Navajo Nation, The, et al. v. Urban Outfitters, Inc. et al

Filing 1

COMPLAINT against All Defendants ( Filing Fee - Online Payment), filed by Navajo Nation, The. (Attachments: # 1 Exhibit, # 2 Exhibit, # 3 Exhibit, # 4 Exhibit, # 5 Exhibit, # 6 Exhibit, # 7 Exhibit, # 8 Exhibit)(Lewis, Brian)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEW MEXICO
THE NAVAJO NATION, a sovereign
Indian Nation, DINÉ DEVELOPMENT
CORPORATION, a corporation
wholly-owned by and formed under the
laws of the Navajo Nation, and
NAVAJO ARTS AND CRAFTS
ENTERPRISE, a wholly-owned
instrumentality of the Navajo Nation,

CIVIL ACTION NO.

Plaintiffs,
v.
URBAN OUTFITTERS, INC.,
URBANOUTFITTERS.COM, L.P.,
URBAN OUTFITTERS WHOLESALE,
INC., ANTHROPLOGIE, INC.,
ANTHROPOLOGIE.COM, L.P.,
and FREE PEOPLE, L.L.C., Pennsylvania
Corporations, and FREEPEOPLE.COM,
L.L.C., a Delaware Corporation,
Defendants.

COMPLAINT FOR INJUNCTIVE RELIEF AND DAMAGES
(JURY TRIAL DEMANDED)

I. INTRODUCTION
1.

The Navajo Nation brings this Complaint against Urban Outfitters, Inc., and

its wholly-owned and controlled subsidiaries, entities, and retail brands for trademark
infringement, trademark dilution, unfair competition and commercial practices laws
violations, and for violation of the Indian Arts and Crafts Act. In this action, the Navajo
Nation seeks to protect its famous and distinct NAVAJO name and trademark, and to

ensure that consumers are no longer deceived, confused, or misled in their pursuits to find
and acquire authentic and genuine NAVAJO products.
2.

The Navajo Nation and the Navajo People1 have been known by the name

“Navajo” since at least 1849, have continuously used the NAVAJO name in commerce,
and had made the NAVAJO name and trademarks famous several decades prior to
Defendant’s use of “Navajo” and “Navaho.”2 The NAVAJO name and trademarks have
been used with numerous products, including clothing, accessories, blankets, jewelry,
foods, tools, decorations, crafts, gaming establishments, tourism, educational institutions,
retail services, fairs and events, and a news publication. Since 1941, the Navajo Nation
has marketed and retailed clothing, house-wares, and jewelry using its NAVAJO name and
marks. Furthermore, since at least 1943, the Navajo Nation has marketed and sold its
goods under its registered NAVAJO trademark (hereinafter, “NAVAJO”). The Navajo
Nation has currently registered 86 trademarks using the NAVAJO component with the
United States Patent and Trademark Office (“USPTO”) on the Principal Register.
3.

The Navajo Nation has invested substantial capital in promoting and

protecting its NAVAJO trademarks,3 and with more than $500 million in sales of

1

The “Navajo People” means enrolled members of the Navajo Nation. One may only be an enrolled member
of the Navajo Nation though meeting the substantive and procedural criteria at 1 Navajo Nation Code §§ 701,
and 751-759 (West 2008). Further, enrolment in a federally-acknowledged Indian Tribe confers a unique
political status on an individual, see generally Morton v. Mancari, 417 U.S. 535 (1974), and United States v.
Antelope, 430 U.S. 641 (1977), which is the case with the Navajo People.
2

Although long-thought to be an acceptable alternative spelling, the spelling “Navaho” with an ‘h’ has been
declared by the Navajo Nation to be unacceptable, and Navajo Nation law requires that “the name ‘Navajo’
[shall be used, with] the spelling ‘j’, not ‘h’.” 1 N.N.C. § 502 (West 2008).
3

The Navajo Nation has demanded that misappropriators of the NAVAJO trademark cease-and-desist such
conduct, e.g., Exhibit B, which is the Navajo Nation’s cease-and-desist demand letter to Urban Outfitters,

2

NAVAJO-branded goods, the famous NAVAJO mark points uniquely and unmistakably to
the Navajo Nation. The strength of the NAVAJO name and trademarks is one of the
Navajo Nation’s most valuable assets.
4.

Since at least March 16, 2009, Urban Outfitters has advertised, promoted,

and sold its goods under the confusingly similar “Navaho” and identical “Navajo” names
and marks on the Internet and in stores across the United States to compete directly with
the Navajo Nation’s retail goods. Defendant’s use of the “Navajo” and “Navaho” names
and marks in direct competition with NAVAJO-branded goods, for the identical types of
goods marketed and sold by the Navajo Nation, and in many of the same channels of trade
as the Navajo Nation’s own products, deceives and confuses consumers. Defendant’s
conduct is designed to convey to consumers a false association or affiliation with the
Navajo Nation, and to unfairly trade off of the fame, reputation, and goodwill of the
Navajo Nation’s name and trademarks.
5.

Consumers have been misled as to the source, origin, sponsorship, or

affiliation of Defendant’s products sold under the “Navajo” and “Navaho” names and
trademarks. If Defendant is permitted to continue to market and retail its products under
marks that are identical and confusingly similar in appearance, sight, sound, meaning, and
overall impression, many consumers will conclude that the goods sold by Urban Outfitters
were jointly developed by, licensed, certified, supported by, or are otherwise affiliated with
the Navajo Nation, which they are not.

and has secured cancellation of the registration of the confusingly similar “Navaho” mark. The Navajo
Nation v. Big Bang Co., Reg. No. 3872159, Cancellation No. 92053327 (T.T.A.B. Mar. 22, 2011).

3

6.

In addition, Urban Outfitters’ display and sale of its goods in manners that

falsely suggest they are the product of the Navajo Nation, a Navajo arts and crafts
organization, an Indian Tribe, an Indian arts and crafts organization, or an Indian artisan,
and that such goods are Indian produced or the product of an Indian Tribe, American
Indian arts and crafts organization, or Indian artisan violates the Indian Arts and Crafts
Act.
7.

Simply put, a direct competitor should not be allowed to benefit at the

expense of the Navajo Nation’s substantial investment to the detriment of deceived,
confused, or misled consumers who seek authentic and genuine NAVAJO products. The
Navajo Nation accordingly brings this action, seeks damages, and seeks to enjoin Urban
Outfitters from using the “Navajo” and “Navaho” names and marks for the marketing and
sale of goods that directly compete with the Navajo Nation’s retail goods marketed and
sold under the NAVAJO name and trademarks.
II. THE PARTIES
A.

PLAINTIFFS

8.

