Battles continue to wage over use of the “Navajo” and “Navaho” marks in New Mexico federal court. The Navajo Nation (“the Nation”) sued Urban Outfitters and its subsidiaries, including one of my favorite retailers, Anthropologie, (collectively “Urban Outfitters”) in 2012. The suit is now heating up with motion practice. The complaint alleges that Urban Outfitters violated the Lanham Act by infringing their trademarks, unfair competition and diluting their trademarks. The Complaint further alleges Urban Outfitters violated the Indian Arts and Crafts Act and New Mexico state law.
In 1943, the Nation registered NAVAJO® as a trademark for its goods and services. It now owns 86 registered trademarks. The Navajo Nation asserts that its trademark is famous and one of its most valuable assets. It is a brand identifier for the Nation’s Indian-styled and produced goods.
In at least as early as March 2009, Urban Outfitters began using the “Navajo” and “Navaho” marks in product lines or to sell goods. These goods included clothing (see below), jewelry, footwear, handbags, caps, gloves, undergarments and flasks. These marks, the Nation alleges, evoke the Navajo Indian Tribe’s tribal patterns.
Urban Outfitters defends the lawsuit, alleging, among other things, that the NAVAJO® mark is generic and therefore not protected under the Lanham Act. Specifically, Urban Outfitters assert the mark is generic for a fashion trend or groups of goods. Further, Urban Outfitters asserts that the Nation has abandoned the marks.
The Nation brought a summary judgment motion on its trademark infringement claim. It offered a consumer survey showing customers recognize the mark as referring to authentic goods associated with the Nation not as a generic term for any class of goods.
A generic mark is one that is “a common description of products and refers to the genus of which the particular product is a species.” Donchez v. Coors Brewery Co., 392 F.3d 1211, 1246 (10th Cir. 2004). I have posted about generic marks before here.
The Nation disputes the allegation of genericness. It asserts that the NAVAJO® mark is inherently distinctive as either fanciful, arbitrary or suggestive. According to the Nation, the mark is a fanciful because the term “Navajo” is an archaic, invented name, and fanciful when applied to the classes of goods of jewelry, clothing and accessories. Ironically, the Nation explained that the term was originally a derogative term used by the Spanish when referring to members of the Nation. The Nation members themselves refer to themselves as Diné. Accordingly, NAVAJO® is an invented term and fanciful when applied to the goods sold by the Nation.
In the alternative, the mark is arbitrary when used to describe these goods. Finally, the Nation contends that the mark is at the very least suggestive, because it suggests or requires an extra inference that goods sold are associated with the Nation.
Even if the Court found the mark descriptive, the Nation contends that NAVAJO® is protected because it acquired a secondary meaning. In other words, the consuming public associates it with the Nation’s brand.
In its motion, the Nation relies heavily on a consumer survey to assert actual confusion. This survey found as much as a 53% confusion rate, and an adjusted rate of 40%.
Urban Outfitters will be filing its response in a couple of weeks. It will likely again argue that the mark is generic, has been abandoned and attack the survey evidence.
In addition to this motion, the Nation brought a separate motion for summary judgment seeking to dismiss the counterclaims and affirmative defenses that are predicated on arguments concerning genericness and abandonment of the marks. Although the court previously dismissed the Urban Outfitters counterclaim to cancel the NAVAJO® mark based on genericness, this counterclaim was dismissed on the grounds of sovereign immunity—not the merits of the claim. However, with respect to an affirmative defense of genericness, the Nation may not be able to benefit from sovereign immunity. If so, the court will have to address the merits of the genericness argument.