THE FASHION LAW EXCLUSIVE – Urban Outfitters has been handed yet a partial victory in the latest round of the trademark case that the Navajo Nation filed against it four years ago. After dismissing the Navajo’s trademark dilution claims in May, New Mexico Federal Judge Bruce D. Black has denied the Navajo Nation’s motion urging the court to dismiss Urban Outfitters’ trademark fair use defense. The Navajo Nation, the largest Native American tribe in the U.S., filed suit against the Philadelphia-based hipster-friendly retailer in 2012, alleging that its use of the word “Navajo” on a number of products, including underwear and flasks, was a violation of the Indian Arts and Crafts Act and federal trademark statutes.

In response to the Navajo’s lawsuit, Urban Outfitters asserted a number of defenses – claims that, if proven, will serve to negate the defendant’s liability, even if it is proven that he committed the alleged illegal acts. One such affirmative defense: Fair use, a defense that holds – in part – that the use of another’s trademark is permissible to “describe the goods or services of such party, or their geographic origin … rather than to identify the user’s goods, services or business.” This is called descriptive fair use, and it is one of the defenses that Urban Outfitters claimed in connection with its alleged trademark infringement.

In asserting the fair use defense, Urban Outfitters argues that the term “Navajo” has “acquired a descriptive meaning within the fashion and accessory market […] that the fashion industry has adopted ‘Navajo’ to describe a type of style or print.” Moreover, Urban Outfitters argues that its use of the trademark is permissible because it “is and always has been a geographically descriptive [term].” The retailer claims that “they used the term ‘Navajo’ only as a descriptor to designate the style or design of the products they offered for sale … only descriptively and in conjunction with their own house marks,” thereby, making it fair use.

The Navajo Nation filed a motion to fight Urban Outfitters’ affirmative defenses, claiming, in particular, that the fair use defense is unavailable for use by Urban Outfitters because “Plaintiffs’ ‘Navajo’ marks are incontestable as well as inherently distinctive, and Defendants cannot prove that their use of ‘Navajo’ did not cause confusion.”

To this, the court has sided with Urban Outfitters, holding that “Plaintiffs’ confusion argument, lacks merit,” as the defendants do not carry the burden of negating confusion, and that “Defendants have produced sufficient evidence to raise a genuine issue of material fact as to whether they, in good faith, used ‘Navajo’ in the descriptive sense.” As a result, the fair use defense will move forward to trial and we have another win for Urban Outfitters.