| Law & Industry Daily
Published on: Sunday, March 18, 2012

Navajo Nation Sues Urban Outfitters


ALBUQUERQUE, N.M., March 18 (LID) – The Navajo Nation has filed a lawsuit against Urban Outfitters and two of the retailer’s subsidiaries, alleging unfair competition and trademark violations for selling goods using the tribe’s “famous and distinct” name.

Urban Outfitters store in San Francisco

The federal lawsuit alleges Urban Outfitters and its units Free People and Anthropologie violated the Navajo Nation’s trademarks since as early as March 2009, when Urban Outfitters began in-store and Internet marketing of clothing and accessories using Navajo and Navaho marks.

“In this action, the Navajo Nation seeks to protect its famous and distinct NAVAJO name and trademark, and to ensure that consumers are no longer deceived, confused, or misled in their pursuits to find and acquire authentic and genuine NAVAJO product,” the complaint reads.

Filed in U.S. District Court for the District of New Mexico, the Navajo Nation’s lawsuit seeks declaratory and injunctive relief, attorneys’ fees and monetary damages, including exemplary damages for willful and intentional conduct and punitive damages for willful actions pursuant to Title 25 of the United States Code (25 U.S.C. § 305e).

The Navajo mark “points uniquely and unmistakably” to the Navajo Nation, and with $500 million in sales of the tribe’s branded goods, the Navajo mark is one of the Navajo Nation’s “most valuable assets,” the 36-page complaint argues.

Diné Development, a wholly owned corporation in Arizona established by the Navajo Nation Council in 2004, holds the tribe’s 86 registered trademarks and is authorized to issue use licenses.

Unfair Competition Claims

Plaintiffs argue that through Philadelphia-based Urban Outfitters’ use of Navajo and Navaho marks, the international retailer has engaged in unfair competition with the tribe by selling the “identical” types of goods sold by the Navajo Nation, and in many of the same channels of trade as the tribe’s own products.

“Simply put, a direct competitor should not be allowed to benefit at the expense of the Navajo Nation’s substantial investment to the detriment of deceived, confused, or misled consumers who seek authentic and genuine NAVAJO products,” counsel for the Navajo Nation argued in the complaint.

The Navajo Nation Department of Justice complaint filed Feb. 28, specifically, requests jury trial and a statutory-provided award of three times all Urban Outfitters profits generated by the marketing and sale of its Navajo and Navaho marked products.

Trademark Allegations

The Navajo Nation, in its civil complaint, asserts it has “exclusive right” to sell goods under the Navajo name, noting that since 1943 the tribe of over 300,000 enrolled members has marketed and retailed clothing, house-wares and jewelry using its trademarks.

The Navajo Nation alleges Urban Outfitters and its unit retailers have violated at least 10 of the tribe’s trademarks through sales of items such as the Navajo Nations Crew Pullover, Truly Madly Deeply Navajo Print Tunic, Navajo Feather Earrings, Navajo Sock and Leather Navaho Cuff Bracelet.

“Urban Outfitters knowingly and intentionally used the ‘Navajo’ and ‘Navaho’ names and marks for its retail goods to compete directly with the sale of the Navajo Nation’s goods, which are sold using the NAVAJO name and trademarks,” the complaint reads.

Additionally, the federally-recognized tribe claims that publicly-traded Urban Outfitters’ use of “Navaho” flouts trademark requirements of the Lanham Act (15 U.S.C. § 1051 et seq.) since it the mark is “confusingly similar” to the tribe’s Navajo mark.

The complaint for injunctive relief and damages asks the court to declare the retailer’s use of Navajo as “scandalous and derogatory” under the Lanham Act, noting that Urban Outfitters used the tribe’s name to market its “Navajo Flask” and “Navajo Hipster Panty.”

Indian Arts and Crafts Act Claims

Plaintiffs allege, in addition to trademark violation, sales of Navajo and Navaho items by Urban Outfitters and its units violate the Indian Arts and Crafts Act (IACA; Pub. L. 101-644), a 1990 federal law that bars misrepresentation in marketing to wrongly suggest products are Indian-produced or the product of an Indian tribe.

The IACA provides for damages that are the greater of treble damages or $1,000 for each day on which the offer or display for sale for each type of good falsely suggests or suggested to be Indian produced, an Indian product, or the product of an Indian, an Indian Tribe, or an Indian arts and crafts organization continues at the time of filing.

The Navajo Nation, which has sovereign immunity, brought the civil complaint without waiving any of its immunities from counter-claims and cross-claims or defenses, the complaint asserts.

The tribe is represented by attorneys Brian Lewis and Henry Howe for the Navajo Nation Department of Justice and litigation counsel from the Seattle office of Keller Rohrback LLP.

The case is the Navajo Nation et al v. Urban Outfitters Inc. et al., No. 1:12-cv-0019, District of New Mexico (Albuquerque).

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