The Navajo Nation is a sovereign Indian Nation, and federally-

acknowledged Indian Tribe. The Navajo Nation has over 300,000 enrolled members. The
Navajo Nation owns, controls, and exercises jurisdiction over a semi-autonomous territory
spanning more than 27,000 miles in northeastern Arizona, the southeastern portion of
Utah, and northwestern New Mexico. The Navajo Nation is an institution, which acts
through its political subdivisions (e.g., the Division of Economic Development), whollyowned instrumentalities (e.g., Navajo Arts and Crafts Enterprise and Diné Development
4

Corporation), officers, employees, and authorized agents; and on behalf of its members as
parens patriae. Hereinafter, the Navajo Nation’s political subdivisions, instrumentalities,
officers, employees, authorized agents, and the Navajo People are collectively referred to
as “the Navajo Nation.”
9.

Diné Development Corporation (“DDC”) is a corporation wholly owned by

the Navajo Nation and formed under the laws of the Navajo Nation. DDC owns, and is
authorized to issue, licenses of the NAVAJO trademark.
10.

Navajo Arts and Crafts Enterprise is a wholly owned instrumentality of the

Navajo Nation.
11.

The Navajo Nation possesses sovereign immunity, and brings this

Complaint without waiving any of its immunities from counter-claims and cross-claims,
defenses, or objections available as a sovereign.
B.

DEFENDANTS

12.

Defendant Urban Outfitters, Inc. is an international retail company, with its

headquarters located at 5000 South Broad Street, Philadelphia, Pennsylvania 19112-1495.
Urban Outfitters operates under the Urban Outfitters, Anthropologie, Free People, Terrain,
Leifsdottir, and BHLDN brands. Defendant markets and retails its merchandise in its more
than 200 stores located internationally and throughout the United States, including in New
Mexico. Defendant also maintains a significant presence on the World Wide Web or
Internet,

and

markets

and

retails

its

products

online

at

its

www.urbanoufitters.com, www.freepeople.com, and www.anthropologie.com.

5

websites:

13.

UrbanOutfitters.com, L.P. is a wholly-owned subsidiary of Urban

Outfitters, Inc.
14.

Urban Outfitters Wholesale, Inc. is a wholly-owned subsidiary of Urban

Outfitters, Inc.
15.

Anthropologie, Inc. and Anthropologie.com, L.P. are wholly-owned

subsidiaries of Urban Outfitters, Inc.
16.

Free People, L.L.C. and FreePeople.com, L.L.C. are wholly-owned

subsidiaries of Urban Outfitters, Inc.
17.

Urban Outfitters, Inc. wholly owns and controls the above-listed

subsidiaries. The actions alleged in this Complaint are committed by Urban Outfitters, Inc.
through itself and its subsidiaries. Urban Outfitters, Inc.’s subsidiaries are not separate
autonomous entities, but rather are referred to as “brands” of Urban Outfitters, Inc. in its
Form 10-K Annual Reports, and are grouped together as one “business segment” in these
same Reports. E.g., Urban Outfitters, Inc., Annual Report (Form 10-K) (Apr. 1, 2011)
(hereinafter, “UO 2011 10-K”). Moreover, the consolidated financial reports refer to
Urban Outfitters, Inc. and its subsidiaries collectively as “the Company” and pool finances
for purposes of its filings with the United States Securities and Exchange Commission.
Given the unity of purpose, and the fact that the companies do not operate as separate legal
entities, but rather as “brands” of Urban Outfitters, Inc., Urban Outfitters and its
subsidiaries are instrumentalities and alter-egos of each other.

6

18.

These subsidiaries are accordingly included collectively in the definition of

“Urban Outfitters, Inc.,” and are referred to collectively herein as “Defendant” or “Urban
Outfitters.”
III. JURISDICTION AND VENUE
19.

This Court has personal jurisdiction over Defendant, because Defendant

transacts business in the State of New Mexico, operates a store in Albuquerque, New
Mexico, and transacts business through the Internet into New Mexico.
20.

This Court has subject matter jurisdiction over this action pursuant to 28

U.S.C. §§ 1331 and 1338, because one or more of the claims at issue arises under federal
law, specifically the Lanham Act, 15 U.S.C. §§ 1051 et seq., including 1121, 1125(a) and
(c), and the Indian Arts and Crafts Act, 25 U.S.C. §§ 305e(b), (c), and (d)(1)(B)(i) and (iii).
Furthermore, the Navajo Nation is an Indian Nation or Tribe recognized by the Secretary
of the Interior, and this matter arises under the “Constitution, laws, or treaties of the United
States” for purposes of jurisdiction pursuant to 28 U.S.C. § 1362.
21.

This Court has supplemental jurisdiction over the state law claims at issue

in this action pursuant to 28 U.S.C. § 1367, because these claims are so related to the
federal law claims as to form part of the same case or controversy; that is, they arise out of
a common nucleus of operative facts.
22.

Venue is proper in this District pursuant to 28 U.S.C. § 1391, because a

substantial portion of the events giving rise to the claims in this action occurred in this
District, the injuries presented in this action occurred in this District, and Defendant may
be found in this District.
7

IV. FACTUAL BACKGROUND
A.

The Navajo Nation and the use of the NAVAJO name and trademarks

23.

The Navajo Nation has used the NAVAJO name and trademark in

commerce for over 150 years with a variety of goods and services, including goods such as
clothing, footwear, bags, jewelry, and house wares.
24.

At least as early as 1941, the Navajo Nation began using the NAVAJO

name and mark to market and sell goods through Navajo Arts and Crafts Enterprise.
25.

At least as early as 1943, the Navajo Nation registered the NAVAJO

trademark in connection with the sale of its goods and services in commerce in the United
States.
26.

The Navajo Nation has currently registered 86 trademarks that include the

NAVAJO component and title for a variety of different classes of goods and services;
including clothing, jewelry, house wares, and accessories. See the illustrative, and not
exhaustive, chart containing some of the NAVAJO trademarks registered with the USPTO
located below at paragraph 48.
27.

The Navajo Nation’s investment in its name and trademarks is significant,

and the Navajo Nation has accumulated goodwill in its mark over the years. The “Navajo”
name and the NAVAJO name and marks are the symbol of the sovereign entity, the
Navajo Nation, or as it has been known, the Navajo Indian Tribe or Navajo Tribe of
Indians; including its wholly owned commercial enterprises, DDC and Navajo Arts and
Crafts Enterprise. The NAVAJO marks are also prominently featured on the Navajo
Nation’s websites, and its authorized agents’ websites, which include, among others,

8

www.navajo.org, www.navajobusiness.com, http://www.navajobusinessdevelopment.com,
www.govanajo.com, and www.discovernavajo.com.
28.

