Motion – Shift. But No Change in Formation in case involving Washington Football Team Name

November 26, 2014 – Blog Post

The Defendants’ Motion to Dismiss the Appeal filed by Pro-Football Inc. was denied. On November 25, 2014, the Court ruled that the Native American Defendants are parties of interest and there is a case and controversy for the Appeal. As a result, the Native American Defendants will remain players and the “game” before the Eastern District Court will continue.

On August 14, 2014, Pro-Football Inc., (PFI) the owner of the mark REDSKINS, filed an appeal at the United States District Court for the Eastern District of Virginia.Civil Action No.: 1:14-cv-1043-GBL-IDD. PFI appealed the decision by the U.S. Patent and Trademark Office (USPTO) Trademark Trial & Appeal Board (TTAB) scheduling the cancellation of six trademark registrations for the mark REDSKINS. The TTAB, in a ruling 2-1, determined that the marks were not eligible for registration because they contain matter that “may disparage” Native Americans.

The five defendants, Amanda Blackhorse, Marcus Briggs-Cloud, Phillip Gover, Jillian Pappan and Courtney Tsotigh (“Defendants”) filed a Motion to Dismiss that essentially argues that PFI should have appealed to the Federal Circuit or filed the action against the Director of the USPTO rather than the Defendants. Asserting that the Defendants are not “parties in interest” who may be sued under 15 U.S.C. § 1071(b)(4); and that the Eastern District Court lacks subject matter jurisdiction because there is no “case or controversy”. Not surprisingly, PFI aggressively argued against the Defendants’ motion.

The Court gave four reasons for its denial, namely: (i) the interests of the Defendants in requesting cancellation are sufficient to establish jurisdiction under Article III of the Constitution; (ii) review of the TTAB’s decision in the Federal Circuit or a U.S. District Court under 15 U.S.C.§ 1071 must carry into the review of the proceeding; (iii) the cancellation action filed by the Defendants demonstrates that the Defendants have a sufficient interest to constitute “adverse parties” and “parties in interest” under 15 U.S.C.§ 1071 and (iv) the Defendants were the sole adverse parties in the prior inter partes proceeding before the TTAB.

In as much as the Motion to Dismiss was denied in its entirety, the case will proceed with the Native American Defendants.