Navajo Nation, Corp. v. Urban Outfitters, Inc.

Decision Date26 March 2013
Docket NumberNo. Civ. 12–195 LH/WDS.,Civ. 12–195 LH/WDS.
Citation935 F.Supp.2d 1147
PartiesThe NAVAJO NATION, a sovereign Indian Nation, Diné Development Corporation, a corporation wholly-owned by and formed under the laws of the Navajo Nation, and Navajo Arts and Crafts Enterprise, a wholly-owned instrumentality of the Navajo Nation, Plaintiffs, v. URBAN OUTFITTERS, INC.,, L.L.C., Urban Outfitters Wholesale, Inc., Anthropologie, Inc.,, L.L.C., and Free People of PA, L.L.C., Pennsylvania Corporations, and, L.L.C., a Delaware Corporation, Defendants.
CourtU.S. District Court — District of New Mexico


Brian L. Lewis, Henry S. Howe, Navajo Nation Department of Justice, Window Rock, AZ, Karin Swope, Mark Griffin, Keller Rohrback, Seattle, WA, for Plaintiffs.

Alfred L. Green, Jr., Butt, Thornton & Baehr, PC, Albuquerque, NM, H. Jonathan Redway, Melissa A. Alcantara, Nicole M. Meyer, Dickson Wright, PLLC, Washington, DC, Joseph A Fink, Dickinson Wright, PLLC, Lansing, MI, for Defendants.


C. LEROY HANSEN, Senior District Judge.

On June 22, 2012, Defendants Urban Outfitters, Inc.;, L.L.C.; Urban Outfitters Wholesale, Inc.; Anthropologie, Inc.;, L.L.C.; Free People of PA, L.L.C.; and, L.L.C. (collectively Defendants) filed a Motion to Dismiss the Amended Complaint and Memorandum in Support (Doc. 33). Plaintiffs The Navajo Nation, the Diné Development Corporation (“DDC”), and the Navajo Arts and Crafts Enterprise (NACE) (collectively, Plaintiffs or “The Navajo Nation”) oppose the motion. This Court, having considered the pleadings, motions, briefs, relevant law, and otherwise being fully advised, concludes that the motion to dismiss the amended complaint should be granted in part and denied in part as described herein, and that all Counts will remain in the case at this time.


The Navajo Nation is a sovereign Indian Nation with over 300,000 enrolled members. Am. Compl. (Doc. 30) ¶ 9. The Navajo Nation is an institution that acts through its political subdivision, the Division of Economic Development; its wholly-owned instrumentalities, such as NACE and DDC; its officers, employees, and authorized agents; and its members, the Navajo People. Id.

Defendant Urban Outfitters, Inc., (Urban Outfitters) is an international retail company that markets and retails its merchandise in its more than 200 stores located nationally and internationally and on the internet. See id. ¶ 13. Defendants, L.L.C.; Urban Outfitters Wholesale, Inc.; Anthropologie, Inc.;, L.L.C.; Free People of PA, L.L.C.; and, L.L.C. are wholly-owned subsidiaries of Urban Outfitters. Id. ¶¶ 14–17. The subsidiaries are not separate autonomous entities, but rather are “brands” of Urban Outfitters. Id. ¶ 18.

The Navajo Nation alleges in its Amended Complaint that it and its members have been known by the name “Navajo” since at least 1849, have continuously used the NAVAJO trademark in commerce, and have made the NAVAJO name and trademarks famous with numerous products, including, among other things, clothing, accessories, blankets, jewelry, foods, tools, decorations, crafts, and retail services. Id. ¶ 3. Plaintiffs assert that the Navajo Nation has registered 86 trademarks using the NAVAJO component with the United States Patent and Trademark Office (“USPTO”) on the Principal Register for a variety of different classes of goods and services, including clothing, jewelry, house wares, and accessories. Id. ¶¶ 3, 27. Plaintiffs contend that many of their 86 registered trademarks have become incontestable under 15 U.S.C. § 1065, 1 including Trademark Registration Nos., 2,237,848; 2,976,666; 3,602,907; 3,787,515; 3,787,518; and 3,793,381. Id. ¶ 28.2

Plaintiffs assert that they have invested substantial capital in promoting and protecting their NAVAJO trademarks, resulting in more than $500 million in sales of NAVAJO-branded goods. Id. ¶ 4. They contend that the NAVAJO marks are prominently featured on their and their agents' websites. Id. ¶ 30. Plaintiffs assert that its famous NAVAJO mark is broadly recognized by purchasers of consumer goods and the general public as a trademark for the Navajo Nation's Indian-styled and Indian-produced goods. Id. ¶ 31.