Indeed, the NAVAJO trademark is broadly recognized by purchasers of

consumer goods, including clothing, jewelry, and house wares, and by the United States’
general public as a brand identifier for the Navajo Nation’s Indian-styled and Indianproduced goods. The NAVAJO trademark is a famous mark, which was famous for
decades before Defendant’s use. The fame and goodwill associated with the NAVAJO
name and trademark is one of the Navajo Nation’s most valuable assets.
B.

Urban Outfitters, its business, and its development

29.

Urban Outfitters, which was founded in 1970 and originally operated by a

predecessor partnership, was incorporated in the Commonwealth of Pennsylvania in 1976.
The principal business activity of Urban Outfitters is the operation of a general consumer
product retail and wholesale business. Urban Outfitters markets and sells its products to
customers through various channels, including retail stores, three catalogs, and ten Internet
web sites. As of January 31, 2010, and January 31, 2011, Defendant operated 372 stores
respectively. UO 2011 10-K at F-7. Defendant’s stores located within the United States
totaled 298 as of January 31, 2010, and 334 as of January 31, 2011. UO 2011 10-K at F-7.
Defendant’s operations in Europe and Canada included 19 and 10 stores as of January 31,
2010, respectively; and 24 and 14 stores, respectively, as of January 31, 2011. UO 2011
10-K at 20. In addition, Defendant’s wholesale segment sold and distributed apparel to
approximately 1,400 better department and specialty retailers worldwide during the time
period it has used the “Navajo” and “Navaho” names and marks. UO 2011 10-K at 5.
9

30.

Defendant is a leading lifestyle specialty retail company that operates under

the Urban Outfitters, Anthropologie, Free People, Terrain, Leifsdottir, and BHLDN
brands. UO 2011 10-K at 1. Defendant also operates a wholesale segment under its Free
People and Leifsdottir brands. Id. Defendant has over 40 years of experience creating and
managing retail stores that offer highly differentiated collections of fashion apparel,
accessories, and home goods, which according to Defendant are marketed and sold in
inviting and dynamic store settings. Id. According to Defendant, its core strategy is to
provide “unified store environments that establish emotional bonds with the customer.” Id.
In addition to its retail stores, Defendant offers its products, and markets its brands directly
to consumers through its e-commerce web sites, as well as through its Urban Outfitters,
Anthropologie, and Free People catalogs. Id.
31.

Urban Outfitters had sales of approximately $2.3 billion in fiscal year 2011.

UO 2011 10-K at 1. Urban Outfitters’ store sales accounted for approximately 31.8% of
consolidated net sales for 2011. UO 2011 10-K at 2. According to its 10-K, “[w]e have
established a reputation with these young adults [specifically, persons 18 to 28], who are
culturally sophisticated, self-expressive, and concerned with acceptance by their peer
group . . . . The product offering includes . . . an eclectic mix of apartment wares and
gifts.” UO 2011 10-K at 2.
32.

Urban Outfitters also offers a direct-to-consumer catalog that markets select

merchandise, and Defendant operates a web site that accepts orders directly from
customers. Urban Outfitters purchases merchandise from numerous foreign and domestic
vendors; and during fiscal year 2011, Urban Outfitters did business with approximately
10

3,300 vendors. U0 2011 10-K at 8. Accordingly, it would be reasonable for consumers to
conclude, based on Urban Outfitters’ business model, that Defendant contracts with the
Navajo Nation to sell its goods under the “Navajo” and “Navaho” marks, or even the
Navajo Nation’s NAVAJO mark; despite the fact that Urban Outfitters has not entered into
any license or sponsorship relationship whatsoever with the Navajo Nation for the proper
use of any trademark.
33.

Urban Outfitters operates a wholesale division to oversee the wholesale

operations of its Free People and Leifsdottir brands. 2011 10-K at 25. The Free People
wholesale division sells goods worldwide through approximately 1,400 department and
specialty stores, including Bloomingdale’s, Nordstrom, Lord & Taylor, Belk, and their
own Free People and Urban Outfitters stores. 2011 10-K at 28.
C.

Urban Outfitters’ use of the “Navajo” and “Navaho” names and
trademarks

34.

At least as early as March 16, 2009, Urban Outfitters started using the

“Navajo” and “Navaho” names in its product line, or in connection with the sale of its
goods. Defendant’s use has included, and includes (but is not limited to): clothing, jewelry,
footwear, handbags, caps, scarfs, gloves, undergarments, and flasks. Defendant’s items
sold under the “Navajo” and “Navaho” names and marks 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. Urban Outfitters has sold and is
selling over 20 products using the “Navajo” and “Navaho” trademarks in its retail stores,
its catalogs, and its online stores.

11

35.

Free People, a brand of Urban Outfitters, also sells goods using the

“Navajo” name and marks, and uses the search term “Navajo” in its online catalog search
engine

to

display

products

on

its

website.

For

example,

see

http://www.freepeople.com/index.cfm?fuseaction=search.results&searchString=navajo.
36.

Urban Outfitters has distributed and sold items through its Free People

wholesale division to other retailers using the “Navajo” name to label or describe its
products.
37.

Urban Outfitters began offering retail clothing and accessories as early as

March, 2009 with the “Navajo” and “Navaho” names to label or describe its products. For
example, a “Leather Navaho cuff” was offered on Urban Outfitters’ website in January
2010. Sometime in early-2011, and possibly earlier, Urban Outfitters started a product line
of 20 or more items containing the NAVAJO name, or the term “Navaho” in the product
name alone, which Defendant sold on its website and in its retail stores. True and correct
copies of Defendant’s more than 20 items comprising the “Navajo Collection” sold at
Urban Outfitters, as they are or have been displayed for online marketing and retailing at
Defendant’s website, are attached hereto collectively as Exhibit A.4
38.

The following is an illustrative, and not exhaustive, list of just some of

Defendant’s products:






4

Navajo Nations Crew Pullover
Title Unknown Techno Navajo Quilt Oversized Crop Tee
Truly Madly Deeply Navajo Print Tunic
Navajo Feather Earrings
Navajo Sock
Leather Navaho Cuff Bracelet

Plaintiff’s counsel caused these PDF images to be copied from Defendant’s website on October 16, 2011.

12



39.

Navajo Print Fabric Wrapped Flask
Navajo Hipster Panty
As early as June 30, 2010, Urban Outfitters also offered an “Obey Navajo”

shirt on its website.
40.

This is despite the fact that the Navajo Nation has many trademarks,

namely, the NAVAJO trademarks, which are related to the names “Navajo” and “Navaho”
that cover its goods; including, clothing, footwear, online retail sales, household products,
and textiles.
41.

Urban Outfitters knowingly and intentionally used the “Navajo” and

“Navaho” names and marks for its retail goods to compete directly with the sale of the
Navajo Nation’s goods, which are sold using the NAVAJO name and trademarks.
42.

