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THIS OPINION IS A PRECEDENT OF THE TTAB Hearing: Mailed: March 7, 2013 June 18, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Amanda Blackhorse, Marcus Briggs-Cloud, Philip Gover, Jillian Pappan, and Courtney Tsotigh v. Pro-Football, Inc. _____ Cancellation No. 92046185 _____ Jesse A. Witten, Jeffrey J. Lopez, John D. V. Ferman, Lee Roach and Stephen Wallace of Drinker, Biddle & Reath LLP for Amanda Blackhorse, Marcus Briggs, Philip Gover, Jillian Pappan, and Courtney Tsotigh. Robert L. Raskopf, Claudia T. Bogdanos and Todd Anten of Quinn Emanuel Urquhart & Sullivan, LLP for Pro-Football, Inc. _____ Before Kuhlke, Cataldo and Bergsman, Administrative Trademark Judges. Opinion by Kuhlke, Administrative Trademark Judge: OVERVIEW Petitioners, five Native Americans, have brought this cancellation proceeding pursuant to Section 14 of the Trademark Act of 1946, 15 U.S.C. § 1064(c). They seek to cancel respondents registrations issued between 1967 and 1990 for Cancellation No. 92046185 trademarks consisting in whole or in part of the term REDSKINS for professional football-related services on the ground that the registrations were obtained contrary to Section 2(a), 15 U.S.C. § 1052(a), which prohibits registration of marks that may disparage persons or bring them into contempt or disrepute. In its answer, defendant, Pro-Football, Inc., asserted various affirmative defenses including laches.1 As explained below, we decide, based on the evidence properly before us, that these registrations must be cancelled because they were disparaging to Native Americans at the respective times they were registered, in violation of Section 2(a) of the Trademark Act of 1946, 15 U.S.C. § 1052(a). This decision concerns only the statutory right to registration under Section 2(a). We lack statutory authority to issue rulings concerning the right to use trademarks. See, e.g., In re Franklin Press, Inc., 597 F.2d 270, 201 USPQ 662, 664 (CCPA 1979). The Registrations at Issue The following six registrations (hereinafter referred to collectively as the REDSKINS marks) are the subject of this cancellation proceeding: 1. Registration No. 0836122 for the mark THE REDSKINS (stylized), shown below, for entertainment services namely, football exhibitions rendered in stadia and through the media of radio and television broadcasts, in Class 41;2 1 The Board struck the other affirmative defenses, which primarily concern Constitutional challenges and they are preserved for appeal. 2 Registered September 26, 1967; second renewal. 2 Cancellation No. 92046185 2. Registration No. 0978824 for the mark WASHINGTON REDSKINS, in typed drawing form, for entertainment services namely, presentations of professional football contests, in Class 41;3 3. Registration No. 0986668 for the mark WASHINGTON REDSKINS and design, shown below, for entertainment services namely, presentations of professional football contests, in Class 41;4 4. Registration No. 0987127 for the mark THE REDSKINS and design, shown below, for entertainment services namely, presentations of professional football contests,5 in Class 41; 3 Registered February 12, 1974; third renewal. 4 Registered June 18, 1974; second renewal. 5 Registered June 25, 1974; second renewal. 3 Cancellation No. 92046185 5. Registration No. 1085092 for the mark REDSKINS, in typed drawing form, for entertainment services namely, presentations of professional football contests, in Class 41;6 and 6. Registration No. 1606810 for the mark REDSKINETTES, in typed drawing form, for entertainment services, namely, cheerleaders who perform dance routines at professional football games and exhibitions and other personal appearances, in Class 41.7 Prior Litigation This is the second time the Board has faced a petition to cancel these registrations. On September 10, 1992, Suzan Harjo and six other Native Americans filed a petition to cancel the above-noted registrations on the ground the marks consist of or comprise matter which disparages Native American persons, and 6 Registered February 7, 1978; second renewal. 7 Registered July 17, 1990; renewed in 2000. Section 8 affidavits of continuing use and applications for renewal under Section 9 must be filed at the end of each successive 10-year period following the date of registration. 15 U.S.C. § 1059. See also Trademark Manual of Examining Procedure (TMEP) § 1606.03 (The Director has no authority to waive the deadline for filing a proper § 9 renewal application.). We note the last Section 8 affidavit and Section 9 application for renewal was filed in 2000 and accepted by the USPTO on March 9, 2004. The filing deadline for the next renewal would have been July 17, 2010 but USPTO records do not show any such filing. Thus, it appears regardless of the outcome of this proceeding, this registration has expired. Nonetheless, when a registration which is the subject of a cancellation proceeding is abandoned or left to expire during the proceeding, such action is treated as an abandonment of the registration without the consent of the petitioner. 