Earlier this year we alerted you to Urban Outfitters and Forever 21's use of the term "Navajo" in connection with their products. Forever 21 has apparently skirted litigation, but Urban Outfitters is not so lucky. Stemming from the sale of its “Navajo Hipster Panty” and flasks (among other things like clothes, jewelry, purses, etc.), Navajo Nation Attorney General, Harrison Tsosie, sent a cease and desist letter to the retailer back in October. Urban Outfitters responded by removing the word “Navajo” from all of its products but failed to do so for its other brands such as Free People, as well for the goods in its catalogues and outlet stores. Well, as of this week, the Navajo Nation has filed suit, alleging trademark violations and violations of the federal Indian Arts and Crafts Act.
The Navajo Nation, one of the largest tribal governments of all North American tribes, alleges that Urban Outfitters is guilty of trademark infringement and dilution, as the tribe holds an array of registered marks for the word “Navajo.” To such claims, Urban Outfitters recently asserted that the Navajo Nation can't prove that the "Navajo" mark was "famous and distinctive" before 2001 (a requirement for a trademark dilution claim), when it began selling clothing products bearing the name, and urged a New Mexico federal judge to dismiss the Navajo's dilution claims from the suit.
As for the claim involving the Indian Arts and Crafts Act of 1990, a federal truth-in-advertising law that prohibits misrepresentation in marketing of American Indian products within the U.S. According to the law, it is illegal to offer or display for sale, or sell any art or craft product in a manner that falsely suggests it is Indian produced, an Indian product, or the product of a particular Indian or Indian Tribe. Put simply, you cannot use the name of an Indian tribe on your non-Indian made product or in connection with your non-Indian made product (if that product is even remotely close to one that may be considered an "art" or "craft"), as such usage will falsely suggest to consumers that it was made by American Indians when its not. Far from receiving a slap on the wrist, businesses found to be in violation of the Act may face civil penalties or can be prosecuted and fined up to one million dollars.
In addition to the Indian Arts and Crafts Act of 1990, the Navajo Nation has approximately ten registered trademarks of its name that cover a wide range of products.