On information and belief, Defendant will continue to sell its goods under

the “Navajo” and “Navaho” names and marks, and will continue to use “Navajo” as a
search term on its websites to market and sell its products online.
43.

The Navajo Nation demanded that Urban Outfitters cease and desist using

the “Navajo” trademark in connection with the sale of Urban Outfitters’ retail goods. A
true and correct copy of this letter is attached hereto as Exhibit B.
44.

As reported by the Associated Press on October 24, 2011, Urban Outfitters

removed 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.
45.

However, although Urban Outfitters purported to have stopped using

“Navajo” and “Navaho” with its products, Defendant continued to sell its products in its

13

retail stores under the “Navajo” and “Navaho” names and marks. Moreover, Defendant
also continued to use the word “Navajo” on its sales receipts.
46.

Defendant has continued to sell its goods with the “Navajo” name and mark

on its Free People website, www.freepeople.com. Free People is currently selling jewelry
under the “Navajo” name, and still uses “Navajo” as a search term to display its retail
goods. True and correct copies of Defendant’s items as they are or have been displayed for
online marketing and retailing at Defendant’s Free People website under the “Navajo”
name are attached hereto as Exhibit C. True and correct copies of Defendant’s webpages
showing Free People’s use of the “Navajo” mark as a search term on its Free People
website

are

attached

hereto

as

Exhibit

D.

This

Court

may

also

see

http://www.freepeople.com/index.cfm?fuseaction=search.results&searchString=navajo.
47.

Urban Outfitters has knowingly and intentionally used the “Navajo” and

“Navaho” names and marks for its retail products to directly compete with the Navajo
Nation’s retail goods.
48.

Urban Outfitters’ “Navajo” mark and the Navajo Nation’s federally

registered NAVAJO trademarks are identical in appearance, sight, sound, meaning, and
overall impression.

And Urban Outfitters’ “Navaho” mark is phonetically identical,

confusingly similar in sight and appearance, and identical in meaning and overall
impression to the Navajo Nation’s registered trademarks. The following is an illustrative,
and not exhaustive, chart showing products sold by Defendant that infringe on the Navajo
Nation’s trademarks:

14

#
1

REG.
NO.
3793381

SERIAL
NO.

MARK
NAVAJO

CLASS: GOODS AND
SERVICES

URBAN OUTFITTERS’

Class 18: Backpacks,
baby backpacks, book
bags, shoulder bags,
and tote bags.

Lopes Crossbody Clutch

INFRINGING GOODS

Hacienda Bag
Joplin Fringe Bag
One of a Kind Needlepoint
Hobo

2

3829700

NAVAJO ARTS
& CRAFTS
GUILD

Class 8: Tableware sold
only within the territory
of the Navajo Nation,
namely, knives, forks
and spoons made of
silver, or of silver
combined with
turquoise or petrified
wood settings; flatware
made of silver, or of
silver combined with
turquoise or petrified
wood settings.
Class 14: Decorative
bells, decorative boxes,
bracelets, cuff links,
cups, earrings, lavaliere
pendants, mugs,
necklaces, pins, rings
being jewelry, napkin
rings, salt holders and
trays, all made of silver,
or of silver combined
with turquoise or
petrified wood settings.

15

Vintage Handmade Navajo
Necklace (23550890)
Vintage Navajo Squash
Necklace (23550833)
Vintage Navajo Handmade
Necklace (23550908)
Vintage Navajo Cuff
(23551070)
Vintage Navajo Squash
Necklace (23550858)
Vintage Navajo Handmade
Cuff (23545569)
Vintage Navajo Cuff
(23551088)

#
3

REG.
NO.
3846651

SERIAL
NO.

MARK
NAVAJO

CLASS: GOODS AND
SERVICES

URBAN OUTFITTERS’

Class 8: Tableware sold
only within the territory
of the Navajo Nation,
namely, knives, forks
and spoons made of
silver, or of silver
combined with
turquoise or petrified
wood settings; flatware
made of silver, or of
silver combined with
turquoise or petrified
wood settings.

Vintage Handmade Navajo
Necklace (23550890)

Class 14: Decorative
bells, decorative boxes,
bracelets, cuff links,
cups, earrings, lavaliere
pendants, mugs,
necklaces, pins, rings
being jewelry, napkin
rings, salt holders and
trays, all made of silver,
or of silver combined
with turquoise or
petrified wood settings.

INFRINGING GOODS

Vintage Navajo Squash
Necklace (23550833)
Vintage Navajo Handmade
Necklace (23550908)
Vintage Navajo Cuff
(23551070)
Vintage Navajo Squash
Necklace (23550858)
Vintage Navajo Handmade
Cuff (23545569)
Vintage Navajo Cuff
(23551088)

4

3787515

NAVAJO ARTS
& CRAFTS
GUILD

Class 25: Neckties and
leather belts of plain
leather, and of leather
ornamented with silver,
and of leather
ornamented with silver
and turquoise, or other
trimmings for personal
wear.

Leather Navaho Cuff

5

3787518

NAVAJO

Class 25: Neckties and
leather belts of plain
leather, and of leather
ornamented with silver,
and of leather
ornamented with silver
and turquoise or other
trimmings, for personal
wear.

Leather Navaho Cuff

16

#

REG.
NO.

7

2237848

MARK

76700672

6

SERIAL
NO.

CLASS: GOODS AND
SERVICES

URBAN OUTFITTERS’

NAVAJO

Class 21: Housewares,
namely, dinnerware,
beverage glassware;
cups, namely, coffee
cups, tea cups, beverage
cups, mugs, serveware,
namely, bowls, platters,
dishes, plates, serving
dishes, and saucers.

Navajo Print Fabric
Wrapped Flask

NAVAJO

Class 25: clothing;
namely, tops, vests,
shirts, sport shorts, polo
shirts, golf shirts, *
jackets, * T-shirts,
sweat shirts.

OBEY Navajo Painters
Jacket

INFRINGING GOODS

OBEY Navajo Print Tank
Top
Title Unknown Techno
Navajo Quilt Oversized
Crop Tee
Vintage Men’s Woolrich
Navajo Jacket
Navajo Nations Crew
Pullover
Deter Navajo Tee
Navajo Racerback Tank
OBEY Navajo Nations
Crewneck
OBEY Navajo Glove
OBEY Navajo Scarf
Navajo Hipster Panty
Staring at Stars Strapless
Navajo Dress
Navajo Sock
UO Navajo Scarf
Striped Boxy Pullover
Tye Dye to the Max Dress
Vermont Knit Sweater
Shorts
Margarita Shorts

8

2573986

NAVAJO

Class 18: luggage;
namely, suitcases,
overnight bags and
carry-on bags.

