A New Mexico federal judge has handed mini-victories to both parties in the latest rounds of the multi-million-dollar lawsuit that the Navajo Nation filed against Urban Outfitters in 2012 for selling goods, such as underwear and flasks, bearing the Navajo Nation’s trademark. In a decision from early this week, Judge Bruce D. Black ruled in favor of Urban Outfitters, refusing to grant the Navajo Nation’s motion for summary judgment (a request for a final decision by a judge that resolves a claim before trial) in connection with the Navajo’s trademark infringement claim.
Black held that while the Navajo Nation has “argue[d] that since their ‘Navajo’ trademark has been registered and used by them since at least 1943, and Defendants have used the word ‘Navajo’ in representing their products, causing consumer confusion, ‘this is a clear-cut case of trademark infringement,’” it is actually not that simple.
According to Black’s decision, the Navajo Nation has failed to prove that Urban Outfitters’ use of the “Navajo” trademark caused confusion as a matter of law (the key inquiry in a trademark infringement matter). As a result, he refused to hand a speedy favorable ruling to the Navajo’s on this claim. So, what does this actually mean? Well, the trademark infringement claims will proceed to trial (and decided by a jury), which is scheduled for mid-October, as opposed to be ruled on by the judge in favor of the Navajo Nation.
In less positive news for Urban Outfitters, which recently began to see benefits from its newly revamped stores, which include bars and even restaurants in some cases, Judge Black shot down two key trademark defenses that the hipster-friendly retailer had asserted. According to a separate decision on Monday, Black held that Urban Outfitters had failed to furnish any admissible evidence to support its arguments that the Navajo Nation had abandoned its trademarks and/or that the marks had become generic, and thus, not protectable.
Monday’s rulings come on the heels of a significant win for Urban Outfitters. In May, Judge Black dismissed the Navajo Nation’s trademark dilution claims, holding the North American tribe – the largest in the U.S. – is not so well known that it 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.
As for what is up next: The parties are slated to take part in settlement discussions on September 28th and 29th ahead of trial, which is set for mid-October. Both parties have requested that Judge Black push back the trial date to January in order to allow them to focus on the upcoming settlement conference, but Black has not yet decided on that matter.