25
Nov/14

ED VA Denies Blackhorse Motion to Dismiss In REDSKINS District Court Appeal


You need a little background on this. There was an inter-partes proceeding before the Trademark Trial and Appeal Board, where the Blackhorse petitioners successfully petitioned the TTAB to cancel Pro-Football’s REDSKINS trademark on the grounds that the marks were ‘scandalous, disparaging and may bring Native Americans into contempt or disrepute’ under Section 2(a) of the Lanham Act.

15 USC Section 1071 controls appeals of TTAB inter-partes decisions. Registrant Pro-Football elected a de novo appeal to the ED Virginia, so Pro-Football appears as plaintiff in the caption and the Blackhorse parties appear in the caption as defendants. The Blackhorse defendants moved to dismiss on the grounds that they are not ‘parties in interest’ because they have no actual economic or legal interest in the marks.

The Blackhorse defendants are statistically unusual as Section 1071 defendants go. If this was a Section 2(d) proceeding where two parties were fighting over the same mark, or if this was a Section 2(e) proceeding where competitors were fighting over whether registration should be granted to an arguably generic term, then the economic interest of such a defendant defending the appeal would be readily apparent.

On the other hand, an inter-partes proceeding under Section 2(a), the ‘scandalousness’ provision, is an odd duck. Normally, the Commissioner of the PTO refuses registration under this section, so the Commissioner would defend such appeals. The Blackhorse fact pattern doesn’t arise often (if ever).

Here, the interest that the Blackhorse defendants asserted as their damage in the petition, namely that they are representatives of the group that is damaged by the on-going registration of the Marks, is the interest that they will be defending, and the interest that makes them parties in interest.

redskins motion to dismiss.pdf

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