17

Pendleton Navajo
Weekender Bag
Bedouir Leather Bag
Southwest Mesa Duffle
Bag

#
9

REG.
NO.
2976666

SERIAL
NO.

MARK
NAVAJO

CLASS: GOODS AND
SERVICES
Class 25: footwear,
boots, beachwear,
blouses, overalls, rain
wear, sweaters, jackets,
coats, ski wear, caps,
hats.

URBAN OUTFITTERS’
INFRINGING GOODS

Red Navajo Plimsoll
Sneaker
Pallas Sandal
Rebecca Side Lace-up Moc
Boot
Lucca Couture Navajo
Pullover Sweater
Truly Madly Deeply
Navajo Print Tunic
On the V Crochet Tunic
Kona Pointelle Poncho
Arizona Blanket Wrap
OBEY Wool Navajo 5Panel Cap

10

3602907

NAVAJO

Class 35: online retail
store services; namely,
on-line ordering
services in the field of
clothing—specifically,
men's and women's
sportswear, namely,
jeans, tops, shirts, sport
shorts, polo shirts, golf
shirts, T-shirts and
sweatshirts.

OBEY Navajo Painters
Jacket
OBEY Navajo Print Tank
Top
Title Unknown Techno
Navajo Quilt Oversized
Crop Tee
Vintage Men’s Woolrich
Navajo Jacket
Navajo Nations Crew
Pullover
OBEY Navajo Glove
OBEY Navajo Scarf
Navajo Hipster Panty
Staring at Stars Strapless
Navajo Dress
Navajo Sock
Striped Boxy Pullover
Tye Dye to the Max Dress
Vermont Knit Sweater
Shorts
Margarita Shorts

18

Further, the Navajo Nation’s Registrations for the ten trademarks in the chart above are
attached hereto collectively as Exhibit E.
49.

On information and belief, Urban Outfitters has knowingly and

intentionally chosen the “Navajo” and “Navaho” names and marks for its retail products
that will directly compete with the Navajo Nation’s retail goods to trade on the fame and
goodwill associated with the Navajo Nation’s federally registered NAVAJO trademarks.
50.

Defendant has illegally and unlawfully profited from its sale of its various

brands’ goods under the “Navajo” and “Navaho” names and marks.
51.

The fame or reputation of the NAVAJO name and marks is such that, when

Defendant uses the “Navajo” and “Navaho” marks with its goods and services, a
connection with the Navajo Nation is falsely presumed.
52.

Defendant’s wrongful conduct, which falsely suggests a connection with the

Navajo Nation as an institution, undermines the fame and distinction of the NAVAJO
trademarks, confuses or deceives reasonable consumers, harms the Navajo Nation, and
must accordingly be declared unlawful and enjoined from continuing.
53.

The Lanham Act defines “dilution by blurring” as “association arising from

the similarity between a mark or trade name and a famous mark that impairs the
distinctiveness of the famous mark,” 15 U.S.C. § 1125(c)(2)(B); and “dilution by
tarnishment” as such an association “that harms the reputation of the famous mark.” 15
U.S.C. § 1125(c)(2)(C).
54.

Defendant’s misappropriation of the “Navajo” name and mark to promote

its thematic marketing of its “Navajo Collection” and retailing of its 23 “Navajo” products,
19

as well as its use of the confusingly similar “Navaho” name and mark, makes it very likely
that consumers will incorrectly believe that the “Navajo” name is an indistinct term used
generally for descriptive purposes.
55.

However, the “Navajo” name, or for that matter the confusingly similar

“Navaho” name, is not a general term used for descriptive purposes. Instead, Navajo
Nation’s NAVAJO name and trademarks are unique and distinct, and the Navajo Nation
uses the NAVAJO trademarks in commerce to distinguish its authentic and genuine
products from other products.
56.

Accordingly, to maintain the NAVAJO name and marks’ uniqueness in

conjunction with distinct products that are authentically and genuinely originating,
associated, or affiliated with the famous Navajo Nation, Defendant’s wrongful conduct
must be enjoined.
57.

Defendant’s use of the “Navajo” name and trademark with products such as

its “Navajo Flask,” which an image of is attached hereto within Exhibit A, is derogatory
and scandalous.
58.

The Navajo Nation does not use the NAVAJO name and trademarks in

conjunction with alcohol, or items with alcoholic connotations. Indeed, the Navajo Nation
has long banned the sale, manufacture, possession, transport, delivery, and consumption of
alcohol within its borders. 17 N.N.C. §§ 410-411 (West 2008).
59.

Defendant’s use of the “Navajo” name and mark as such is derogatory and

contrary to the Navajo Nation’s principles, and such use is inconsistent with the Lanham
Act.
20

60.

Defendant’s sale of products of significantly lower quality than the Navajo

Nation’s own authentic and genuine comparable products, e.g., Defendant’s “Navajo
Feather Earring,” which an image of is attached hereto within Exhibit A, will likely harm
the reputation of the NAVAJO name and mark when affixed and used in commerce, in
many of the same channels, and in direct competition with the Navajo Nation’s genuine
and authentic NAVAJO products.
61.

Defendant’s marketing and retailing such relatively low-quality products in

commerce, no less in the same channels of trade, with the “Navajo” and “Navaho” marks
affixed to them will likely harm the reputation of the NAVAJO name and mark, because
consumers will come to associate the Navajo Nation’s NAVAJO marks, and validly
associated products, with Defendant’s lower-quality products that are in direct competition
with the Navajo Nation’s genuine and authentic NAVAJO products.
62.

Defendant’s misspelling of the “Navajo” name is contrary to established

Navajo Nation law and is scandalous. The Navajo Nation Code provides that “[a]ll use of
the name ‘Navajo’ shall use the spelling ‘j’, not ‘h’.” 1 N.N.C. § 502 (West 2008).
63.

Defendant’s use of the “Navaho” mark differs from the NAVAJO mark

only in that the second-to-last letter consists of an “h” instead of a “j,” and is confusingly
similar to the Navajo Nation’s own NAVAJO marks.
64.

Defendant’s use of a “Navaho” mark should be cancelled as scandalous and

derogatory in violation of Navajo Nation law and the Lanham Act.

21

65.

Further, because Defendant has or is engaged in the sale of products that the

Navajo Nation may attempt to provide in the normal expansion of the Navajo Nation’s
business, Defendant’s use of the “Navaho” mark is also deceptive under the Lanham Act.
66.

