Case 1:14-cv-01043-GBL-IDD Document 1 Filed 08/14/14 Page 1 of 35 PageID# 1

FILED
IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF VIRGINIA

Alexandria Division

r-> i 'jn

Fy'4

!U P 1* 23
.

PRO-FOOTBALL, INC.,

• • fU

C

Plaintiff,

Civil Action No.

V.

^(043

AMANDA BLACKHORSE, MARCUS
BRIGGS-CLOUD, PHILLIP COVER, JILLIAN

PAPPAN, and COURTNEY TSOTIGH,
Defendants.

COMPLAINT

Plaintiff Pro-Football, Inc. ("Pro-Football," "Washington Redskins," "Redskins," or "the

Club"), through its counsel, for its Complaint against defendants Amanda Blackhorse, Marcus
Briggs-Cloud, Phillip Cover, Jillian Pappan, and Courtney Tsotigh ("Defendants"), alleges as
follows:
NATURE OF THE ACTION

1.

This appeal seeks a reversal of the singular, unprecedented, split decision issued by

the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office ("TTAB" or

"Board"), which ordered the cancellation ofsix federal trademark registrations containing the word
"Redskins," as used in connection with the Washington, D.C. professional football team, on the
ground that these trademarks "may disparage" Native Americans. The TTAB's decision is replete

with errors of fact and law, including its failure to restrict its analysis to the relevant time frame of
1967-1990, when the registrations were first issued. Further, the TTAB's decision violates the First

and Fifth Amendments to the Constitution. This Court need give no deference to the TTAB's flawed
findings, and should reverse the TTAB's order of cancellation.

 Case 1:14-cv-01043-GBL-IDD Document 1 Filed 08/14/14 Page 2 of 35 PageID# 2

2.

The Washington Redskins is one ofthe most storied sports franchises in the United

States. It has, for more than eight decades, continuously used the famous name "Redskins" as the

name of its professional football team and has held federal trademark registrations for nearly fifty
years. This action seeks de novo review, pursuant to 15 U.S.C. § 1071(b), of an administrative
decision by the TTAB in a trademark cancellation proceeding brought by five Native Americans,
captioned Blackhorse v. Pro-Football, Inc, Cancellation No. 92,046,185. By Order dated June 18,
2014,2014 WL 2757516 (the "TTAB Order"), a divided (2-1) TTAB ordered the cancellation ofsix

ofPro-Football's federal registrations for trademarks containing the word "Redskins" (the "Redskins
Marks").

3.

The TTAB action was based on a sparingly used statutory provision. Section 2(a) of

the Lanham Act, 15 U.S.C. § 1052(a), which is rarely invoked to cancel any registered trademarks,
let alone long-held, valuable registrations such as the Redskins Marks. The test under Section 2(a)

for whether a mark "consists of or comprises ... matter which may disparage" turns not on presentday perceptions ofthe matter at issue, but rather on the views of the referenced group at the time of
registration. In this case, the inquiry is strictly limited to whether the Redskins Marks were
disparaging to a substantial composite of Native Americans in a time period ranging from 19671990, when each was registered. The TTAB found that, as ofthe registration date for each Redskins

Mark at issue (one in 1967, three in 1974, one in 1978, and one in 1990), and as supported by "a
preponderance of the evidence," "a substantial composite of Native Americans found the term

REDSKINS to be disparaging in connection with respondent's services during the relevant time
frame of 1967-1990." TTAB Order at *29.

4.

As recognized by the dissenting judge, and as detailed below, the TTAB erred in

numerous respects in taking this extraordinary action, which deprives Pro-Football ofits long-held.

-2-

 Case 1:14-cv-01043-GBL-IDD Document 1 Filed 08/14/14 Page 3 of 35 PageID# 3

extremely valuable rights in its federal registrations for the Redskins Marks. The record evidence

considered by the Board is insufficient to supporta finding ofdisparagement in the pertinent years
(1967,1974,1978, and 1990). As articulated by the dissent: "It is astoundingthat the petitioners
did not submit any evidence regarding the Native American population during the relevant time

frame, nor did they introduceany evidenceor argumentas to whatcomprises a substantial composite
ofthat population thereby leaving it to the majority to make petitioners' case have some semblance
of meaning." Id. at *36 (Bergsman, A.T.J., dissenting).
5.

Indeed, another federal district court has already reviewed and reversed a similar

order of the TTAB, based on a virtually identical record. In Pro-Football, Inc. v. Harjo, 284 F.
Supp. 2d 96 (D.D.C. 2003) (''Harjo''), Judge Kollar-Kotelly held that "the TTAB did not have what
would be considered 'direct' or circumstantial evidence before it, or evidence from which it could

draw reasonable inferences for such a conclusion." Id. at 127. "Ultimately, the evidence in the case
does not answer the legal question ofwhether the trademarks, in the context oftheir use during the

relevant time frames, may have disparaged Native Americans. The evidence chips away at the sides
ofthis legal question but never helps answer it directly." Id. at 145. The Harjo court also ruled that

the defense oflaches applies to Section 2(a) disparagement claims and was met where the petitioners
knew ofthe existence ofthe Redskins Marks, yet waited to bring their case. Id. at 136-45. The U.S.
Court ofAppeals for the District ofColumbia Circuit ("D.C. Circuit") uhimately upheld the district

court's ruling on laches.' Thus, examining the same facts, a sister district court has already ruled
that there is insufficient evidence to show disparagement in the 1967-1990 time period, and both the

' See Harjo, 415 F.3d 44, 50 (D.C. Cir. 2005) (remanding to district court for findings on
application oflaches to youngest petitioner, without ruling on disparagement), on remand to 567 F.
Supp. 2d 46,62 (D.D.C. 2008) (youngest petitioner's claim barred by laches), affd, 565 F.3d 880,
883-86 (D.C. Cir. 2009).

-3-

 Case 1:14-cv-01043-GBL-IDD Document 1 Filed 08/14/14 Page 4 of 35 PageID# 4

district and circuit courts have found that even the shortest applicable delay period ofless than two-

and-a-halfyears gave rise to a sustainable lachesdefenseby Pro-Football. SeeHarjo, 567 F, Supp.
2d at 54-56; Harjo, 565 F.3d at 885-86.

6.

Regardless ofthe TTAB's errors here and the posture of this case as an appeal from

an administrative agency, the Court need not even consider the Board's findings and conclusions. If
either party, as is highly likely, introduces into the record any piece ofnew evidence. Fourth Circuit
precedent mandates that this Court engage in de novo review ofthe entire record. See Swatch AG v.
Beehive Wholesale, LLC, 739 F.3d 150,156 (4th Cir. 2014). Under a de novo standard, the Court

owes no deference to the TTAB's Order.^
7.

This case also raises serious constitutional issues that the TTAB—^because it is not an

Article III court—^properly did not address. For example, the Redskins Marks are extraordinarily
powerful and valuable communicators of information, embodying in a single word or two-word

phrase the entirety of the Redskins' long history and rich tradition in the arena of professional
football. The TTAB's action penalizes the Redskins for communicating to the public based on their
marks' content. The cancellation of the Redskins' valuable registrations carries practical and
financial impact, as discussed infra. The many benefits to a trademark owner that result from federal
registration are meaningful, and their loss comes at a high price. Section 2(a) of the Lanham Act

thus effectively chills constitutionally protected speech. Moreover, Section 2(a) is overly vague and
ambiguous. Finally, the TTAB Order deprives Pro-Football of its due-process rights and is an

unconstitutional taking ofPro-Football's property without just compensation. The Board's actions,

^ In Harjo, where the "substantial evidence" standard applied, the district court held, without
qualification that "the decision ofthe TTAB cannot v^thstand even the deferential level ofjudicial
scrutiny provided by the substantial evidence test." 284 F. Supp. 2d at 128.

-4-

 Case 1:14-cv-01043-GBL-IDD Document 1 Filed 08/14/14 Page 5 of 35 PageID# 5

therefore, amount to governmental action in violation ofPro-Footbairs First and Fifth Amendment
rights under the Constitution ofthe United States.

