Urban Outfitters has been handed a partial victory in the trademark battle it is fighting against the Navajo Nation after making and selling garments and accessories bearing the word “Navajo.” On the heels of a December 2015 ruling, which held that “the Navajo Nation does not lack standing [to sue]” under the Indian Arts and Crafts Act or federal trademark statutes, New Mexico federal judge Bruce D. Black has dismissed at least one of the Navajo Nation’s claims.
Judge Black has dismissed the trademark dilution claims, holding the North American tribe - the largest in the U.S. - is not so well known that is eligible for protection. As you may know, the Federal Trademark Dilution Act creates a federal cause of action that only protects “famous marks” from unauthorized use; in order to be deemed sufficiently “famous” (aka famous in a legal sense), the mark must be “widely recognized by the general consuming public of the United States,” which Black held is not the case for the Navajo Nation trademarks.
According to Black: “While plaintiffs’ evidence may be relevant to their infringement claim, it is not legally sufficient to establish a ‘famous’ mark and, hence, to defeat defendants’ motions for partial summary judgment on the claims for dilution by blurring and garnishment.” He elaborated noting that “‘famous’ requires more than just widespread distribution and significant advertising expenditures,” he said, while acknowledging that “very few courts have found a mark legally ‘famous.'”
This is not a total loss for the Navajo Nation, which filed a multi-million dollar lawsuit against the hipster-friendly retailer in 2012, asserting violations of federal and state trademark laws, as well as the Indian Arts and Crafts Act, a federal law that makes it illegal to sell arts or crafts in a way to falsely suggest they are made by American Indians. A number of claims are still pending, including trademark infringement, unfair competition, and violations of the Indian Arts and Crafts Act and the New Mexico Unfair Practices Act.
In its complaint, the Navajo Nation, one of the largest tribal governments of all North American tribes, alleged that Urban Outfitters is guilty of trademark infringement and dilution, as the tribe holds an array of registered marks for the word “Navajo.” 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.
Urban Outfitters has been actively fighting the tribe’s claims, arguing that "Navajo" is a generic term for a style or design, thereby, making its use of the term legally permissible. The company wants a judge to determine and officially declare that it has not infringed upon the tribe's rights and to cancel the tribe's numerous federal trademark registrations that cover the word “Navajo.