The Navajo Nation will be damaged by Defendant’s continued use of the

“Navaho” mark, as it grants Defendant a claim to a right to use this “Navaho” mark,
despite the Navajo Nation’s priority of rights over Defendant’s uses of “Navajo,”
prohibition against the use of “Navaho,” and the likelihood of confusion, dilution, and
injury to the Navajo Nation’s goodwill that will be caused by Defendant’s use of the
“Navaho” mark. Thus, in addition to its use of “Navajo,” Defendant’s use of a “Navaho”
mark is also incorrect and improper in light of the requirements of the Lanham Act, as
amended, including, but not limited to, the provisions concerning scandalous or derogatory
material, deception, confusion, and dilution.
67.

Defendant’s use of the “Navajo” name and mark and the “Navaho” mark in

conjunction with it products that are part of its “Navajo Collection,” and elsewhere, is
derogatory and scandalous, has damaged the Navajo Nation, and will continue to damage
the Navajo Nation if not declared wrongful and enjoined.
D.

Urban Outfitters’ acts and omissions that falsely suggest Defendant is
displaying and selling Indian products

68.

Urban Outfitters is not a Native American or an American Indian enterprise,

entity, or instrumentality. Nor is Defendant an Indian arts and crafts association or an
Indian artisan.

Further, Urban Outfitters has no affiliation, relationship, or valid

connection with the Navajo Nation, its political subdivisions, instrumentalities, officers,
employees, or authorized agents, nor any other federally-acknowledged Indian Tribe.
22

69.

A non-Indian maker of products in an Indian style, motif, or design cannot

use the terms “Native American,” “American Indian,” “Tribal,” or the name of a particular
Indian Tribe in advertising or marketing its products, unless said maker qualifies the usage
of such terms so that consumers are not suggested to be purchasing authentic Indian-made
products.
70.

Defendant has offered, advertised, marketed, and displayed for sale, and

sold its goods via its catalogs, websites, and retail stores in manners that falsely suggested
Defendant’s products are an Indian product, Indian produced, or the product of an
American Indian Tribe, or the product of an Indian arts and crafts organization within the
United States, including suggested Indian products that consist of clothing, house wares,
and jewelry in a traditional Indian style, motif, or medium.
71.

Urban Outfitters did not qualify its use of “Indian,” “Navajo,” and other

particular names of Indian Tribes in connection with the sale of its retail goods.
72.

Defendant’s websites, catalogues, and retail stores have displayed or are

displaying numerous traditional Indian-style products composed of Indian motifs and
designs without any qualification.
73.

Defendant has displayed, marketed, and retailed its suggested Indian

products by using search or identifier terms such as “Native American,” “Indian,” or the
name of a particular Indian Tribe in conjunction with its retail products on its websites.
True and correct copies of Defendant’s products as they are or have been displayed for
online marketing and retailing at Defendant’s website in such a manner to convey these
false suggestions are attached hereto collectively as Exhibit F.
23

74.

Moreover, several of Defendant’s retail products that convey the false

suggestion that they are Indian products include, but are not limited to, Defendant’s
“Navajo Bracelet,” “Navajo Glove,” “Vintage Men’s Woolrich Navajo Jacket,” and
“Navajo Feather Earring.” True and correct copies of Defendant’s products above as they
are or have been displayed for online marketing and retailing at Defendant’s website in
such a manner to convey these false suggestions are attached hereto collectively within
Exhibits A, C, D, and F.
75.

Urban Outfitters’ sale of its retail goods under the “Native American,”

“Indian,” “Tribal,” or the name of a particular Indian Tribe, such as Navajo, falsely
suggests Defendant’s products are Indian products of the Navajo Nation, an Indian Tribe,
an Indian arts and crafts association, or an Indian artisan, when in-fact Defendant’s
products are not Indian products of the Navajo Nation, an American Indian Tribe, an
Indian arts and crafts organization, or an Indian artisan.
76.

Some of Defendant’s products, as they were and are advertised, marketed,

offered, displayed for sale, and sold by Defendant, which are the subject of this Complaint,
are in a traditional Indian style, and are composed of Indian motifs and Indian designs, but
are without identifier terms or labels as the products above, though a consumer may find
these products using the search terms “Indian,” “Native American,” or “Navajo,” which
falsely suggests they are Indian products. Defendant’s marketing, displaying, and retailing
such products, which include, but are not limited to, Defendant’s “Festival Dance Seed
Bead Earring,” “Fringed Seed Bead Bracelet,” and “Seed Bead Barrette,” with its overall
line of suggested Indian products, and without any qualification, further suggests that
24

Defendant’s products are Indian products.

True and correct copies of Defendant’s

products, as they are or have been displayed for online marketing and retailing at
Defendant’s website in such a manner to convey these false suggestions, are attached
hereto collectively as Exhibit G.
77.

At various times relevant hereto, Defendant has been advertising,

marketing, offering, displaying for sale, and selling products in manners that falsely
suggested its products are Indian-made, an Indian product, a product of an Indian Tribe, or
the product of an Indian arts and crafts organization within the United States.
78.

At least since March 16, 2009, and possibly earlier as discovery will

confirm, and continuously thereafter to the present date, Defendant has advertised,
marketed, offered, displayed for sale, and sold goods in manners that falsely suggested
they are Indian-made, an Indian product, a product of an Indian Tribe, or the product of an
Indian arts and crafts organization resident within the United States, including Indian
products consisting of jewelry and clothing in a traditional Indian style, printed design, or
medium.
79.

The Indian-style goods Defendant has advertised, displayed, offered for

sale, and sold, including those advertised, sold, displayed, and offered for sale alleged
herein, are not, and were not Indian produced, an Indian product made by an Indian, or the
product of an Indian arts and crafts organization in the United States, or any non-member
Indian artisan properly certified by an Indian Tribe.

25

V. COUNTS
COUNT ONE
DEFENDANT IS LIABLE TO THE NAVAJO NATION FOR TRADEMARK
INFRINGEMENT PURSUANT TO THE LANHAM ACT’S SECTION 32.
80.

The Navajo Nation realleges the previous paragraphs of this Complaint as if

fully set forth herein.
81.

Urban Outfitters’ use of the identical “Navajo” and the confusingly similar

“Navaho” name and marks is intended to trade on the good will established by the Navajo
Nation through years of its use of the NAVAJO name and marks.
82.

Defendant’s use of the identical “Navajo” mark and confusingly similar

“Navaho” mark has created actual confusion in the market place, and continues to create a
likelihood of confusion.
83.

Defendant’s intentional use of the identical “Navajo” and confusingly

similar “Navaho” mark in connection with the sale of clothing, jewelry, house wares,
footwear, and similar such items is likely to cause confusion, mistake, or deception of
others, as to the affiliation, connection, or association of Defendant and Defendant’s
products with the Navajo Nation.
84.