8.

Pro-Football seeks an Order ofthis Court: (1) reversing the TTAB Order scheduling

the cancellation ofthe Redskins Marks; (2) declaring that the word "Redskins" or derivations thereof

contained in the Redskins Marks, as identifiers ofthe Washington, D.C. professional football team,
do not consist ofor comprise matter that may disparage Native Americans;(3) declaringthat Section

2(a) ofthe Lanham Act, 15 U.S.C. § 1052(a), is unconstitutional, both on its face and as applied to
Pro-Football by the TTAB, under the First Amendment of the U.S. Constitution, and is void for
vagueness; (4) declaring that the TTAB Order violates Pro-Football's rights under the Fifth

Amendment ofthe U.S. Constitution; and (5) declaring that Defendants' petition for cancellation in
the TTAB challenging the Redskins Marks under Section 2(a) was barred at the time it was brought
by the doctrine of laches.
PARTIES

9.

PlaintiffPro-Football, Inc. owns and operates the Washington Redskins football club,

one of the thirty-two (32) National Football League ("NFL") member clubs (the "Member Clubs")

whose teams play professional football games. Pro-Football is a Maryland corporation with its
principal place of business at 21300 Redskin Park Drive, Ashbum, Virginia.
10.

Upon information and belief. Defendant Amanda Blackhorse resides in Tucson,

Arizona.

11.

Upon information and belief, Defendant Marcus Briggs-Cloud resides in Okmulgee,

Oklahoma.

12.

Upon information and belief. Defendant Philip Gover resides in Lebanon, New

Hampshire.

13.

Upon information and belief. Defendant Jillian Pappan resides in Sioux City, Iowa.
-5-

 Case 1:14-cv-01043-GBL-IDD Document 1 Filed 08/14/14 Page 6 of 35 PageID# 6

14.

Upon information and belief, Defendant Courtney Tsotigh resides in Moore,

Oklahoma.

JURISDICTION AND VENUE

15.

This Court has subject matterjurisdiction pursuant to 15 U.S.C. § 1071(b)(1),which

provides that a party dissatisfied with a final decision of the TTAB may institute a new civil
proceeding challenging such a decision. Because Defendants are adverse parties who reside "in a
plurality of districts not embraced within the same State," subject matter jurisdiction, personal

jurisdiction and venue is proper in this Court pursuantto the Leahy-SmithAmericaInventsAct, Pub.
L. No. 112-29 § 9(a), 125 Stat. 284 (enacted Sept. 16,2011) (amending 15 U.S.C. § 1071(b)(1) and
(4) by changing the applicable venue from the U.S. District Court for Washington, D.C. to the U.S.
District Court for the Eastern District of Virginia). This Court also has subject matter jurisdiction
pursuant to 28 U.S.C. §§ 1331 and 1338, and declaratory judgment jurisdiction pursuant to 28
U.S.C. §2201.
BACKGROUND
A.

PROCEDURAL HISTORY

16.

In September 1992, a group ofNative American petitioners filed a petition with the

TTAB to cancel the Redskins Marks.

(T.T.A.B.).

Harjo v. Pro-Football, Inc., Cancellation No. 21,069

The grounds for the Harjo action included claims that the Redskins Marks are

scandalous, may disparage Native Americans, and may bring Native Americans into contempt or
disrepute, in violation of Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a).
17.

On April 2,1999, the Board ordered the cancellation ofthe federal registrations for

the Redskins Marks, finding them to have been disparaging at the time they were registered, during
the time period of 1967-1990. Harjo, 1999 WL 375907, at *38-48 (T.T.A.B. 1999).

-6-

 Case 1:14-cv-01043-GBL-IDD Document 1 Filed 08/14/14 Page 7 of 35 PageID# 7

18.

On September 30,2003, a U.S. District Court for the District of Columbia (Kollar-

Kotelly, J.) reversed the TTAB, ruling that the record evidence did not support a finding of
disparagement during the 1967-1990 time frame. Harjo, 284 F. Supp. 2d at 135-36. The district

court also held that laches was an available defense in Section 2(a) disparagement-cancellation

actions and that the petitioners had waited too long to bring their claims, causing prejudice to ProFootball sufficient to support its laches defense. Id. at 139,144.

19.

On July 15,2005, the D.C. Circuit remanded the case back to the district court for

further factual findings as to the youngest petitioner's delay. Harjo, A\5 F.3d at 50. The D.C.
Circuit never addressed the district court's disparagement ruling.

20.

OnAugust 11,2006, Defendants Amanda Blackhorse, Marcus Briggs-Cloud, Philip

Gover, Jillian Pappan, and Courtney Tsotigh petitioned theTTAB to cancel thefederal registrations
ofthe Redskins Marks. Blackhorse, Dkt. No. 1 (the "Petition"). The basis for Defendants' Petition,

as in Harjo, was the claim that the Redskins Marks are scandalous, may disparage Native
Americans, andmaybring Native Americans intocontempt or disrepute in violation of Section 2(a)
of the Lanham Act, 15 U.S.C. § 1052(a).

21.

The registrations of the Redskins Marks that Defendants sought to cancel cover

entertainment servicesin the formofthe performance of professional football games, whichare seen

and followed by millions of football fans. The Redskins Marks at issue all contain the word
"Redskins" or a derivation thereof:

•

THE REDSKINS, stylized. RegistrationNo. 836,122, issued September 26, 1967;

•

WASHINGTON REDSKINS, Registration No. 978,824, issued February 12,1974;

•

THE WASHINGTON REDSKINS & DESIGN, Registration No. 986,668, issued
June 18, 1974;

•

THE REDSKINS & DESIGN, Registration No. 987,127, issued June 25,1974;
-7-

 Case 1:14-cv-01043-GBL-IDD Document 1 Filed 08/14/14 Page 8 of 35 PageID# 8

•

REDSKINS, Registration No. 1,085,092, issued February 7,1978; and

•

REDSKINETTES, Registration No. 1,606,810, issued July 17,1990.

Copies of the registrations are attached hereto as Exhibits 1-6.

22.

On September 26,2006, Pro-Football filed an answer denying all ofthe allegations

contained in the Petition, and asserted twelve affirmative defenses, including, inter alia, defenses
that granting the Petition would result in the violation of Pro-Football's constitutional rights under
the First and Fifth Amendments. Blackhorse, Dkt. No. 4.

23.

On September 28, 2006, the Board agreed to suspend proceedings in Blackhorse

pending final disposition of the related Harjo case. Id., Dkt. No. 6.

24.

On June 25, 2008, the district court in Harjo ruled in favor of Pro-Football on its

laches defense as to the remaining petitioner, whose delay period spanned twenty-nine months to

seven years, nine months, depending on the specific registration at issue. Harjo, 567 F. Supp. 2d at
62.

25.

On May 15, 2009, the D.C. Circuit upheld the district court's decision, explicitly

noting that, given the facts present and that the petitioner had been aware of the Redskins Marks
during his delay period, "no reason" existed for even the twenty-nine month delay. Harjo, 565 F.3d
at 885.

26.

On November 16, 2009, the Supreme Court of the United States denied the Harjo

petitioners' petition for writ of certiorari, officially ending the Harjo case.
27.

In March 2010, the Blackhorse proceedings resumed. Dkt. No. 23.

28.

During discovery, the parties entered into two joint stipulations. The first joint

stipulation, dated March 11,2011, stated in relevant part that the evidentiary record from the Harjo

TTAB case would be admissible in the Blackhorse proceeding, subject to limited objections such as
relevance. Id., Dkt. No. 31. The second joint stipulation, dated December 22, 2011, set forth
-8-

 Case 1:14-cv-01043-GBL-IDD Document 1 Filed 08/14/14 Page 9 of 35 PageID# 9

various financial figures concerning the NFL's and the Redskins' revenues, expenditures, and
valuations pertinent to Pro-Football's laches defense. Id., Dkt. No. 45.

