Navajo Nation files trademark suit against Urban Outfitters

The Navajo Nation has filed a federal lawsuit against Urban Outfitters Inc., alleging that the Philadelphia-based retailer committed trademark infringement by marketing and selling products that use the American Indian tribe's marks and names without a licensing or vendor agreement.

In the civil action filed in U.S. District Court in New Mexico, the tribe and its commercial subsidiaries seek damages and an order stopping Urban Outfitters from using the names  "Navajo " and  "Navaho" and marks on goods that compete with its own trademarked jewelry, housewares, and clothing.

The lawsuit was filed Tuesday in New Mexico because Urban Outfitters operates a store there, and it is one of three contiguous states that houses the sovereign tribe's 27,000 square miles of territory. Utah and Arizona are the two other states.

Telephone messages left for Urban Outfitters spokesman Ed Looram were not returned Wednesday.

The lawsuit contends that Urban Outfitters began using the Navajo name, and a differently spelled version, Navaho, in its product line or in connection with the sale of its merchandise as early as March 16, 2009; the company applied those names to clothing, jewelry, shoes, handbags, caps, gloves, undergarments, and scarves.

Merchandise also bore designs and marks that "evoke the Navajo Indian Tribe's tribal patterns, including geometric prints and designs fashioned to mimic and resemble Navajo Indian and Tribal patterns, prints, and designs," the lawsuit says.

"Urban Outfitters has sold and is selling over 20 products using 'Navajo' and 'Navaho' trademarks in its retail stores, its catalogs, and its online stores," the tribe contends.

One example cited: A "Leather Navaho cuff" was on Urban Outfitters' website in January 2010. About a year later, by the tribe's estimation, the company launched a product line of "20 or more items containing the NAVAJO name, or the term 'Navaho' in the product name alone."

Those included a "Navajo Nations Crew Pullover," "Navajo Feather Earrings," a "Navajo Print Fabric Wrapped Flask," and a "Navajo Hipster Panty," the lawsuit says.

The alleged infringement was not limited to the Urban Outfitters brand but extended to its Free People brand, a wholesale designer label and group of stores within the company, which has its headquarters at the Philadelphia Navy Yard. The publicly traded corporation also operates Anthropologie, Terrain, and BHLDN stores.

The tribe included in its court filings a link to a Free People webpage that showed jewelry available labeled "Navajo."

On Wednesday, the link displayed a Web page showing turquoise-colored stones on necklaces and bracelets labeled "Vintage Handmade Navajo Necklace" for $328, "Vintage Navajo Squash Necklace" for $398, and "Vintage Navajo Cuff" for $298.

The lawsuit comes months after the Navajo Nation tangled with Urban Outfitters on the issue out of court, including a demand that the company stop using the "Navajo" trademark, court filings say.

"The company did remove the word 'Navajo' from its product names on its website and replaced 'Navajo' with the term 'Printed' in response to the Navajo Nation's cease-and-desist letter," according to this week's lawsuit. The complaint cited an October 2011 news story as evidence of the company's having agreed to do so.

That did not, however, occur to the tribe's satisfaction, according to the lawsuit, which claims the retailer continued to use the disputed names and marks on goods sold in its stores and "also continued to use the word 'Navajo' on its sales receipts."

The Navajo Nation accuses Urban Outfitters of trademark infringement, trademark dilution, unfair competition, and commercial-practices laws violations, and of violating the Indian Arts and Crafts Act.