Defendant’s conduct also causes, and is likely to continue to cause,

confusion, mistake, or deception as to the origin, sponsorship, or approval of Defendant’s
goods and commercial activities.
85.

The use of the Navajo Nation’s registered trademarks constitutes trademark

infringement in violation of 15 U.S.C. § 1114.

26

86.

Defendant knew of the Navajo Nation’s trademark rights, and knowingly,

willfully, and deliberately infringed on them, making this an exceptional case within the
meaning of 15 U.S.C. § 1117.
87.

The Navajo Nation has been, and will continue to be, damaged by

Defendant’s willful trademark infringement in the manner, and in the amount that will be
proved at trial.
88.

The Navajo Nation has been, and will continue to be, damaged by

Defendant’s willful trademark infringement in a manner, and in an amount that cannot be
fully measured or compensated in economic terms.
89.

Defendant’s actions damaged, and will continue to damage, the Navajo

Nation’s market, reputation, goodwill, and reputation, and may-well discourage current
and potential customers from dealing economically with the Navajo Nation.
90.

Such irreparable harm will continue unless Defendant’s acts are restrained

and enjoined during the pendency of this action, and permanently thereafter.
COUNT TWO
DEFENDANT IS LIABLE TO THE NAVAJO NATION FOR TRADEMARK
DILUTION PURSUANT TO THE LANHAM ACT’S SECTION 43.
91.

The Navajo Nation realleges the previous paragraphs of this Complaint as if

fully set forth herein.
92.

The Navajo Nation’s trademark is a famous mark.

93.

Defendant’s use of the “Navajo” and “Navaho” names and marks to

promote, market, and sell its retail items constitutes willful Trademark Dilution by
blurring, and willful Trademark Dilution by tarnishment pursuant to 15 U.S.C. 1125(c).
27

94.

Urban Outfitters’ intentional and willful dilution and tarnishment of the

Navajo Nation’s registered NAVAJO trademark has caused, and will continue to cause
damage and irreparable harm to the Navajo Nation, for which there is no adequate remedy
otherwise available at law.
95.

Such irreparable harm will continue unless Defendant’s acts are restrained

and enjoined during the pendency of this action, and permanently thereafter.
COUNT THREE
DEFENDANT IS LIABLE TO THE NAVAJO NATION FOR UNFAIR
COMPETITION PURSUANT TO THE LANHAM ACT’S SECTION 43.
96.

The Navajo Nation realleges the previous paragraphs of this Complaint as if

fully set forth herein.
97.

Urban Outfitters’ use of the “Navajo” and “Navaho” names and marks to

promote, market, and sell its retail items in competition with the Navajo Nation’s
NAVAJO trademarks constitutes Unfair Competition pursuant to 15 U.S.C. § 1125(a),
both through false advertising and infringement of the Navajo Nation’s unregistered
NAVAJO trademarks.
98.

Urban Outfitters’ unfair competition has caused, and will continue to cause,

damage to the Navajo Nation; and further, Defendant’s conduct is causing irreparable harm
to the Navajo Nation for which there is no adequate remedy otherwise available at law.
99.

Such irreparable harm will continue unless Defendant’s acts are restrained

and enjoined during the pendency of this action, and permanently thereafter.

28

COUNT FOUR
DEFENDANT IS LIABLE TO THE NAVAJO NATION FOR VIOLATIONS OF
THE INDIAN ARTS AND CRAFTS ACT, 25 U.S.C. § 305 et seq.
100.

The Navajo Nation realleges the previous paragraphs of this Complaint as if

fully set forth herein.
101.

The Indian Arts and Crafts Act (“IACA”) prohibits non-Indian businesses

and individuals from misrepresenting that their goods are the product of an Indian tribe, or
American Indian or Native American person(s) through selling any good “in a manner that
falsely suggests it is . . . an Indian product.” 25 U.S.C. § 305e(a).
102.

The IACA prohibits non-Indians from engaging in “unqualified use” of the

name of an Indian Tribe in connection with products they market and retail for sale, such
as bracelets, earrings, coats, jackets, and gloves to suggest such goods are Indian products.
103.

Defendant’s “Navajo Collection” includes the “Navajo Bracelet,” “Navajo

Feather Earring,” “Navajo Glove,” and “Vintage Men’s Woolrich Navajo Jacket.”
Defendant’s “Navajo Bracelet,” “Navajo Glove,” “Vintage Men’s Woolrich Navajo
Jacket,” and “Navajo Feather Earring” are products specifically contemplated listed, or
very close to those specifically contemplated by the IACA.
104.

Defendant has offered, advertised, marketed, and displayed for sale, and

sold its goods via its catalogs, web-sites, and retail stores in manners that falsely suggest
Defendant’s products are Indian products pursuant to the IACA, including suggested
Indian products that consist of clothing, house wares, and jewelry in a traditional Indian
style, motif, or medium.

29

105.

Defendant's advertisement, display, offering for sale, and sale of Indian

style goods in a manner that falsely suggests Defendant’s goods are Indian products is
illegal, and must be enjoined, because no adequate remedy at law is otherwise available.
106.

With its marketing and retailing, having marketed and retailed, or having

caused to be marketed and retailed, its products under the “Navajo,” “Native American,”
and “Indian” names, and using Indian designs and motifs, without qualification, Defendant
is misrepresenting that its products are Indian products within the meaning of the IACA.
107.

Defendant offered and offers for sale its goods in a manner that falsely

suggests they were and are the products of an Indian Tribe, when in-fact Defendant’s
products are not the products of any Indian Tribe.
108.

Defendant’s acts, therefore, violate the IACA, and Defendant is accordingly

strictly liable to the Navajo Nation for its acts.
109.

The Navajo Nation has been injured and damaged as a result of Defendant's

actions alleged herein.
110.

Defendant’s false suggestions have caused, and will continue to cause

damage to the Navajo Nation for which there is no adequate remedy otherwise available at
law.
111.

The Navajo Nation is a competitor of Defendant, which sells similar

products, and the Navajo Nation has suffered competitive injuries as a result of
Defendant's actions alleged herein, as well as other damages including: (1) Members of the
Navajo Nation have lost sales as the direct and indirect result of Defendant's offer, display,
and sale of similar Indian-style products to those offered, displayed, and sold by these
30

American Indian People through similar media and markets; (2) Defendant's imitation
products have driven down prices of authentic Indian products, forcing the Navajo Nation
and American Indian People to offer and garner revenues for authentic products at lower
prices; (3) the Navajo Nation and American Indian People have suffered a loss of goodwill
and reputation because of Defendant's counterfeit products; and (4) Defendant has made a
gross profit on all of the products alleged herein by its unlawful and unprivileged conduct.
112.