29.

By interlocutory order, Blackhorse, Dkt. No. 39 (T.T.A.B. May 5,2011) (the "May 5,

2011 Order"), the TTAB, relying on its status as an administrative agency and not an Article III
court, decided that it was not empowered to entertain the Redskins' constitutional defenses. The
TTAB, therefore, did not attempt to reconcile its decision or findings with the U.S. Constitution. In
that Order, the Board also struck several ofthe affirmative defenses asserted by the Redskins. The
TTAB specifically noted, however, that "[f]or purposes of clarity, our decision is intended to
preserve [Pro-Football's] option to argue for application of the relevant defenses," including the

constitutional defenses, "on appeal." Id. at 18; see also TTAB Order at *1 n.l (Pro-Football's
"Constitutional challenges ... are preserved for appeal").
30.

Also by interlocutory order, Blackhorse, Dkt. No. 40 (May 31, 2011) (the May 31,

2011 Order"), the TTAB ruled that the inquiry into disparagement properly looks to the perceptions
of the targeted or referenced group, as measured by a substantial composite thereof, and that the

views ofthe general public are not relevant. Id. at8-9.^ The Board also held that the relevant time
fi-ame for assessing whether the Redskins Marks violate Section 2(a) is the date of the issuance of
each registration, as opposed to the filing date ofthe Petition in 2006, and that the requisite prooffor
each ofthose years is the preponderance-of-the-evidence standard. M at 11,3. The TTAB further

^ The TTAB Order uses the terms "disparaging" and "disparage" to encompass the full statutory
language "may disparage ... or bring them into contempt or disrepute." In the May 31,2011 Order,
at 4, the TTAB held that the analysis for assessing whether a mark is disparaging is virtually the
same as that for evaluating whether the mark "brings [Native Americans] into contempt or
disrepute." As set forth infra., in addition to disparagement, Pro-Football seeks de novo review on
the statutory grounds of "contempt" and "disrepute."

-9-

 Case 1:14-cv-01043-GBL-IDD Document 1 Filed 08/14/14 Page 10 of 35 PageID# 10

ruled that the question of disparagement is to be answered in view of the context of the marks' use
and the services they identify. Id. at 10,

31.

Also in the May 31, 2011 Order, the TTAB held that for calculating laches, the

operative date is the date of registration and the laches inquiry must balance the length and the
reasonableness ofthe delay against the detriment resulting from the delay. Id. at 12-18. The TTAB

also ruled that economic prejudice can result from mere the investment in and promotion ofa mark
during the period of delay. Id. at 16-17.

32.

Although having raised in their Petition claims that the Redskins Marks "consist[s] of

or comprise[s] scandalous matter" and that the symbols contained in Registration Nos. 986,668 and
987,127, are scandalous, disparaging, or bring Native Americans into contempt or disrepute, see

Petition H1, Defendantsnever presented evidence or argument in support ofthese claimsbeforethe
TTAB and thus have waived them."^
33.

Following several years ofdiscovery, motion practice, submissions ofevidence, final

briefing, and oral argument, on June 18, 2014 the TTAB scheduled the cancellation of the

registrations for the Redskins Marks based on an improper finding that "a substantial composite of
Native Americans found the term REDSKINS to be disparaging in connection with respondent's
services during the relevant time frame of 1967-1990." TTAB Order at *29.
B.

HISTORY AND FAME OF THE VALUABLE WASfflNGTON REDSKINS
MARKS

34.

The team name "Redskins" was adopted by the NFL franchise over eighty years ago,

and is among the oldest ofteam names in any professional sports league. In 1932, George Preston

Marshall purchased the NFL franchise now named the Redskins. The following year the team, then

^ In the TTAB Order, the Board noted that the claim ofscandalousness and all claims relating to
the Native American imagery in the Redskins Marks were not part of the case before it. Id. at *7.

-10-

 Case 1:14-cv-01043-GBL-IDD Document 1 Filed 08/14/14 Page 11 of 35 PageID# 11

located in Boston and called the "Braves," moved from Braves Field to Fenway Park and was

renamed "TheRedskins" byMarshall to distinguish it from theprofessional baseball team playing in
Boston. At the time the name "Redskins" was chosen for the team, four players—Louis Weller,
John Orien Crow, David Ward and Larry Johnson—^and the team's head coach William"Lone Star"
Dietz identified themselves as Native Americans. Since 1933, the Club has been known as the

WashingtonRedskins or the Redskins, and has built tremendous recognition in the RedskinsMarks.
35.

The Redskins have been leaders in the entertainment of the public through

professional football games, broadcast via television and radio nationwide to millions of fans. The

Redskins have appeared in eleven NFL championship games (including five Super Bowls),and won
five ofthem (including three Super Bowls)—^the first following the 1937 season and the most recent
following the 1991 season.

36.

Completely ignored by the TTAB Order are the history and fame ofthe Redskins and

the longstanding fame of the Redskins Marks—in nationwide use for almost three-and-a-half
decades before being registered. This renown is perhaps best demonstrated by the level ofinterest in
the Redskins expressed by members ofthe public nationwide. On any given Sunday during football
season, many D.C. metropolitan-area residents unite for several hours to follow the Redskins game.
Throughout the country. Redskins fans, including Native Americans, follow the team through
newspaper sports pages, electronic media, local and national television and radio broadcasts of

Redskins games, and, increasingly, broadcasts delivered via NFL satellite and mobile streaming
packages, which allow participating households to view games not televised nationally. Corporate

sponsors vie to associate their companies and products with the Redskins Marks, and merchandise
bearing the Redskins Marks is widely sold, purchased, and recognized.

-11-

 Case 1:14-cv-01043-GBL-IDD Document 1 Filed 08/14/14 Page 12 of 35 PageID# 12

37.

The history of the Redskins' success and contribution to the community and the

public at large is not limited to football-relatedactivities. Redskins' owners, players, coaches, and
other personnel have been involved in civic and charitable activities in the Washington, D.C.
community and the nation at large. The Club's national renown is also demonstrated by the
historical and continuing recognition of the Club and attendance at games and team events by
prominent political leaders.

38.

The Redskins Marks are inherently valuable communicative symbols through which

the public identifies the team and its players, both past and present, and the Club's storied history.
The Redskins Marks do not merely identify the current team, but incorporate and communicate the
entirety of the team's history and fame. They do so not only today, but since the dates each
registration issued, the first of which was thirty-four years after the mark's first commercial use.
C.

THE VALUABLE BENEFITS OF FEDERAL REGISTRATION OF THE
REDSKINS MARKS

39.

Pro-Football's federal trademark registrations confer valuable substantive and

procedural rights and substantial government benefits, including but not limited to those described
below.

40.

A federal registration, as evidence of the trademark owner's constructive use of its

mark, confers nationwide priority—from the filing date of the registration—^upon a registrant, as
against any third party claiming first use of an identical or similar mark.
41.

A certificate of registration of a mark on the principal trademark register is prima

facie evidence of: (1) the validity ofthe registered mark; (2) the registrant's ownership ofthe mark;
and (3) the registrant's exclusive right to use the registered mark in commerce or in connection with
the goods or services specified in the certificate.

-12-

 Case 1:14-cv-01043-GBL-IDD Document 1 Filed 08/14/14 Page 13 of 35 PageID# 13

42.

Because the Redskins Marks have been federally registered for well over five years,

the marks are "incontestable" as that term is defined in Section 15 of the Lanham Act, 15 U.S.C.

§ 1065. To the extent the right to use a registered mark has become incontestable under Section 15,

the registration is conclusive evidence of: (1) the validity of the mark; (2) the registration of the

mark; (3) the registrant's ownership of the mark; and (4) the registrant's exclusive right to use the
mark in commerce.

43.

In a federal trademark-infringement action, the owner ofa registered trademark may

be entitled to treble profits and damages and attorneys' fees, if successful against the defendant
infiinger.

44.

