Urban Outfitters executives may spend the weekend partying in their infamous “Navajo Hipster Panties” and sipping from “Navajo Flasks”: the retailer has just won a partial victory in its ongoing trademark battle with the Navajo Nation, the largest indigenous tribe in the United States.
In 2012, the tribe sued Urban Outfitters for using the word “Navajo” on a number of its products, including the aforementioned flasks and panties. The Navajo Nation holds many trademarks on the use of its name, including those governing clothing and accessories. The nation also accused the company of violating the Indian Arts and Crafts Act, a law that protects Native American–made designs and goods from being ripped off and appropriated by prohibiting the “misrepresentation in marketing of Indian arts and crafts products within the United States.” The nation has demanded that it receive either all profits from Urban Outfitters products labeled “Navajo” or $1,000 per day for every day that such products were sold.
But this week, the ongoing case took a hit: the court dismissed two of several claims filed against Urban Outfitters, the AP reported. The court’s reasoning? “Navajo” is not “famous” enough as a tribe trademark for Urban Outfitters’ use of it to qualify as dilution.
“While plaintiffs’ evidence may be relevant to their infringement claim, it is not legally sufficient to establish a ‘famous’ mark and, hence, to defeat defendants’ motions for partial summary judgment on the claims for dilution by blurring and garnishment,” said US District Judge Bruce Black in New Mexico, according to The Fashion Law. “‘Famous’ requires more than just widespread distribution and significant advertising expenditures,” he said, though he acknowledged that “very few courts have found a mark legally ‘famous.’”
“Just as the term ‘Light Beer’ is generic for a type of beer that is light in body or taste or low in alcoholic and caloric content, ‘Navajo’ is today a generic descriptor for a particular category of design and style,” Urban Outfitters’ lawyers wrote in an April 2012 court filing.
It’s long seemed like Urban Outfitters is intentionally courting controversy with politically incorrect products as some sort of perverse no-such-thing-as-bad-publicity stunt — especially given that the company was founded by a rich Rick Santorum supporter. The Navajo case is only one example in a long history of Urban Outfitters controversies: from faux-bloodstained Kent State sweatshirts to the listing of a color as “Obama/Black” to transphobic greeting cards, the company’s offending products often seem to disguise conservative propaganda as ironic cool. It also has an abominable track record when it comes to ripping off independent artists and designers, a category into which Navajo Nation craftspeople fit.
A search for the word “Navajo” on Urban Outfitters’ site no longer turns up any results, but the Navajo Nation claims that the retailer has sold more than $500 million worth of Navajo-branded goods. The case is not yet over, though, so there’s still time for some of those earnings to change hands: six counts are still pending against Urban Outfitters, including trademark infringement, unfair competition, and false advertising.