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.