The Navajo Nation advertises, markets, and sells authentic Indian-made

products similar to those products advertised, offered, displayed, and sold by Defendant,
by which Defendant has falsely suggested to be Indian-made products; including, but not
limited to, crafts, jewelry, clothing, and accessories in a traditional Indian style or medium.
113.

The Navajo Nation, through its commercial subdivisions, advertises, offers,

markets, and sells authentic Indian-made products through various media, including, but
not limited to, newspaper advertisements, radio, signs, catalogs, brochures, internet, mailed
solicitations, miscellaneous ads and displays, and in-store retail displays.
114.

The injuries suffered by the Navajo Nation include, but are not limited to,

advertising injuries arising out of Defendant's misappropriation of the Navajo Nation’s
advertising ideas and styles of doing business.
115.

The injuries suffered by the Navajo Nation include, but are not limited to,

disparagement of its products and advertising injuries, and web-site injuries arising out of
Defendant's disparagement of the Navajo Nation’s products.
116.

The injuries suffered by the Navajo Nation include, but are not limited to,

advertising injuries and web-site injuries arising out of Defendant's infringement of title by
31

falsely suggesting and misrepresenting that its products are Indian made, when they were
not.
117.

The injuries suffered by the Navajo Nation include but, are not limited to,

advertising injuries arising out of Defendant's use of another's advertising ideas.
118.

The injuries suffered by Navajo Nation include, but are not limited to,

advertising injuries and web-site injuries arising out of Defendant's infringing upon the
Navajo Nation’s identity, culture, and cache associated with being a producer of authentic
Indian products.
119.

Liability for compensatory damages pursuant to the IACA is strict liability

and not dependent upon intentional conduct.
120.

The IACA provides for damages that are the greater of treble damages or

$1,000 for each day on which the offer or display for sale for each type of good falsely
suggests or suggested to be Indian produced, an Indian product, or the product of an
Indian, an Indian Tribe, or an Indian arts and crafts organization continues at the time of
filing.
121.

The Navajo Nation is entitled to compensation via monetary damages and

injunctive relief being imposed on Defendant for the acts stated herein.
COUNT FIVE
DEFENDANT IS LIABLE TO THE NAVAJO NATION FOR VIOLATIONS OF
THE NEW MEXICO UNFAIR PRACTICES ACT, N.M. STAT. ANN. § 57-12-3.
122.

The Navajo Nation realleges the previous paragraphs of this Complaint as if

fully set forth herein.

32

123.

Defendant knowingly made false, misleading, and deceptive representations

that its goods were, and are “Indian” in connection with their sale.
124.

Defendant knowingly made these false and misleading representations in

connection with the sales of its goods, because Defendant knew in-fact that its goods were
not made by, in connection, or in any way associated with the Navajo Nation, another
Indian Tribe, nor any other Indian organization or person.
125.

Defendant’s sale of its goods under the “Navajo” and “Navaho” names and

trademarks were made in the regular course of Defendant’s businesses.
126.

Defendant’s representations tend to, or do, deceive and mislead consumers.

127.

The Navajo Nation requests both monetary and injunctive relief pursuant to

its causes of action.
PRAYER FOR RELIEF
WHEREFORE, the Navajo Nation prays for judgment and relief as follows:
1.

That Defendant’s conduct be declared improper and unlawful pursuant to

common law, the Indian Arts and Crafts Act, and the Lanham Act;
2.

That

Defendant,

its

subsidiaries,

subdivisions,

affiliates,

officers,

employees, agents, and all other persons associated, or in concert with Defendant be
permanently enjoined from using the “Navajo” name and mark in advertising, marketing,
retailing, promoting, and associating the “Navajo” name and marks with Defendant in any
manner

validly performed

by the

Navajo

Nation,

its

political

instrumentalities, officers, employees, People, and authorized agents;

33

subdivisions,

3.

That Defendant be permanently enjoined from passing off, diluting,

blurring, falsely designating, and falsely associating its corporation, subsidiaries,
subdivisions, affiliates, officers, employees, agents, and products with the NAVAJO name
and marks, or otherwise from performing any other act likely to create the appearance or
belief that Defendant its subsidiaries, subdivisions, affiliates, officers, employees, agents,
and all other persons associated with Defendant are in any way supported, in any manner
tacit or active, licensed, assigned, sponsored, endorsed, or otherwise associated with the
Navajo Nation, its political subdivisions, instrumentalities, officers, employees, People, or
authorized agents;
4.

That Defendant be ordered to pay the Navajo Nation all profits made as a

result of Defendant’s wrongful conduct;
5.

That Defendant be ordered to pay the Navajo Nation three times all profits

generated by the marketing and retailing of Defendant’s “Navajo” products line pursuant to
the Lanham Act;
6.

That Defendant be ordered to pay the Navajo Nation the greater amount of

either $1,000 per item for every day for each type of product that is, or has, offered, or
displayed for sale, or three times all profits generated by the marketing and retailing of
Defendant’s Navajo, Indian, and Native American products pursuant to the Indian Arts and
Crafts Act;
7.

That Defendant be ordered to pay the Navajo Nation for all of its reasonable

costs and attorneys’ fees;

34

8.

That the Navajo Nation be awarded exemplary damages for Defendant’s

willful and intentional conduct, and Punitive damages based on Defendants’ willful actions
pursuant to 25 U.S.C. § 305(e);
9.

All other remedies available pursuant to the Indian Arts and Crafts Act, the

Lanham Act, and the New Mexico Unfair Practices Act, including treble damages,
disgorgement of profits, costs, and attorneys’ fees;
10.

That Defendant be ordered to file a written report with this Court, made

under oath within 30 days of this Court’s judgment, which sets forth in detail the manner
that Defendant has fully complied with the permanent injunction pursuant to 15 U.S.C. §
1116; and
11.

All additional and further relief this Court believes just and proper.
JURY DEMAND

The Navajo Nation requests its causes of action be tried by jury.

35

RESPECTFULLY SUBMITTED this 28th day of February, 2012.

NAVAJO NATION DEPARTMENT OF JUSTICE
Harrison Tsosie, Attorney General
Dana Bobroff, Deputy Attorney General
/s/ Brian L. Lewis
Brian L. Lewis, Attorney
Henry Howe, Assistant Attorney General
BIA Club Building
Post Office Box 2010
Window Rock, Navajo Nation (Arizona) 86515
Telephone: [phone] / Fax: [phone]
[e-mail]
[e-mail]

.

KELLER ROHRBACK, L.L.P.
___________________________________________
Mark A. Griffin (pro hac vice application pending)
Karin B. Swope (pro hac vice application pending)
1201 Third Avenue, Suite 3200
Seattle, Washington 98101
Telephone: [phone] / Fax: [phone]
[e-mail]
[e-mail]

Attorneys for the Navajo Nation

36