Navajo Nation Fights Urban Outfitters over Tacky Trademark Infringement

Posted by | April 05, 2012 | Disputes | 6 Comments

Image from Division of Economic Development, Navajo Nation

While we as a nation have shown little deference to the Native American indigenous people of North America, retailer Urban Outfitters has taken cultural insensitivity to new extremes.  Stomping on the nation’s culture is one thing, but ignoring their trademark rights?!?  Really, Urban Outfitters!  How low can you go?  It is pretty distasteful to sell Navajo branded panties, and it’s another thing altogether to sell Navajo branded flasks, especially since the Navajo Nation prohibits the sale, possession or consumption of alcoholic beverages on its lands.  But those petty grievances pale in comparison to the fact that Urban Outfitters unapologetically violated the Navajo’s U.S. trademark rights.  Or do they?  Maybe I’ve just got trademark tunnel vision.

I first wrote about this story back in October.  The Navajo branding faux pas landed Urban Outfitters in hot water with the public back then, and the stakes since were increased as the Navajo hauled Urban Outfitters into federal court on February 28, 2012, filing a lawsuit alleging trademark infringement, dilution, unfair competition, and violation of the Indian Arts and Crafts Act of 1990, which makes it 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 or Indian arts and crafts organization, resident within the United States.  I can’t imagine how Urban Outfitters is going to get itself out of this mess.

NAVAJO is not only a federally registered trademark, but it’s a pretty heavily protected mark at that.  There are 97 LIVE PTO records — federal trademark registrations or pending registration applications — comprised in whole or in part of the term NAVAJO.  This includes 27 marks comprised solely of the word NAVAJO, of which 13 are owned by Dine Development (Dine) and 9 of which are owned by Navajo Arts & Crafts Enterprise (NACE).  Both Dine and NACE are wholly owned by the Navajo Nation, a sovereign Indian Nation.  The NAVAJO word mark is federally registered to Dine and NACE for: apparel, bags, linens, more apparel, eyeglasses, on-line retail clothing stores eyeglass cases, footwear & outerwear, tobacco, furniture, more bags, cooking utensils, skin care products and fragrances, blankets & rugs, horse bridles, dolls, tableware, jewelry and silver goods, ties and belts, pillow covers, textile yarn, paintings and drawings, and tobacco pouches.  That’s enough merchandise to fill an entire department store!

Today, Bill Donovan, a 30 year contributor to the Navajo Times told Michel Martin on NPR that the Navajo Nation does not oppose (non-trademark, presumably) use of its culture if it is done in a sensitive way.  Apparently, the Navajos have endorsed some third party products, including a Mazda NAVAJO SUV about 15 years ago. Panties and flasks, however, did not make the cut.  Not that Urban Outfitters asked permission, but still.  I imagine this case will become even more heated before it settles, hopefully with some form of apology from Urban Outfitters.

A simple trademark search would have revealed the Navajo Nation’s abundant use of the NAVAJO mark for apparel and related goods.  That alone should have caused Urban Outfitters pause enough to decide to refrain from using NAVAJO to promote their own products, and that would have prevented the onslaught of bad press and an expensive lawsuit.

 

 

 

 

About Lara

Lara Pearson is a trademark attorney with Exemplar, where she also serves as the firm's Sustainability Steward. Lara's legal practice focuses on trademark and copyright law, including: intellectual property audits; trademark search & clearance; trademark and copyright registration & maintenance; intellectual property transfers; transactional work; and dispute resolution, including litigation when necessary. Lara primarily represents other social enterprises -- those leveraging their businesses and brands as catalysts for positive social and environmental change. Such businesses engage in CSR (Corporate Social Responsibility) to have a positive "triple bottom line" of people, planet and profit. As Exemplar's Sustainability Steward, Lara works with others in her law firm to measure and reduce the firm's carbon emissions and encourage engagement in social responsibility initiatives, including pro bono legal work and volunteering. Lara is a proud member of the Social Venture Network. Brand Geek is a member of 1% for the Planet and a Certified B Corporation, whose Incline Village office is certified under the regional Keep the Sierra Green program. Exemplar Companies is the most innovative professional services firm in the New Economy. Our unique, diversified expertise spans the disciplines of corporate law, business advisory, and capital/investment banking to better meet the needs of our high-potential customers. We have assembled a comprehensive suite of service to meet the complex issues facing companies in today’s challenging business environment. Our unique, holistic approach ensures the growth and success – and greatly increases the competitive advantage - of our customers. The Exemplar team is comprised of knowledgeable, highly skilled experts in a wide range of industries and disciplines. They work closely with our customers to provide trusted advice, incomparable support, expert guidance and the ultimate competitive advantage as they accelerate their businesses and position themselves to transform industries.

6 Comments

  • Doug says:

    Lara,
    You may want to do more in depth research, the word ‘Navajo’ is not expressly trademarked to the Navajo Nation. Under your logic and theirs, one could infer that Arizona Iced Tea owns the trademark to the word Arizona (hint: they don’t). Searching the USPTO website yields absolutely zero results to indicate otherwise. Since a series of litigations in the 1990’s, the USPTO does offer specific protection of tribal insignias not tribal names.
    At this point, the Navajo Nation is just about as sue happy as Donald Trump. Do helicopter manufacturers and the US Military pay licensing fees to the Cayuse, Kiowa, Cheyenne, Lokota, Comanche, Apache or Chinook tribes for the use of their namesakes? Does the Japanese peace lily get royalties from it’s references in Hot Fuzz?? These are names of ethnic groups of people the same as American, Japanese, European, etc in the realm of generic use, to which no single group or individual has ownership rights. Is America suing American Apparel or American Eagle Outfitters for using it’s namesake?? The resounding answer to all of these is NO. This lawsuit is simply beyond frivolous.

  • John says:

    http://navajo-office.com/company.html

    Does this count as trademark infrigement?

    • Lara says:

      I don’t think so. Presuming that the Navajo Nation does not offer NAVAJO branded office supplies or have its own NAVAJO branded office supply stores, then consumers are unlikely to be confused into thinking that these Navajo branded office supply store services emanate from the Navajo Nation. Remember, generally speaking trademark rights are limited to specific goods/services, so relatedness of the infringer’s goods/services to that of the brand owner is a prerequisite for infringement. Famous brands get a much broader scope of protection — called dilution — that prevents any use of their mark that weakens (dilutes) the distinctiveness of their mark. That’s why you don’t see “____oogle” marks owned by anyone other than Google.

      I hope this is helpful for you. Thanks for reading and interacting with Brand Geek!

    • Daniel says:

      Way to go, Navajo Nation! Either cease-and-desist, or collect rolaityes for the use of your name (only on quality products of which you approve, of course). Same with sports teams that use Native names as mascots. Until recently, the University of North Dakota was paying the Standing Rock Sioux annual rolaityes to use the name Fighting Sioux , which was a win-win and a source of pride for both parties. Unfortunately for both the Tribe and the university, political correctness put an end to that.

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