The Navajo Nation lost two counts in a multi-million dollar lawsuit against Urban Outfitters because the tribe’s trademark is not “famous” enough, the court siding with the fashion giant's argument that "Navajo" is a generic term for a style or design.
The Indigenous tribe—the largest in the United States—had to prove that the term “Navajo” is “widely recognized by the general consuming public of the United States” to move forward with the trademark dilution case, which few courts have been able to prove, said New Mexico’s District Judge Bruce Black on Friday.
The nation, which filed the lawsuit in 2011, is demanding either all profits generated from the retailer's "Navajo" clothing and accessory line or US$1,000 per day per item. After a cease and desist letter, the chain pulled the Navajo name from its stores, but not from those of its subsidiaries or its catalogues.
Six other counts are pending against Urban Outfitters and its subsidiaries, Anthropologie and Free People, including trademark infringement, unfair competition and false advertising. The acts that they cite, like the Indian Arts and Crafts Act that prohibits the sale of products that appear to be made by the tribe, could result in civil penalties or millions of dollars in fines.
The retailer lost a defense last month claiming that the Navajo had waited too long to file its lawsuit, since the Navajo line came out in 2001.
The Navajo Nation has ten registered trademarks on various products, according to The Fashion Law.