After a long history of striving to protect their tangible property from a wide array of potential usurpers Indian tribes and individual tribal members are all too aware of the need for vigilance in asserting their rights. Recent federal court decisions involving offensive and misleading trademarks — including a challenge to the name of a storied NFL franchise — demonstrate that the law also rewards vigilance in protecting tribal interests that are less tangible, but no less important.

In re Shinnecock Smoke Shop

On July 1, 2009, the United States Court of Appeals for the Federal Circuit decided an important trademark issue in favor of protecting the names of Indian tribes. The case, In re Shinnecock Smoke Shop (No. 2009-1100), involved an individual who applied to register the trademarks "Shinnecock Brand Full Flavor" and "Shinnecock Brand Lights." The United States Patent and Trademark Office refused to register the trademarks on the ground that they falsely suggested a connection between the trademark and the Shinnecock Indian Nation. The refusal was based on Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), which prohibits the registration of trademarks that ". . . may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols . . ."

The applicant, who happened to be a member of the Shinnecock Nation, argued on appeal that an Indian tribe is not an "institution" deserving protection under Section 2(a). The Federal Circuit disagreed. It concluded that an Indian tribe falls within the definition of an "institution" because it is a "body of persons . . . formed for a common purpose." The Federal Circuit also rejected the applicant's Due Process and Equal Protection challenges, holding that past instances where trademarks had issued for tribal names did not require it to disregard Section 2(a) in this case.

The Shinnecock case confirms that tribes have the power to preclude others — and, as in this case, even their own members — from registering trademarks that include a tribe's name or otherwise falsely suggest that the trademark has a connection to the tribe. Although tribes enjoy potentially powerful rights to prevent registration of certain trademarks, the law requires that they be diligent in protecting the rights in their names.

Pro Football, Inc., v. Harjo

The need for diligence was made clear in a recent decision of the United States Court of Appeals for the District of Columbia. In Pro Football, Inc., v. Harjo (No. 03-7162, May 15, 2009), the D.C. Circuit ended a 17-year struggle to cancel trademarks of the NFL's Washington Redskins football team on the grounds that the team's name is derogatory to Native Americans.

This challenge was based on the same provision cited in Shinnecock, Section 2(a) of the Lanham Act, which forbids federal registration of trademarks that may disparage groups of persons. The plaintiffs had presented evidence that the term "redskins" conveys a savage, ferocious impression of Native Americans that the team name sought to harness.

Despite this evidence, the D.C. Circuit held that the plaintiffs had waited too long to bring their claims. The claims were thus barred by the doctrine of laches, an equitable defense prohibiting claims that a party has failed to diligently pursue, causing prejudice to the other party. Although the Redskins trademark was first registered in 1967, the plaintiffs did not file their challenge before the Trademark Trial and Appeal Board until 1992. (The "Redskins" name was first used as a team name in 1933 and the "Washington Redskins" name dates back to 1937).

In concluding that the delay had been prejudicial, the D.C. Circuit considered that evidence the Redskins might have used to defend the trademarks may have been lost during the delay. The court also considered that the team had invested significant resources promoting the trademarks and expanding merchandising efforts before the proceedings began. Had the plaintiffs objected sooner, the court reasoned, the team might have changed its name or altered its marketing efforts.

Because the D.C. Circuit decided that the challenge was untimely, it had no occasion to rule on the merits of the argument that the Redskins trademarks should be cancelled. The D.C. Circuit's decision confirms that, no matter how strong a party's trademark-related right might be, it can be lost through inaction — often forever.

But there is more to the story: in 2006, a group of six Native Americans brought a similar cancellation action at the Trademark Trial and Appeal Board, which action was suspended, pending the resolution of the Harjo case. The newer case, styled as Blackhorse, et al. v. Pro-Football, Inc., is in the process of being revived. It is difficult to predict how this newer action will turn out, but it is likely that the football team will once again assert the laches defense. There may be one difference in the newer action, though: the petitioners assert that they each recently reached the age of majority, "the age from which the . . . Court of Appeals has determined that laches begins to run." Time will tell if this makes any difference.

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In light of the rights recognized in these cases, as well as the efforts required to protect them, Indian tribes should consider developing a program of periodically monitoring trademark filings for applications that potentially infringe their rights. For further protection, tribes should consider trademark registration of their own federally recognized names, as well as registration of names they use in connection with business or governmental enterprises. Protecting the name of a tribal government can be difficult, but names and logos tribes use while doing business in identifiable fields (for example, operating a casino or a tribal government program) are as capable of protection as they are for any business.

Importantly, federal recognition as an Indian tribe, by itself, will not ensure protection of the tribe's name. Although one federal district court has held that a third-party cannot use trademark law to stop a tribe from using its federally recognized name, no known decision has held that federal recognition entails inherent trademark or other exclusive naming rights. Thus, while Indian tribes enjoy potentially powerful rights to prevent registration of certain trademarks, they must be diligent in preemptively protecting and defending the rights in their names.