The owner of a federally registered trademark, upon exparte application, may be

granted a court order authorizing theseizure ofcounterfeit goods andan award oftreble profits and
damages or statutorydamages, as well as attorneys' fees.
45.

Underthe federal anti-dilution statute, registration affords several significant, tangible

benefits to owners ofdistinctive and famous marks such as the Redskins Marks. Firsts a trademark

owner cannot obtain monetary relief under federal anti-dilution law without a registration. By

contrast, a registrant who prevails on a dilution claim can recover treble profits and damages and
attorneys' fees. Second, the existence of a registration is a factor to be considered in determining
whether a mark is distinctive and famous—^a threshold inquiry for dilution. Federal registration

therefore helps trademark owners prove a mark's strength so as to sustain a dilution claim. Third,
ownership of a federal registration immunizes the registrant from suit understateanti-dilution law.
46.

A federal trademark registration givesthe registrantthe rightto use the symbol"®",

which affords notice to the public thatthedesignation is beingusedas a trademark andthuspermits

-13-

 Case 1:14-cv-01043-GBL-IDD Document 1 Filed 08/14/14 Page 14 of 35 PageID# 14

the registrant, in any suit for infringement, to collect profits and damages without proof of actual
notice.

47.

No article of imported merchandise that copies or simulates a registered trademark

without authorization ofthe trademarkowner may be admitted into the United States by the United
States Customs Service. In order to aid the Customs Service in enforcing this regulation, trademark

registrants mayrecord theirtrademark-registration certificates withtheCustoms Service, pursuant to
15U.S.C.§ 1124.

48.

The owner of a federal trademark registration may invoke the dispute policy of

Network Solutions, Inc. in order to prevent the adoption and use of unauthorized and infringing
Internet domain names.

49.

The TTAB's ordered cancellation ofthe RedskinsMarks woulddeprivePro-Football

of the valuable benefits it has enjoyed for decades as a federal trademark registrant.
D.

SECTION 2(a) OF THE LANHAM ACT

50.

Section 2(a) ofthe Lanham Act, 15 U.S.C. § 1052(a),provides, in relevant part, that

no trademark shall be registered on the principal register that "[c]onsists ofor 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."

51.

Neither the Lanham Act nor its legislative history providesany guidancefor defining

the term "disparage" as used in Section 2(a).

52.

The term "disparage" as used in Section2(a)was explicitlyacknowledgedby the U.S.

Patent and Trademark Office and the legislators debating the enactment of this section of the

LanhamAct to be a highlysubjective term that wouldresultin severeproblemsin itsapplication. In
the wordsof LeslieFrazer,AssistantCommissioner ofPatentsduringthe congressional hearings on
-14-

 Case 1:14-cv-01043-GBL-IDD Document 1 Filed 08/14/14 Page 15 of 35 PageID# 15

Section2(a): "the use of [the word 'disparage'] in this connection is going to cause a great deal of
difficulty in the PatentOffice,because, as someone else has suggested, that is a verycomprehensive
word, and it is always going to bejust a matter ofthe personal opinion ofthe individual parties as to
whether they think it is disparaging."
53.

As the TTAB has explicitly acknowledged in an unrelated case, assessing whether

any mark, including the Redskins Marks, may be disparaging "is necessarily a highly subjective"
determination. In re Mines,32 U.S.P.Q.2d 1376,1994 WL 587037, at *2 (T.T.A.B. Sept. 23,1994).
54.

The inclusion ofthe term "may" in conjunction with the word "disparage" adds to the

vagueness of the term.
THE REDSKINS MARKS SHOULD NOT BE CANCELLED

A.

ERRORS AND OMISSIONS IN THE TTAB ORDER

55.

For the TTAB to cancel, based on the disparagement, contempt or disrepute

provisions of Section 2(a) of the Lanham Act, an incontestable mark that has been in use for more

than eight decades and validly registered for over four-and-a-half decades, is an exceedingly rare and
drastic measure—indeed, the TTAB has never before cancelled such a long-registered mark.
1.

Under The Applicable
Standard Of Review. The Court Does Not Give
Any Weight To The TTAB's Factual Or Legal Findings

56.

Under controlling precedent, see Swatch, 739 F.3d 150, the standard ofreview in this

case will be de novo if, as is exceedingly likely, any party opts to introduce into the record any new
evidence. See also, e.g., TimexGroup USA, Inc. v. Focarino, No. l:12-cv-1080,2014 WL 130977,
at *1-2 (E.D. Va. Jan. 13, 2014) (applying Swatch)', ZAO Odessky Konjatschnyi Zawod v. SIA
"BaltmarkInvest",^o. l:12-cv-515,2014 WL785295,at*11 n.7(E.D. Va.Feb.21,2014)(same).

Under a de novo standard, the Court reviews the entire evidentiary record anew, as ifthe case were

-15-

 Case 1:14-cv-01043-GBL-IDD Document 1 Filed 08/14/14 Page 16 of 35 PageID# 16

filed as one oforiginaljurisdiction. The Courtthus would not give any weightto the factual or legal
findings in the TTAB Order.

57.

This review differs from that in Harjo, where the district court reversed the TTAB's

factual findings under a "substantial evidence" standard. 284 F. Supp. 2d at 119-20. The
"substantial evidence" standard would be applicable here only in the remote event that no party
supplements the record with any new evidence. Notably, the Harjo court held that "the decision of

the TTABcannot withstandeven the deferential level ofjudicial scrutiny providedbythe substantial
evidence test." 284 F. Supp. 2d at 128.
2.

The TTAB's Findings Regarding Disparagement Constitute Errors Of Law
And Are Based On Erroneous Findings Of Fact

58.

Even under the "substantial evidence" standard, however, the errors of fact in the

TTAB Order would not survive review. The errors of law, always reviewed de novo, would
similarly be rejected. The TTAB's legal conclusions were in error and were based on factual

findings that are not supported by substantial evidence, nor by a preponderance oftlie evidence, and
are otherwise insufficient to support cancellation of the Redskins Marks under Section 2(a).
59.

For example, the TTAB was internally inconsistent by relying on evidence of the

general public's perceptions ofthe term "Redskins," such as dictionary usage labels and media use,
even though it had ruled that the viewpoint ofNative Americans was the only relevant perspective

from which to assess the Redskins Marks under Section 2(a). Compare, e.g., TTAB Order at *4 n.15
with May 31,2011 Order at 8.

60.

The Board erred by holding that the Club's intent in selecting and using the

"Redskins" name is irrelevant in determining whether the meaning of the Redskins Marks is
disparaging. TTAB Order at *10, *13.

-16-

 Case 1:14-cv-01043-GBL-IDD Document 1 Filed 08/14/14 Page 17 of 35 PageID# 17

61.

The TTAB erred by concluding that the relevant group for assessing whether a mark

is disparaging is a "substantial composite" of Native Americans, but failing to define the term
"substantial composite." Id. at *5; see also id. at *36 (Bergsman, A.TJ., dissenting) (petitionersdid

not "introduce any evidence or argument as to what comprises a substantial composite of that
population").

62.

The TTAB erred by finding that 30% of the Native American population "without

doubt" constituted a "substantial composite" thereof. Id. at *29. Highlighting this error is its direct

conflict with the finding ofthe Harjo district court, having evaluated a virtually identical evidentiary

record, that a conclusion that 36.6% ofthe Native American population amounted to a "substantial

composite" was "difficult to support in the context of this case." 284 F. Supp. 2d at 133 n.32.
63.

