Urban Outfitters With A Surprising First Win In Navajo Trademark Dispute: Navajo Isn't Famous

from the hmmm dept

Earlier this year, we wrote about an ongoing trademark dispute between the Navajo Nation and Urban Outfitters. The clothier had released a line of clothing and accessories, most notably women’s underwear, with traditional Native American prints and had advertised them as a “Navajo” line. The Nation, which has registered trademarks on the term “Navajo”, had sued for profits and/or damages under trademark law and the Indian Arts and Crafts Act, which prohibits companies from passing off goods as being made by Native Americans when they were not. In that post, I had focused on whether or not the term “Navajo” was deserving of trademark protection at all, or whether it ought to be looked at in the same way we consider words like “American”, “Canadian” or “Mexican”, as generic terms to denote a group of people.

Interestingly, the first ruling has come down in the case. It’s in favor of Urban Outfitters, although admittedly not in the form that I would have expected. The court has granted partial summary judgment in favor of the company on the claims of blurring and tarnishment by use of the trademark, stating that the term “Navajo” is not famous by the dilution standards.

“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,” said US District Judge Bruce Black in New Mexico, according to The Fashion Law. “‘Famous’ requires more than just widespread distribution and significant advertising expenditures,” he said, though he acknowledged that “very few courts have found a mark legally ‘famous.'”

Which is true. The standards set within the Federal Trademark Dilution Act reserve relief for dilution and tarnishment for what it considers famous marks. The idea between this and the generic nature of a trademark are similar: if nobody is associating the use of the mark with the trademark holder in the first place, then there is no dilution or tarnishment being done. For either to occur, consumers need to make that connection to begin with.

I’ll say, separately, I’m a bit surprised by this. Off the cuff, if someone had asked me if I considered the term “Navajo” to be of a level of fame to be widely known by the average person, I would have said yes. I would have added a caveat in that its widespread usage and understanding is an exact example of why I would consider it to be generic and not a source-identifier in the first place, however.

This doesn’t end the lawsuit, of course, and there is still potential trademark infringement to be considered, just not the claims of dilution and tarnishment.

A search for the word “Navajo” on Urban Outfitters’ site no longer turns up any results, but the Navajo Nation claims that the retailer has sold more than $500 million worth of Navajo-branded goods. The case is not yet over, though, so there’s still time for some of those earnings to change hands: six counts are still pending against Urban Outfitters, including trademark infringement, unfair competition, and false advertising.

Yet it seems clear to me that the same reasoning that brought about the rulings on the dilution and tarnishment claims are easily translated to the remaining claims. If the trademark is brewing confusion, due either to a lack of notoriety or its generic nature, then the rest of the claims may fall as well.

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Companies: urban outfitters

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Comments on “Urban Outfitters With A Surprising First Win In Navajo Trademark Dispute: Navajo Isn't Famous”

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Loss of Common Sense

That ANYONE would not see this as a direct dilution of a Trademark, or otherwise see this as Urban Outfitters trying to make a buck on using the name ‘Navajo’, is ludicrous. If you have an animal that quacks, waddles, with white feathers, chances are YOU ARE LOOKING AT A DUCK! Same deal here, native prints, native name, selling for profit. Yep, sounds like ‘legalized piracy’ to me.
The day after this ruling, the Navajo nation should have used the ruling to start selling ‘stone washed denims’ called ‘Desert Outfitters’ and used the ruling against them to rip off UO. Then again, I’m sure the judge would have ruled against that issue.


Re: Loss of Common Sense

Same deal here, native prints, native name, selling for profit. Yep, sounds like ‘legalized piracy’ to me.

What is the problem? Is the Navajo tribe selling women’s underwear too? Do you think customers believe they’re getting goods made by Native Americans? If they sold clothes called Switzerland and they had cows and mountains on them, would that be the same issue? I don’t see the difference – morally.

Robert Beckmansays:

Famous Marks

I think you’ve misinterpreted what the judge is saying about famous marks. As I read the opinion, he’s really saying that the term “Navajo” as a trademark isn’t famous, while not saying anything about whether the term “Navajo” is famous as a word.

Consider two examples: Coca Cola and Apache. Coca Cola is a famous term precisely because of the product and its trademark, and so would qualify as a famous mark (Coca Cola isn’t ever used other than to identify the product/trademark). Apache, on the other hand, may refer to the people OR the helicopter. Not having looked at who owns that trademark, there are decent odds it’s either the manufacturer or a tribal council. In this case, the terms use has spread far beyond the trademark, making it a non-famous mark.


Re: Famous Marks

This is what I thought when reading this as well. As another example, one might be able to apply and get a trademark on something like “waterfall” today for clothing, etc. That doesn’t mean you suddenly have a famous trademark because the word is in regular use for purposes other than referring to your trademark.

Robert Beckmansays:

Re: Re: Famous Marks

And that’s a perfect example for why any trademark on “Apache” cannot be a famous mark – because it may mean many different things (I’d recently heard someone saying that their gender identity is “an attack helicopter” and they needed to be addressed as such in New York, so that’s what came to mind).

Does this mean that common (or at least, nor uncommon) words cannot be Famous Marks? Not really, it just means that the bar is much higher for them. Google probably meets that threshold, most others do not.

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