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21 November 2016Trademarks

Navajo Nation and Urban Outfitters settle TM dispute

Indian tribe Navajo Nation and retailer Urban Outfitters have settled a long-running trademark dispute.

The parties have also entered into a supply and licence agreement, and plan to collaborate on authentic American Indian jewellery in coming years, according to a statement.

Back in 2012, the Navajo Nation filed a trademark infringement claim against the retailer in the US District Court for the District of New Mexico.

The lawsuit alleged that since 2009, Urban Outfitters has advertised and sold its goods under the “confusingly similar ‘Navaho’ and identical ‘Navajo’ names and marks on the internet and in stores”.

According to the claim, the tribe has used the ‘Navajo’ trademark since at least 1943. It added that the Navajo Nation has registered 86 trademarks using the ‘Navajo’ component with the US Patent and Trademark Office.

“We are a proud nation with talented artisans, scientists, lawyers and professionals who together represent the Navajo Nation,” said Russell Begaye, president of the Navajo Nation.

He said that Navajo Nation applauded the retailer for “acknowledging the validity of the Navajo Nation trademark and [we] are glad we have settled this matter”.

Begaye added the nation expects that “any company considering the use of the Navajo name” or designs or motifs will ask for permission.

“The Navajo Nation is proud of its strong history and welcomes working in collaboration with Urban Outfitters and other retailers to highlight our unique culture,” said Begaye.

“We are pleased we’ve reached an agreement with the Navajo Nation,” said Azeez Hayne, general counsel, Urban Outfitters.

He added that the retailer takes the rights of artists and designers seriously.

“As a company, Urban Outfitters has long been inspired by the style of Navajo and other American Indian artists and looks forward to the opportunity to work with them on future collaborations,” said Hayne.

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