The TTAB erred by relying on evidence of a resolution passed by the National

Congress of American Indians ("NCAI") in 1993 that a district court had previously found to be

"irrelevant to the calculus," id. at 135, as it fell outside the only time period that the Board itself
determined was relevant. In the May 31,2011 Order, at 11, the Board held that the only time period
relevant to the disparagement question was the date ofissuance ofPro-Football's registrations (1967,
1974, 1978, and 1990). Nonetheless, in the TTAB Order, the Board improperly relied on, and

accorded undue probative weight to, the 1993 resolution, which cannot be used to ascertain public
opinion in 1967 and the other dates of registration. TTAB Order at *17-18, *27-29. The 1993
resolution is not an accurate reflection of views held in 1967,1974,1978, and 1990, both because:

(1) it post-dates the registration dates; and (2) it unnaturally captures sentiments manipulated by an
intervening event—^the 1992 filing of the Harjo petition to cancel the Redskins Marks. This

inflammatoryintervening occurrence distorted the perceptionsofNativeAmericansand thus cannot

-17-

 Case 1:14-cv-01043-GBL-IDD Document 1 Filed 08/14/14 Page 18 of 35 PageID# 18

and does not accurately reflectthe viewsof the NativeAmerican population before 1992, let alone
during the 1967-1990 time frame.

64.

The Board erred in its finding that the 1993 resolution is evidence of the views of

30%of theNative American population. Id. *28-29. TheBoard relied upon a series ofinferences to
findthattheNCAImember tribescomprised 30%of theNative American population in 1993. The
Board then ignored evidence that the resolution at issue required that only one-third ofall member

tribes be presentto pass it, with no evidence in the recordofwhich member tribes were present for
the vote. Further, there is no record evidence that a resolution required a unanimous vote to pass.
(A mere majority vote, for instance, would translate to far less than 30% of the total Native
American population.)

65.

The TTAB erred in assuming that the individuals occupying a leadership role in seven

Native American organizations—^who, in 1972, met v^th then-Redskins owner Edward Bennett

Williams concerning the "Redskins" name—^attended that meeting on behalf of their respective
memberships. Id. at *18-20, *27-27. The record is devoid of any evidence showing that the views
ofthese seven individuals accurately reflected the views of—or, indeed, were even shared by—^the

membership body of their respective groups. In improperly equating mere individual attendance
with organizational support, the TTAB erred in assuming there to have been a substantial composite
of Native Americans opposed to the "Redskins" name in 1972.
66.

The TTAB erred in considering the dictionary usage labels as reflecting a "clear

trend" toward employing the terms "offensive" or "disparaging," despite record evidence showing

that only two separate dictionaries before 1980 bore such usage labels.^ Id. at *13. The Board's

^ The record contains copies of, or list-citations to, several editions of the same dictionaries,
published in subsequent years with the same or similar usage labels.

-18-

 Case 1:14-cv-01043-GBL-IDD Document 1 Filed 08/14/14 Page 19 of 35 PageID# 19

characterizationalso squarely contradicts the district court's assessment ofthe identical evidenceas
"at best, equivocal." Harjo, 284 F. Supp. 2d at 130. The TTAB's erroneous characterization caused
the Board improperly to accord "little weight" to the opinions of Pro-Football's linguistics expert
witnesses, because they conflicted with the Board's own conclusion. TTAB Order at *12 n.l84.
67.

The TTAB erred in discounting the significance ofthe qualifier "often" in dictionary

usage labels and the importance of context, as recognized by dictionary editors, in assessing the
nature of the term "redskins." TTAB Order at * 12, *26 n.l79.

68.

The TTAB erred in concluding, without record support, that the drop-off in general

use of"redskins" from the 1960s forward indicates recognition by the general public that the use of
the term "redskins" was in disfavor. Id. at *29; see also id. *39-40 (Bergsman, A.T.J., dissenting)
(finding this conclusion "not supported by the record"). The district court in Harjo previously
criticized the Board for having "merely assumed" this negative nexus: "There is no evidence in the
record to support this finding one way or the other." 284. F. Supp. 2d at 131. The TTAB's

erroneous conclusion caused the Board improperly to accord "little weight" to the opinions of ProFootball linguistics expert witnesses, because they differed from the Board's own conclusion.
TTAB Order at *26 n.184. It also improperly placed the burden of proving non-disparagement on
Pro-Football.

69.

The TTAB erred in holding that laches does not apply to a disparagement claim

brought on behalf ofa group, id. at *31-32, in direct contravention of the Harjo court's ruling that

laches is an available defense to such claims, 284. F. Supp. 2d at 137-39.
70.

The TTAB erred in concluding that there was no economic prejudice to the Club

during the period of Defendants' delay because of the pendency of the Harjo case, seemingly

-19-

 Case 1:14-cv-01043-GBL-IDD Document 1 Filed 08/14/14 Page 20 of 35 PageID# 20

ignoringthe fact that the delay period includedyears followingjudicial rulingsin Harjo that favored
Pro-Football. TTAB Order at *33-34.

71.

As previously stated, the TTABOrder schedulingcancellationofthe RedskinsMarks

deprives Pro-Football of its famous, long-held federal trademark registrations without sufficient
basis under the Lanham Act, against both the plain meaning and underlying intent of that statute.
The Redskins Marks, as designations of the professional football team, do not disparage Native
Americans or bring them into contempt or disrepute under any analysis of the terms "disparage,"
"contempt," or "disrepute." To the contrary, the name "Redskins," when used in association with

professional football—as it has been for over eighty years—denotesonly the team and connotes the
history and tradition of the Club. As such, it embodies positive attributes, such as strength,
sportsmanship, and physical prowess, and evokes emotional reactions associated witli the
competition and entertainment provided by professional football.
3.

The Board Never Considered Pro-FootbalFs Constitutional Arguments

72.

As previously stated, Pro-Football explicitly raised its constitutional arguments at

several stages of the proceedings, brought under the First and Fifth Amendments to the U.S.

Constitution, thereby preserving all such constitutional arguments for this action. See May 5,2011
Order at 15-16. The Board properly determined that it was not empowered to address Pro-Football's

constitutional arguments, id. at 16, but expressly "intended to preserve [Pro-Football's] option to"
present its constitutional arguments "on appeal." Id. at 17; see also TTAB Order at *1 n.l (Pro-

Football's "Constitutional challenges ... are preserved for appeal").

-20-

 Case 1:14-cv-01043-GBL-IDD Document 1 Filed 08/14/14 Page 21 of 35 PageID# 21

B.

THE REDSKINS MARKS DO NOT DISPARAGE NATIVE AMERICANS^

73.
things:

The Redskins Marks do not disparage Native Americans because, among other

(1) there is insufficient evidence to prove that in 1967, 1974, 1978, or 1990 Native

Americans viewed the team name "Redskins" as disparaging; (2) the word "redskin" itself is not
disparaging per se^ as its use by Native Americans during the relevant 1967-1990 time period
illustrates; and (3) the Redskins Marks as used by Pro-Football have developed a distinctive, non-

disparaging meaning in the context ofprofessional sports that refers only to the football team in the
Washington D.C. area, and this meaning was well established by 1967, more than thirty years after
the adoption and first use of the "Redskins" name.
1.

There Is No Record Evidence Showing That In 1967-1990 A Substantial

Composite Of Native Americans Considered "Redskins" To Be Disparaging

74.

The record is devoid ofevidence as to how many Native American tribes there were

in the United States in 1967,1974,1978, or 1990 and as to how many tribes considered the team
name "Redskins" to be disparaging during the 1967-1990 time frame.

75.

The record is devoid of evidence as to how many Native Americans lived in the

United States in 1967,1974,1978, or 1990 and as to how many Native Americans considered the
team name "Redskins" to be disparaging during the 1967-1990 time frame.

^ The Court need not even reach Defendants' disparagement claim orPro-Football's constitutional
defenses in light of Pro-Football's laches defense, set forth infra. The D.C. Circuit in Harjo
explicitly held that, in view ofthe circumstances, where a petitioner is on notice ofa disparagement
claim, it is his burden to file "immediately." 565 F.3d at 885. There, the D.C. Circuit upheld a
laches claim based on a 29-month delay. Id. While the shortest delay period among Defendants is
11 months, the underlying rationale is the same. Defendants were each "fully aware of both the
team's name and the cheerleaders' name," and thus there is "no reason" why they "failed to
complain immediately about the registration[s]." Id.

-21 -

 Case 1:14-cv-01043-GBL-IDD Document 1 Filed 08/14/14 Page 22 of 35 PageID# 22

2.

