSKINS in 1932. ( Id.) When the team adopted the name REDSKINS, there were four players on the team that identified as Native Americans. ( Id. at 11.) Since 1933, the REDSKINS marks have had a longstanding fame and recognition within the industry and amongst the public. ( Id.) This recognition is evidenced by the team following through various media outlets and widely sold team paraphernalia. ( Id.) As a result, the REDSKINS marks are valuable communicative symbols through which the public identifies the team and its players. ( Id. at 12.)

II. PROCEDURAL HISTORY

In September 1992, a group of Native American Defendants filed a petition with the TTAB to cancel the REDSKINS marks on the grounds that they are scandalous, may disparage Native Americans, and may bring Native Americans into contempt or disrepute in violation of the Lanham Act. (Doc. 1 at 6.) On April 2, 1999, the Board canceled the federal registrations for the REDSKINS marks. See Harjo, 1999 WL 375907, at *38-48 (T.T.A.B. 1999). However, the United States District Court for the District of Columbia on September 30, 2003 reversed the TTAB decision because there was insufficient evidence to support the Board's findings. (Doc. 1 at 6-7.) The D.C. Circuit remanded the case back to the district court to determine the facts surrounding the laches defense on July 15,

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2005. On August 11, 2006, Defendants filed a petition with the TTAB to cancel the federal registration of the REDSKINS marks on the same grounds as the Harjo petitioners. ( Id. at 7.)

On September 26, 2006, Pro-Football filed an answer denying all allegations. ( Id. at 8.) Two days later, the Board decided to suspend the proceedings in Blackhorse pending the final disposition of the Harjo case. ( Id.) The Harjo court ruled in favor of Pro-Football on June 25, 2008 based on the laches defense on the grounds that the youngest plaintiff improperly delayed its petition for cancellation. The D.C. Circuit upheld this decision, and the United States Supreme Court denied certiorari on November 16, 2009. ( Id.)

The Blackhorse proceedings resumed in March 2010. ( Id.) By interlocutory order, the TTAB decided that it was not empowered to entertain Pro-Football's constitutional defenses. ( Id. at 9.) The Board also made the following rulings: (1) disparagement is measured by a substantial composite of the targeted group and not the public; (2) the time frame for assessing disparagement is the date of issuance of the registration; (3) the standard of proof is preponderance of the evidence; and (4) the operative date for calculating laches is the registration date and the court's inquiry must balance the reasonableness of the delay with the resulting harm. ( Id. at 10.)

On June 18, 2014, the TTAB issued a decision scheduling the cancellation of the registrations for the REDSKINS marks finding that a " substantial composite of Native Americans found the term REDSKINS to be disparaging" during the requisite time frame. ( Id.)

On August 8, 2014, Pro-Football filed a Complaint against Defendants before this Court seeking a de novo judicial review of the final TTAB decision. (Doc. 1.) The Complaint consists of the following causes of action:

1. Declaration of Non-Disparagement: Requests a review of the TTAB's ruling that the REDSKINS marks disparage Native Americans in violation of Section 2(a) of the Lanham Act.
2. Declaration of Non-Contempt or Disrepute: Requests a review of the TTAB's ruling that Pro-Football's REDSKINS marks bring Native Americans into contempt or disrepute in violation of § 1052(a).
3. Declaration that Section 2(a) of the Lanham Act Violates the First Amendment: Requests an analysis as to whether Section 2(a) violates the First Amendment, a legal determination that was not considered by the TTAB.
4. Declaration that Section 2(a) of the Lanham Act is Void for Vagueness: Requests an analysis as to whether Section 2(a) is unconstitutionally void for vagueness.
5. Declaration that the TTAB Order Violates the Due Process Clause of the Fifth Amendment: Requests a determination that the TTAB's Order to cancel the REDSKINS marks violates Pro-Football's Fifth Amendment rights by depriving Pro-Football of long-held property rights.
6. Declaration that the TTAB Order Violates the Takings Clause of the Fifth Amendment: Requests a determination that the TTAB's Order to cancel the REDSKINS marks violates the Taking Clause of the Fifth Amendment because it ...

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