Posted: November 20th, 2011
By Sarah R. Riedl *
Urban Outfitters has been the target of numerous complaints over the years for lacking sensitivity to various ethnic, racial, and religious groups. Among the most notable examples are a parody of Monopoly called “Ghettopoly,” a t-shirt stating “I Love Jewish Girls” surrounded by dollar signs, and a “Jesus Dress Up” magnet game. The most recent incident to add to the list of Urban Outfitters’ rap sheet involves the Navajo Nation.
The Navajo nation recently saddled Urban Outfitters with a cease and desist letter demanding the clothing marketer take uses of the word “Navajo” out of its descriptions of the company’s products. The source of the Navajo’s trademark claims stem from the use of the word “Navajo,” not the use of Navajo patterns in the items, which many fashion companies have borrowed throughout the years.
The Navajo nation holds ten trademarks on the name Navajo that apply in fashion on online sales contexts. Despite the Navajo Nation Government’s existence outside the United States federal government, many of the trademarks are registered with the United States Patent and Trademark Office.
In response to the requests by the Navajo nation, Urban Outfitters has since taken use of the word Navajo off its website entirely, with no remaining references to the word. The two particular items targeted by the complaints, a flask and a hipster panty, now bear the term “printed” to replace “Navajo.”
Luckily for Urban Outfitters, they quickly complied with the cease and desist letter because the Navajo Nation would likely have a viable claim for infringement under the Lanham Act. The Lanham Act uses the “likelihood of consumer confusion” standard to determine whether a person or company has infringed on the trademark rights of another. The standard does not require the complainant show actual evidence of consumer confusion, though evidence of actual confusion will weigh heavily on the analysis. Rather the standard merely requires a showing that consumers might become confused regarding the source of the products.
In Urban Outfitter’s case, the Navajo nation would likely prevail by showing that the use of the word “Navajo” to describe their products may lead consumers to think the products are made by the Navajo nation. The main issue the Navajo Nation has with regards to this trademark infringement largely surrounds the two objects the name was associated with, the flask and the panty. The Navajo Nation preaches modesty, and the confusing use of the word “Navajo” could lead consumers to believe the product was created by their people. Additionally, the Navajo Nation is plagued with alcoholism in higher proportions than the general population, making Urban Outfitters’ flask seem particularly insensitive to the Navajo Nation’s issues and concerns.
Regardless of Urban Outfitters’ intent in branding the more than twenty products on its website “Navajo,” the Nation maintains the company should have gone to Navajo sources for any products made in the Navajo tradition. Of course, several skilled Navajo artisans may have been willing to provide products for the company’s line or provide designs to be used on products.
* Sarah R. Riedl is a second year law student at Wake Forest University School of Law. She has a Bachelor of Arts in English from the University of Illinois. Upon graduation in May 2013, Miss Riedl intends to practice business litigation and intellectual property law