Plaintiffs allege that the NAVAJO mark is inherently distinctive, and given the incontestable status of its registration, the trademark may not be challenged as merely descriptive. Id. ¶ 29. Plaintiffs contend that the mark is suggestive, arbitrary, or fanciful and that the NAVAJO mark is immediately recognized and associated with the Navajo Nation, thus serving as an identifier of source. Id. ¶¶ 29, 46. Further, Plaintiffs assert:

“Navajo” is not a generic name for a class of products such as clothing jewelry or accessories. “Navajo” is not the name of any genus of products, such as clothing, jewelry or accessories. Customers do not go into an Urban Outfitters store, and ask for “a Navajo.” If they did, a sales person would not know how to assist them.Id. ¶ 29. Plaintiffs contend that the term “Navajo” is not being used descriptively because “Navajo” means of or pertaining to the Navajo Nation or members of the tribe. See id. ¶ 45. Instead of using descriptive words like “geometric” or “southwestern,” they chose “Navajo” in order “to trade off of the cachet and romanticism associated with the Navajo People, who form the Navajo Nation.” Id. ¶ 46. Plaintiffs contend that Defendants falsely advertise a number of its “Navajo” products as “Vintage” and “Handmade,” making an express claim that their goods are made by members of the Navajo Nation, when only enrolled members of the Navajo Nation may sell their goods under the NAVAJO trademark. Id.

The Navajo Nation asserts that, at least as early as March 16, 2009, Defendants have used “Navajo” and “Navaho” as names and marks in direct competition with NAVAJO-branded goods. See id. ¶¶ 5, 37. In early 2011, Plaintiffs allege that Urban Outfitters started a product line of 20 or more items containing the NAVAJO trademark, which they sold on their website and retail stores. Id. ¶ 41. Plaintiffs claim that Defendants' items sold under the “Navajo” and “Navaho” names and marks “evoke the Navajo Nation's tribal patterns, including geometric prints and designs fashioned to mimic and resemble Navajo Indian-made patterned clothing, jewelry and accessories.” Id. ¶ 37. Plaintiffs assert that Defendants also used the NAVAJO mark in its internal search engine to divert customers to its products, thus engaging in initial interest confusion. Id. ¶ 40. Plaintiffs contend that Free People have sold and have continued to sell jewelry under the “Navajo” trademark and have used “Navajo” as a search term to display its retail goods. Id. ¶ 52. Plaintiffs attached as Exhibit C to their Amended Complaint copies of Defendants' webpages showing Free People's use of the “Navajo” mark as a search term.” Id. and Ex. C (Doc. 30–2) at 2–3 of 29. Plaintiffs further assert Anthropologie “has sold items using the Navajo trademark as well.” Am. Compl. (Doc. 30) ¶ 52.

Plaintiffs attached as Exhibit A to their Amended Complaint an illustrative, not exhaustive, list of Defendants' infringing activity. Id. ¶ 41. Exhibit A includes allegedly infringing products listed on the Urban Outfitters website, including, among others, “Deter Navajo Tee,” “Ecote Navajo Surplus Jacket,” “Lucca Couture Navajo Pullover Sweater,” “Navajo Bracelet,” “Navajo Feather Earring,” “Navajo Hipster Panty,” “Navajo Print Fabric Wrapped Flask,” “OBEY Navajo Glove,” “Pendleton Navajo Weekender Bag,” “Vintage Woolrich Navajo Jacket,” and “Wide Navajo Scarf.” See Am. Compl., Ex. A (Doc. 30–1) at 2–24 of 41. Exhibit A also contains allegedly infringing products sold from the Free People website, including items described as follows: “Vintage Handmade Navajo Necklace,” “Vintage Navajo Cuff,” and “Joplin Fringe Bag” further described as a [u]nique Navajo patterned blanket fringe bag....” See id. at 25–33 of 41. Finally, Exhibit A includes web pages from Anthropologie that contain allegedly infringing products listed as “Navajo Blossom Pin.” See id. at 34–37 of 41. Plaintiffs also list in an illustrative, not exhaustive, chart nine registered trademarks that Defendants have allegedly infringed. Id. ¶ 54.

In addition, Plaintiffs contend that using their name to sell hip flasks and panties dilutes the Navajo Nation's goodwill in its trademarks. Am. Compl. (Doc. 30) ¶ 47. Plaintiffs argue that the use of “Navajo” with products like its “Navajo Flask” is derogatory, scandalous, and contrary to the Navajo Nation's principles because it has long banned the sale and consumption of alcohol within its borders and the NavajoNation does not use its mark in conjunction with alcohol. Id. ¶ 63. Plaintiffs further contend that the misspelling of the “Navajo” name as “Navaho” is contrary to Navajo Nation law, is confusingly similar to Plaintiffs' own NAVAJO marks, and is scandalous and derogatory and should be enjoined. Id. ¶ 66.

Plaintiffs also argue that Defendants' sale of products with significantly lower quality than Plaintiffs' own authentic products will likely harm the reputation of the NAVAJO name and mark. Id. ¶ 64. Plaintiffs argue that Defendants use of the “Navajo” name and mark to promote its “Navajo Collection” makes it very likely consumers will incorrectly believe that the “Navajo” name is an indistinct term, rather than associate “NAVAJO” as a unique and inherently distinctive trademark. See id. ¶¶ 60–62.

Moreover, Plaintiffs assert that Defendants have offered for sale and sold products in an Indian style, motif, or design using terms like “Native American,” “Indian,” “Tribal,” and the name of a particular Indian Tribe in a way that confuses customers into believing they are being offered or purchasing authentic Indian-made products, when in fact their products are not authentic Indian-made...

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