The Navajo Nation settled with Urban Outfitters on September 29, 2016, reaching an agreement resolving issues of trademark and false sponsorship caused by the retailer’s use of the name “Navajo” and “Navaho” in its goods. The case was heard in New Mexico federal court and had been for trial on January 3rd before the parties ultimately reached an agreement during a settlement conference. Financial details of the deal are not currently available, although both parties will issue a joint press release when the specifics have been resolved.
The Navajo Nation launched suit against Urban Outfitters and its subsidiaries in February 2012 after issuing a cease and desist letter in October 2011. The complaint alleged that Urban Outfitters sold goods, under the Navajo name, that mimicked “Navajo tribal patterns, including geometric prints and designs fashioned to mimic and resemble Navajo Indian and tribal patterns, prints and designs.” The tribe’s complaint referred to the Indian Arts and Crafts Act, which prohibits the misrepresentation of Indian arts and crafts products in marketing. The Navajo Nation claimed that the way Outfitters and its affiliates sold the offending goods falsely implied that they were creations by the Navajo Nation.
Initially, Urban Outfitters moved to dismiss, making an “unclean hands” argument that the Navajo Nation was using its “Navajo” trademarks illegally or with malicious intent. Urban Outfitters also made a Fair Use defense as to use of the term, which the Navajo Nation sought to have thrown out. U.S. District Judge Bruce D. Black ultimately denied both bids and refused to dismiss, stating that while the Nation was not wielding its trademark inappropriately, it was possible that the clothing retailer used the name “Navajo” as a description of a type of clothing, as opposed to implying that the clothing was Navajo-made.
Next, the Navajo Nation filed for summary judgment on the grounds that Urban Outfitters had infringed the tribe’s trademark rights under the Lanham Act. Judge Black denied this motion as well. In its argument, the Nation called into question the testimony of Urban Outfitter expert Hal Poret, who had presented results from consumer surveys in a bid to show that most consumers perceived the “Navajo” mark as a generic description. The federal judge ultimately overruled the Nation’s challenge, stating that the testimony was sound under federal regulations, and that the question of merit would be better discussed during trial.
This is not the first claim or controversy launched by the Navajo Nation in defense of its marks. The tribe has guarded its rights through cease and desist letters and opposition to third-party trademark registrations.
Navajo Nation v. Urban Outfitters, No. 12-195 BB/LAM, 2016 U.S. Dist. LEXIS 136563 (D.N.M. Sep. 19, 2016)
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