935 F. Supp. 2d 1147
D.N.M.2013Background
- Navajo Nation sues Urban Outfitters and affiliates over use of NAVAJO/Navaho marks and related conduct in fashion goods and marketing.
- Defendants are a network of Urban Outfitters brands and affiliates; they allegedly used Navajo/name marks in online and retail products.
- Plaintiffs claim the NAVAJO marks are incontestable, strong source identifiers with broad commerce use and substantial investment in promotion.
- Exhibits show products labeled with Navajo/Navaho terms and marketing that allegedly misleads consumers about origin.
- Plaintiffs allege conduct includes initial interest confusion, false advertising, and misrepresentation of Indian-made origin under multiple federal and New Mexico state theories.
- Court denied mootness of an earlier motion; granted in part and denied in part the Defendants' motion to dismiss the Amended Complaint, leaving most counts in the case for further proceedings.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Lanham Act infringement viability | NAVAJO marks are incontestable and strong; Defendants’ use creates likelihood of confusion. | Navajo is descriptive as a generic descriptor; fair use may apply; minimal confusion alleged. | Plaintiffs’ Lanham Act claims survive the Rule 12(b)(6) stage; fair use not conclusively applicable at this stage. |
| Navajo as a generic descriptor | NAVAJO functions as a protected trademark with secondary meaning. | Navajo is a generic descriptor for Indian-styled designs. | Not generic at this stage; sufficient facts support secondary meaning and protection. |
| Dilution by blurring and tarnishment (Count II) | Use of Navajo/Navaho in marketing dilutes the famous mark. | Some theories of tarnishment are unsupported by facts; others rely on extraneous materials. | Dilution by blurring survives; tarnishment theory narrowed to claims based on relative product quality. |
| IACA claim viability | Defendants’ labeling and marketing falsely suggest Indian origin. | Clothing and apparel may be “Indian products” under IACA; misrepresentation arguments are insufficient. | IACA claim survives dismissal; clothing can constitute Indian products; allegations suffice to proceed. |
| NMUPA standing and potential certification | Competitors may sue under NMUPA for deceptive practices affecting the public. | Standing limited to buyers; Santa Fe Custom Shutters and Lohman guide narrow standing. | Standing contested; court to consider supplemental briefing and may certify to New Mexico Supreme Court; counts not dismissed. |
Key Cases Cited
- Park ’N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189 (U.S. 1985) (classic framework for likelihood of confusion and incontestability)
- KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (U.S. 2004) (bank on incontestable marks; defenses and likelihood of confusion)
- GTE Corp. v. Williams, 904 F.2d 536 (10th Cir. 1990) (presumption about mark suggestiveness vs. descriptiveness; secondary meaning considerations)
- Sunmark, Inc. v. Ocean Spray Cranberries, Inc., 64 F.3d 1055 (7th Cir. 1995) (descriptive use, nominative fair use considerations)
- Hygrade Food Products Corp. v. H.D. Lee Mercantile Co., 46 F.2d 771 (2d Cir. 1931) (descriptive use and fair use defense; need to avoid deception)
- Donchez v. Coors Brewing Co., 392 F.3d 1211 (10th Cir. 2004) (category of mark strength and likelihood of confusion factors)
- Hall v. Walter, 969 P.2d 224 (Colo. 1998) (standing to sue under consumer-protection-like statutes by non-consumers when public interest implicated)
- Lohman v. Daimler-Chrysler Corp., 2007-NMCA-100, 166 P.3d 1091 (N.M. Ct. App. 2007) (broad standing under NMUPA; any person; public interest component)
- Santa Fe Custom Shutters & Doors, Inc. v. Home Depot U.S.A., Inc., 2005-NMCA-051, 137 N.M. 524, 113 P.3d 347 (N.M. Ct. App. 2005) (standing limitations under NMUPA; context of purchaser-seller)