The Word "Redskin" Was Not In 1967-1990^ And Is Not Disparaging Per Se

76.

Even without considering the context of"Redskins," the word "redskin" was not and

is not per se disparaging.

77.

Dictionary evidence indicates that the word "redskin" in general is not disparaging.

Editorial designations in the form of dictionary usage labels can be valuable indicators of
contemporary perceptions of a particular word at a particular point in time. Dictionaries extant

before 1980, when Pro-Football's earlier registrations issued, typically did not contain any usage
label for the word "redskin," thus indicating the term in general to be unremarkable and not

disparaging. Further, the TTAB improperly discounted the significance ofthe qualifier "often" in
those negative usage labels where it appeared, and the context-driven analysis demanded thereby.
See TTAB Order at *12, *26 n.l79.

78.

Literary and cinematographicuses of"redskin" as an ethnicdenotatorreflectusageof

the term as a neutral term synonymous and interchangeable with "Native American" or "Indian."
79.

The TTAB erred by discounting evidence from Native American reservations

showing that the word "redskin," when used in other contexts, is not disparaging. Throughout the

relevant 1967-1990 time period, Native Americans have used the word "redskin" and "Redskins,"

other than for the Washington, D.C. professional football team. See, e.g., id. *36-38 (Bergsman,
A.T.J., dissenting).
3.

The Redskins Marks Do Not Disparage Native Americans When Viewed In
The Context Of Professional Sports. Where The Word "Redskins" Has

Developed A Distinctive Meaning Referring To The Washington. D.C.
Professional Football Team

80.

A mark's registrability under Section 2(a) must be considered in the context of the

mark's overall use in conmierce.

-22-

 Case 1:14-cv-01043-GBL-IDD Document 1 Filed 08/14/14 Page 23 of 35 PageID# 23

81.

A mark is not disparagingunder Section2(a) where the relationshipbetweenthe mark

and the goods or services used in connection with the mark is not in and of itself disparaging,
82.

Pro-Football uses the term "Redskins" in the context ofprofessional football and has

done so since 1933,thirty-four years before the registration date ofthe first ofthe RegisteredMarks.
83.

Professionalfootball games are neither ofquestionable morality norper se offensive

to or prohibited by Native American religious or cultural practices.
84.

Professional football games enjoy nationwide recognition, including among Native

Americans.

85.

When used in connection with professional football games, the word "Redskins"

bears only positive associations.

86.

Neither Pro-Football, nor any team member, has ever engaged in behavior perceived

as disparaging Native Americans.

87.

Even if the term "redskin," used in singular, lower case form, refers to an ethnic

group, the term is not disparaging when employed as a proper noun, as a team name, in the context
of professional football.
88.

The TTAB itself has recognized that the availability of an alternate meaning of a

mark is important to the determination of whether the mark, as used, is disparaging.
89.

As stated previously, through long, substantial and widespread use, advertising,

promotion, and media coverage nationwide over eight decades, Pro-Football's Redskins Marks have

acquired a strong and distinctive denotative meaning identifying the Club's entertainment services in
the context of professional football. This meaning had attached to the Redskins Marks by 1967,

when the first registration issued—^more than thirty years after the Club's first use ofthe "Redskins"
team name.

-23-

 Case 1:14-cv-01043-GBL-IDD Document 1 Filed 08/14/14 Page 24 of 35 PageID# 24

90.

As a result ofthis strong secondary meaning, "Redskins" was perceived in 1967, and

today, to be a distinct denominative word, entirely separate from "redskin" as denoting ethnicity.
Even though deriving from the original, ethnic meaning of "redskin," "Redskins" had become, by

1967 at the latest, a separate, entirely positive term used in context solely to identify the professional
Washington, D.C.-aiea football team.

91.

Today, more than four-and-a-half decades after its original registration, the use of

"Redskins" as a denominative designation for the professional football team is even more deeply
ingrained in popular culture, and the distinctive meaning of "Redskins" is even more firmly
established in the English language.

92.

By failing to acknowledge the separate meaning in 1967, after more-than-three

decades of popular use, of the term "Redskins" as identifying the professional football team—
irrespective of the team's continued allusions to the core, ethnic meaning of"redskin"—^the Board
erred as a matter of law.

4.

Native Americans Support The Team Name

93.

The TTAB has recognized the value, to the ultimate determination of whether the

challenged mark violates Section 2(a), of factual evidence comprising reactions of persons in the
allegedly disparaged group.

94.

Native Americans recognize the goodv^dll and positive attributes that accompany the

team name "Redskins" and advocate retention of the "Redskins" name and support the team.

95.

Defendants have conceded that they speak only for themselves and not on behalfofor

with the support of any tribe.

96.

The TTAB erroneously discounted evidence that there are Native Americans,

including tribal chiefs and recognized leaders, who react positively to "Redskins" as used to denote

-24-

 Case 1:14-cv-01043-GBL-IDD Document 1 Filed 08/14/14 Page 25 of 35 PageID# 25

the professional football teamfrom Washington D.C., including during the relevant timeperiod of
1967-1990, and have supported the team name.
5.

The Public Uses "Redskins^* To Identify And Associate With The Club

97.

"Redskins" has been used extensively by the public to identify the professional

football team from Washington D.C.

98.

Year after year, merchandise bearing the Redskins Marks has been purchased by

consumers in large quantities, indicating that many members of the consuming public desire to
associate themselves with the Washington Redskins by purchasing and wearing or using products
bearing the Redskins Marks.

99.

Newspapers feature the team name "Redskins" in headlines and throughout sports

articles, and have continued to do so, solely as a term ofreference for the professional football team

and not for persons of Native American descent. As noted supra, corporate sponsors actively
associate themselves each year with the Redskins brand. Similarly, United States Presidents and

Vice Presidents have openly and publicly associated themselves with the Washington Redskins.
6.

The Club's Positive Intent In The Selection And Usage Of The Team Name
Precludes Disparagement Under Section 2(a)

100.

The TTAB erred by holding that the Club's positive intent in its use and selection of

the team name "Redskins" was not relevant to the disparagement inquiry, despite testimony by
experts retained by both sides that the word "disparage" requires intent on the part of the speaker.
101.

Disparagement has been defined as the utterance of a statement that the speaker

intends to be understood as demeaning, deprecatory, or belittling. The focus thus is on the intent of
the speaker. This focus on the speaker's intent is required by the First Amendment, which considers
whether the speech itself is protected, regardless of the subjective feelings of listeners.

-25-

 Case 1:14-cv-01043-GBL-IDD Document 1 Filed 08/14/14 Page 26 of 35 PageID# 26

102.

Pro-Football's intent in adopting the team name was entirely positive. As Pro-

Football has publicly stated: "Over the long history of the Washington Redskins, the name has

reflected positive attributes of the Native American such as dedication, courage and pride." The
Club has continuously represented Native Americans in a "reserved and tasteful" manner.
C.

THE REDSKINS MARKS DO NOT BRING NATIVE AMERICANS INTO
CONTEMPT OR DISREPUTE

103.

Defendantsbear the burdenofprovingthatthe Redskins Marksas designations ofthe

team may bring Native Americans into contemptor disrepute under Section 2(a).
104.

For the reasonsstated supra regarding disparagement, the evidence doesnot supporta

de novo conclusion that, in 1967-1990, the Redskins Marks brought Native Americans into
contempt or disrepute.

105.

Likewise, the TTAB's finding that the Redskins Marks "may bring Native Americans

into contempt or disrepute" was based on the same evidence it considered to conclude that the

Redskins Marks "may disparage" Native Americans. TTAB Order at *7 n.33. Because the TTAB's
legal and factual conclusions were in error, and for the reasons set forth herein, there is not

substantial evidence showing that the Redskins Marks bring Native Americans into contempt or
disrepute.
D.

CANCELLATION OF THE REDSKINS MARKS VIOLATES THE FIRST AND
FIFTH AMENDMENTS OF THE U.S. CONSTITUTION

106.

