The Virginia Business Litigation Blog
The Navajo Nation has sued retailer Urban Outfitters and its subsidiaries for trademark infringement, trademark dilution, and related claims. In the suit, filed in the District of New Mexico, the tribe seeks monetary damages and an injunction against using the “Navajo” and “Navaho” names in connection with marketing goods that compete directly with Navajo Nation’s products.
According to the Complaint, Urban Outfitters has been using “Navajo” and “Navaho” on a line of clothing and accessories that competes directly with products offered by Navajo Nation. One of the tribe’s most valuable assets is its NAVAJO trademark which it has used to market such products for a century and a half. That trademark has been registered for over sixty years. The Complaint alleges that through its retail stores, online stores and catalog, Urban Outfitters has sold over twenty “Navajo” products, using geometric patterns similar to ones the Navajo Nation has created over the years, ranging from earrings and tunics to undergarments and liquor flasks. The Navajo Nation takes particular exception to the marketing of flasks bearing the tribe’s name, mark and design, because the sale and consumption of alcohol is prohibited on the Navajo reservation.
Navajo Nation asserts that Urban Outfitters’ actions are “designed to convey to consumers a false association or affiliation with the Navajo Nation, and to unfairly trade off of the fame, reputation, and goodwill of the Navajo Nation’s name and trademarks.” 
Lawyers for the tribe argue that consumers are being led to believe that Urban Outfitters has contracted with the tribe to sell its products under one of its registered trademark names but that, in fact, Urban Outfitters has no license or sponsorship relationship with the tribe that would permit the company and its subsidiaries to use any of these trademarks. The trademark case includes claims that Urban Outfitters has been diluting the NAVAJO mark’s distinctiveness (dilution by blurring) and harming the mark’s reputation (dilution by tarnishment). The tribe also asserts the company has violated the Indian Arts and Crafts Act by displaying and marketing the products so as to suggest they are authentic Indian-made products.
When Navajo Nation became aware of the infringement, it sent a cease-and-desist letter to the corporation and the company removed the products from its website. But Navajo Nation filed the lawsuit anyway because it says Urban Outfitters continued to sell many of the products through its retail stores and on at least one of its subsidiary website outlets.
It’s hard to ignore the fact that–if the allegations of the Complaint are true–this wouldn’t be the first time property has been taken from the Navajo Nation. If the Navajo Nation owns this intellectual property, jurors are likely to be sympathetic to their fight to protect it. Expect Urban Outfitters to settle this case before it ever gets to trial.