37 C.F.R. § 2.134(b). See also Trademark Trial and Appeal Board Manual of Procedure (TBMP) § 602.02(b) (3d ed. rev. June 2013). Typically, the Board would issue a show cause order to the respondent to indicate whether the expiration of the registration was purposeful or inadvertent. If such action was purposeful, judgment is entered against the respondent as to that registration. If the expiration was inadvertent, the petitioner would be allowed time to pursue its claim to final judgment. Neither party alerted the Board to this issue. Because the proceeding was tried and briefed on all the registrations including this one, we proceed to final judgment on this registration. 4 Cancellation No. 92046185 brings them into contempt, ridicule, and disrepute; and the marks consist of or comprise scandalous matter under Section 2(a) of the Trademark Act. Respondent denied the salient allegations in the petition for cancellation and asserted eleven affirmative defenses, including laches. The Board struck all of respondents affirmative defenses. Harjo v. Pro Football, Inc., 30 USPQ2d 1828, 1833 (TTAB 1994); and 50 USPQ2d 1705, 1710 (TTAB 1999). After seven years of litigation, involving multiple discovery and pretrial motions, the Board issued its decision on the merits, held that respondents REDSKINS marks were disparaging to Native Americans when registered and ordered the registrations canceled. Harjo v. Pro- Football, Inc., 50 USPQ2d at 1743. Respondent appealed the decision to the United States District Court for the District of Columbia. On motion for summary judgment, the District Court reversed the Board for two reasons: The TTABs finding of disparagement is not supported by substantial evidence and must be reversed. The decision should also be reversed because the doctrine of laches precludes consideration of the case. Pro-Football, Inc. v. Harjo, 284 F. Supp. 2d 96, 68 USPQ2d 1225, 1263 (D.D.C. 2003). The petitioners appealed the rulings that the claim of disparagement was not supported by substantial evidence and that the defense of laches may be asserted against a disparagement claim. The United States Court of Appeals for the District of Columbia Circuit held that the District Court applied the wrong standard in evaluating laches as to at least one of the petitioners because laches runs only from 5 Cancellation No. 92046185 the time a party has reached his majority and, while retaining jurisdiction over the case, remanded the record to the District Court to evaluate whether laches barred petitioner Mateo Romeros claim. Pro-Football, Inc. v. Harjo, 415 F.3d 44, 75 USPQ2d 1525, 1528 (D.C. Cir. 2005). The D.C. Circuit did not address the issue of whether substantial evidence supported the Boards finding of disparagement. On remand, the District Court found that laches did bar the claim: [D]efendant Romero unreasonably delayed his bringing of a cancellation proceeding and his eight-year delay demonstrates a lack of diligence on his part. The court further finds that Defendant Romeros delay has resulted in both trial prejudice and economic prejudice to Pro-Football, such that it would be inequitable to allow Defendant Romero to proceed with his cancellation petition. Pro-Football, Inc. v. Harjo, 567 F. Supp.2d 46, 87 USPQ2d 1891, 1903 (D.D.C. 2008). Petitioners appealed. The D.C. Circuit affirmed the decision of the lower court on the issue of laches and stated that the petitioners argue only that the District Court improperly assessed evidence of prejudice in applying laches to the facts at issue and limited its decision to that question. Pro-Football, Inc. v. Harjo, 565 F.3d 880, 90 USPQ2d 1593 (D.C. Cir. 2009). Thus, the D.C. Circuit resolved the case solely on the issue of laches, never addressing the Boards finding of disparagement on the merits. 6 Cancellation No. 92046185 The Current Litigation While Harjo was pending, six new individual petitioners filed a petition to cancel the same registrations for the REDSKINS marks.8 Proceedings were suspended pending the disposition of the Harjo civil action and resumed in March 2010.9 In March 2011, the parties stipulated, with certain exceptions, that the entire Harjo record may be submitted into evidence through a Notice of Reliance.10 The stipulation provides in pertinent part that: 1. Except as provided below, all evidence submitted with a Notice of Reliance, as well as all deposition transcripts and exhibits thereto submitted by any party, in Harjo shall be admissible in this proceeding unless the Trademark Trial and Appeal Board ruled in Harjo that the evidence was not admissible, in which case all arguments as to admissibility are preserved. 2. The Parties do not stipulate that any particular piece of evidence described in paragraph 1 is relevant to any issue in this proceeding, and therefore may object to evidence described in paragraph 1 on grounds that it is not relevant.11 8 During this proceeding, petitioner Shquanebin Lone-Bentley withdrew her petition for cancellation.