The TTAB declined to consider Pro-Football's defenses brought under the U.S.

Constitution in construing Section 2(a) of the Lanham Act.
1.

Cancellation Of The Redskins Marks Violates The First Amendment

107.

Trademarks are constitutionally protected commercial speech.

A trademark

communicates a virtually unlimited range ofmessages. In the complex commercial world that has
developed over the past century, a trademark is a shortcut, a book reducedto a singleword or phrase,
-26-

 Case 1:14-cv-01043-GBL-IDD Document 1 Filed 08/14/14 Page 27 of 35 PageID# 27

communicating the quaUty, value, producer, sponsor,and limitless other attributesof a product or
service.

108.

The Redskins Marks, moreover, are deserving of even greater protection than pure

commercial speech, which merely proposes a commercial transaction. Trademarks—particularly
marks that have been so long-held and are as indisputably famous as the Redskins Marks—are core
speech, representing virtually infinite expressionthrougha mere symbol,phrase,or individualword.
Pro-Footballand the general public use the Redskins Marks to invokethe historyand storiedsuccess

ofthe Club,and the marks evokeemotionalresponsesfrom spectatorsand fans. Thus, the Redskins
Marksconsist ofspeechmore akin to a film, novel, or work ofart than to a mere proposal to engage
in a commercial transaction.

109.

The provisions of Section 2(a) of the Lanham Act relied upon by the TTAB stand

apartfromthe general regulatory schemeof the Act, whichis designed generallyto review, register,
and then accord protection to designations functioning as trademarks. The disparagement and
contempt/disreputeprovisions ofSection 2(a) do not test for basic trademark functionality. Indeed,
it cannot be disputed that the Redskins Marks have the necessary attributesto functionas trademarks

and therefore qualify for federal trademark registration: they are famous marks that have been
registered for up to forty-seven years and in which Pro-Football has worked to establish extremely
valuable rights for over eighty years.
110.

Rather, because it targets the so-called "disparaging," "contempt[uous]," or

"disreput[able]"aspectsofa mark. Section2(a) regulatesthe actualcontentofa mark's message and
distinguishes between marks on the basis of content.

111.

Section 2(a) conditions the granting ofthe benefits offederal trademark registration

upon the registrant not exercising constitutionally protected free speech rights. Conditioning a

-27-

 Case 1:14-cv-01043-GBL-IDD Document 1 Filed 08/14/14 Page 28 of 35 PageID# 28

benefit on the basis of speech content disadvantages certain speech and is as offensive to the U.S.
Constitution as a direct prohibition ofspeech. The government may not withhold a benefit from the

Club or anyone else on a basis that impinges upon the right of free speech.
112.

Section 2(a), both on its face and as applied to Pro-Football by the TTAB Order, is an

impermissible content-based restriction inherently violative of the First Amendment. The TTAB

Order for the cancellation ofthe Redskins Marks would deny Pro-Football the valuable benefits of
federal registration based solely on the content of the protected speech contained in the Redskins
Marks.

113.

No governmental interest has been asserted to justify such severe, constitutionally

offensive injury to Pro-Football.

114.

The terms "disparage," "may disparage,""contempt," "disrepute," and "may bring...

into contempt or disrepute"—^which the TTAB acknowledges are not defined in the statute or in its
legislative history—are unconstitutionally vague. The statutory language of Section 2(a) fails to
provide people of ordinary intelligence a reasonable opportunity to understand what conduct it
prohibits, and therefore conveys no ascertainable standards for trademark owners to follow. The

statutory language of Section 2(a) thereby encourages and authorizes arbitrary and discriminatory

enforcement by leaving the Board with virtually unfettered discretion to deny registration or to

cancel registrations, even in situations such as the one presented here, where for over eighty years
Pro-Football has worked to establish valuable rights in its marks, and has owned its initial

registration in the series of marks, for over forty years. Section 2(a) thus effectively chills First
Amendment free speech rights.

115.

The terms "disparage," "may disparage," "contempt,""disrepute,"and "may bring...

into contempt or disrepute" are unconstitutionally overbroad and sweepundertheir rubrics speech

-28-

 Case 1:14-cv-01043-GBL-IDD Document 1 Filed 08/14/14 Page 29 of 35 PageID# 29

that is not capable of being legitimately regulated by the government. There is no core of easily
identifiable and constitutionally proscribable conduct prohibited by Section 2(a). Rather, to the
extent there are any legitimate applications of Section 2(a), they are few in comparison to the
substantial unconstitutional applications of the law that impermissibly restrict protected speech.
Section 2(a) thus chills protected speech that falls within its overbroad language.
116.

A federal trademark registration does not confer any government endorsement or

imprimatur.

117.

As applied to Pro-Football, Section 2(a) violates the First Amendment, because: (1)

Pro-Football's trademarks constitute truthful, nonmisleading, lawful speech; (2) any asserted
governmental interest in regulating the content of Pro-Football's registered trademarks is not

substantial; (3) because Pro-Football may continue to use its marks absent federal registrations and

because federal registration does not confer any official endorsement or imprimatur, any asserted
state interests would not be advanced by cancellation, and thus Section 2(a) does not directly
advance any such governmental interest; and (4) Section 2(a) is more extensive than necessary, in
that it prohibits registration notjust ofobscene or fightingwords, but ofnonmisleading, lawfulterms

that communicate a messagethat some might perceive as offensive, while others might not.
2.

Cancellation Of The Redskins Marks Violates The Due Process Clause of the
Fifth Amendment

118.

Because Section 2(a) is unconstitutionally vague, see supra, it operates to deprive

trademark owners, such as Pro-Football, ofproperty without due process oflaw, in violation of the
Due Process Clause of the Fifth Amendment.

119.

Because Pro-Football has enjoyed, relied on, and invested in its federal registrations

for almost halfa century, the TTAB Order for the cancellation ofthe Redskins Marks violates Pro-

Football's due-process rights provided by the Fifth Amendment.
-29-

 Case 1:14-cv-01043-GBL-IDD Document 1 Filed 08/14/14 Page 30 of 35 PageID# 30

120.

In addition, Pro-Football was deprived of the right to a fair and impartial hearing

before the TTAB, in violation of Pro-Football's due-process rights provided by the Fifth
Amendment.

3.

Cancellation Of The Redskins Marks Violates The Takings Clause of the Fifth
Amendment

121.

The federal trademark registrations for the Redskins Marks are federally granted

property rights on which Pro-Football has relied for over four decades. Since the registration ofthe

first Redskins Mark in 1967, Pro-Football has invested millions of dollars in the use, promotion,
registration, and protection ofits registrations for the Redskin Marks. Pro-Football has invested in

its propertyin expectation ofits continueduse and enjoyment ofthe valuablerights and benefits,as
alleged supra, afforded by its registrations.

122.

The cancellation of the federal registrations for the Redskins Marks deprives Pro-

Football of thesevaluablerightsand benefits, by whollydepriving Pro-Football of itsproperty inthe
form of its federal registrations for the Redskins Marks.
123.

The TTAB Order for the cancellation ofthe Redskins Marks has also interfered with

Pro-Football's use and enjoyment of its property in the form of the Redskins Marks and other
REDSKINS marks.

124.

Pro-Football was not compensatedby the TTAB or any other government actor for

the deprivation of the Redskins Marks.
125.

The TTAB Order for the cancellation of the Redskins Marks constitutes an

unconstitutional taking of Pro-Football's property vwthout just compensation in violation of the
Takings Clause of the Fifth Amendment.

-30-

 Case 1:14-cv-01043-GBL-IDD Document 1 Filed 08/14/14 Page 31 of 35 PageID# 31

E.

DEFENDANTS^ LONG DELAY IN SEEKING RELIEF

126.

The Redskins Marks have been registered for as long as forty-seven years and were

known to Defendants well before they reached the age of majority. Defendants can offer no valid

reason for waiting between the date(s) on which they reached the age of majority and August 11,
2006, the date on which they filed the Petition.
127.

Pro-Football has invested millions of dollars in the use, promotion, registration and

protection of the Redskins Marks over the past eighty years, and, specifically, over the more-thanforty years since the initial registration issued for the Redskins Marks, and including every day that
Defendants delayed before filing the Petition. The substantial goodwill and value in the Redskins

Marks developed by Pro-Football through such effort and expense was created and maintainedprior
to any complaint or objection by Defendants, including during the period subsequent to the Harjo
district court's ruling in Pro-Football's favor.
128.

The Board erroneously ruled that the laches defense is not available to Pro-Football

because laches does not apply to a disparagement claim brought on behalfofa group. TTAB Order
at *31-32. The TTAB's holding is in direct contravention to a district court's ruling that laches was
an available defense to such claims. Harjo, 284 F. Supp. 2d at 137-39.
129.

Because ofthe tremendous value in the Redskins Marks developed by the Redskins

over the better part ofthe past century, the period ofDefendants' inexcusable delay in bringing their
Petition has resulted in economic prejudice to Pro-Football. Defendants, therefore, should have been
barred from bringing their claims pursuant to the doctrine of laches. The Board erroneously ruled

that the economic prejudice suffered by Pro-Football is not attributable to Defendants' delay.

-31 -

 Case 1:14-cv-01043-GBL-IDD Document 1 Filed 08/14/14 Page 32 of 35 PageID# 32

FIRST CAUSE OF ACTION
(Declaration of Non-Disparagement)

130.

Pro-Football repeats and realleges the allegations ofParagraphs 1 through 129 ofthe

Complaint as if fully set forth herein.

131.

Pro-Football's Redskins Marks do not, and will not, disparage Native Americans in

violation of Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a).
SECOND CAUSE OF ACTION

(Declaration of Non-Contempt or Disrepute)

132.

Pro-Football repeats and realleges the allegations ofParagraphs 1 through 131 ofthe

Complaint as if fully set forth herein.

133.

Pro-Football's Redskins Marks do not, and will not, bring Native Americans into

contempt or disrepute in violation of Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a).
THIRD CAUSE OF ACTION

(Declaration that Section 2(a) of the Lanham Act Violates the First Amendment)

134.

Pro-Football repeats and realleges the allegations ofParagraphs 1 through 133ofthe

Complaint as if fully set forth herein.

135.

Section 2(a) is a content-based restriction on speech that violates the First

Amendment to the U.S. Constitution.

136.

Section 2(a) is facially overbroad, in violation of the First Amendment.

137.

Separately and independently, as applied to Pro-Football, Section 2(a) violates the

First Amendment.

FOURTH CAUSE OF ACTION
(Declaration that Section 2(a) of the Lanham Act Is Void For Vagueness

138.

Pro-Football repeats and realleges the allegations ofParagraphs 1 through 137 ofthe

Complaint as if fully set forth herein.

139.

Section 2(a) is unconstitutionally void for vagueness.
-32-

 Case 1:14-cv-01043-GBL-IDD Document 1 Filed 08/14/14 Page 33 of 35 PageID# 33

FIFTH CAUSE OF ACTION
(Declaration that the TTAB Order Violates the Due Process Clause of the Fifth
Amendment)

140.

Pro-Football repeats and realleges the allegations ofParagraphs 1 through 139ofthe

Complaint as if fully set forth herein.

141.

The TTAB Order abridges Pro-Football's due-process rights provided by the Fifth

Amendment to the U.S. Constitution.

142.

The cancellation ofPro-Football's registrations unreasonably deprives Pro-Football

of federally granted property rights that it has relied on for almost half a century, in violation of its
right to due process. During the past forty-seven years, Pro-Football has invested millionsofdollars

in the use, promotion, continued registration, and protection of its registered marks based on its
reasonable belief that its property interests would have full protection under the law.

143.

Becauseofthe deprivation ofPro-Football' s extremelylong-heldpropertyrights,the

TTAB Order for the cancellationofPro-FootbaU'sregistrations violates Pro-Football's due-process
rights provided by the Fifth Amendment to the U.S. Constitution.

144.

In addition, Pro-Football was deprived of the right to a fair and impartial hearing

before the TTAB, in violation of Pro-Football's due-process rights provided by the Fifth
Amendment to the U.S. Constitution.
SIXTH CAUSE OF ACTION

(Declaration that the TTAB Order Violates the Takings Clause of the Fifth
Amendmenf^

145.

Pro-Football repeats and realleges the allegations ofParagraphs 1 through 144 ofthe

Complaint as if fully set forth herein.

146.

The TTAB Order constitutes an unconstitutional taking of Pro-Football's property

without just compensation in violation of the Takings Clause of the Fifth Amendment to the U.S.
Constitution.
-33-

 Case 1:14-cv-01043-GBL-IDD Document 1 Filed 08/14/14 Page 34 of 35 PageID# 34

SEVENTH CAUSE OF ACTION
(Declaration that Defendants* Petition Was Barred bv the Doctrine of Laches)

147.

Pro-Football repeatsand reallegesthe allegationsofParagraphs 1 though 146 ofthe

Complaint as if fully set forth herein.

148.

As a result ofDefendants' inexcusable delay in filing the Petition for Cancellationof

the Redskins Marks, and the undue prejudice suffered by Pro-Football, Defendants' Petition before
the TTAB was barred by the doctrine of laches.
PRAYER FOR RELIEF

WHEREFORE, Pro-Football requests this Court to enter judgment:
(a)

reversing the Order ofthe Trademark Trial and Appeal Board, dated June 18,2014,
scheduling the cancellation of Pro-Football's Washington Redskins trademark
registrations;

(b)

ordering the Trademark Trial and Appeal Board to deny Defendant's Petition for
Cancellation;

(c)

declaring that Pro-Football's Redskins Marks do not disparage Native Americans, in
violation of Section 2(a) of the Lanham Act;

(d)

declaring that Pro-Football's Redskins Marks do not bring Native Americans into
contempt or disrepute, in violation of Section 2(a) of the Lanham Act;

(e)

declaring that Section 2(a) of the Lanham Act, on its face is unconstitutional under
the First Amendment to the U.S. Constitution;

(f)

declaring that Section 2(a) of the Lanham Act, as applied to Pro-Football, is
unconstitutional under the First Amendment to the U.S. Constitution;

(f)

declaring that Section 2(a) of the Lanham Act is unconstitutionally void for
vagueness;

-34-

 Case 1:14-cv-01043-GBL-IDD Document 1 Filed 08/14/14 Page 35 of 35 PageID# 35

(h)

declaring that the TTAB Order is unconstitutional under the Due Process Clause of
the Fifth Amendment to the U.S. Constitution;

(h)

declaring that the TTAB Order is unconstitutional under the Takings Clause of the
Fifth Amendment to the U.S. Constitution;

(i)

ordering the Trademark Trial and Appeal Board to dismiss Defendants' Petition for
Cancellation challenging the Redskins Marks under Section 2(a), because the
Petition was barred by the doctrine of laches at the time it was brought before the
Trademark Trial and Appeal Board; and

(j)

awarding Pro-Football such other and further relief as this Court may deem proper.

Dated: Alexandria, Virginia
August 14,2014

Craig C. Reflly, Esq. (VSB # 20942)
craig.reillv@.ccreillvlaw.com
The Law Office of Craig C. Reilly
111 Oronoco Street

Alexandria, Virginia 22314
Tel: (703)549-5354
Fax: (703) 549-5355

Robert L. Raskopf{pro hac vice forthcoming)
robertraskopf@quinnemanuel.com

Todd Anten (pro hac vice forthcoming)
toddanten@quinnemanuel.com

Claudia T. Bogdanos {pro hac vice forthcoming)
claudiabogdanos@quinnemanuel.com

Quinn Emanuel Urquhart & Sullivan, LLP
51 Madison Avenue, 22nd Floor
New York, New York 10010

Tel: (212)849-7000
Fax: (212) 849-7100
Counselfor PlaintiffPro-Football, Inc.
-35-