Your Name, Your Reputation and the Law Protecting Tribal Names, Insignia and Trademarks

Your Name, Your Reputation and the Law Protecting Tribal Names, Insignia and Trademarks

5/5/2008
By: Steven D. Lustig The protection of one's name and reputation can, at times, be of paramount concern. In the United States, protection of one's name, and the goodwill it represents to the public, is generally protected under the law of unfair competition, and in some cases, more specifically under the law of trademarks. This article briefly examines how the United States law of unfair competition and trademark protection interacts with Indian tribal names and insignia. This area of United States law has been in a state of transition since the 1990s. For example, in 1990 Congress updated the Indian Arts and Crafts Act 25 U.S.C. § 305 et seq. The Indian Arts and Crafts Act is a truth-in-advertising law that prohibits misrepresentation in marketing of Indian arts and crafts products within the United States. Under that law, all products must be marketed truthfully with respect to the Indian heritage and tribal affiliation of the producers, so as not to mislead the consumer. The Act forbids selling a product in a manner that falsely suggests it is an Indian product. Violators may be subject to civil and criminal penalties. The Indian Arts and Crafts Act complements the United States Lanham Trademark Act 15 U.S.C. § 1051 et seq. The main purpose of the Lanham Act is to protect the public's ability to know the source of the goods and services they purchase. In that connection, a trademark is an identifier of the source of particular goods or services. The law, for example, protects a consumer's ability to purchase a can of Coca-Cola, while resting assured that the purchaser actually receives the genuine product. The Lanham Act forbids the use of false designations of origin, descriptions, and representations in commerce in a manner that deceives the public. The Lanham Act also protects trademark owners by prohibiting the use or registration of marks that are so similar to earlier-used marks that they would likely cause consumer confusion or mistake as to the source of particular goods or services, or as to the sponsorship or affiliation of particular goods or services with a person or entity. Creating this type of consumer confusion or mistake is generally referred to as "infringement" of the trademark owner's rights. Under the Lanham Act, trademark owners may stop third parties from using infringing marks that are confusingly similar to earlier-used marks. Also, if a person or an entity infringes the rights of a trademark owner, then the infringer may be liable to the trademark owner for damages. In extreme cases, a court may award the trademark owner attorneys fees and costs, and may enter a judgment for up to three times the amount of the actual damages suffered by the trademark owner. In 1999, the Lanham Act was amended by the Trademark Law Treaty Implementation Act. Among other things, the amended law caused the United States Patent and Trademark Office to hold public hearings concerning issues surrounding trademark protection for the official insignia of federally and/or state recognized Indian tribes. These hearings resulted in the creation of the current "Database of Native American Tribal Insignia," which is a database maintained by the United States Patent and Trademark Office and which is used as an aid in the examination of applications for federal trademark registration. The Database of Native American Tribal Insignia is not a part of the Federal Trademark Register. Accordingly, insignia appearing in the database are not granted any federal trademark rights per se. However, this fact does not preclude such insignia from being protected as trademarks and registered, provided they are used as trademarks to identify the source of goods or services. In fact, it appears that some tribes have registered their names and insignia for use in connection with various things including casino services. See e.g., U.S. Trademark Registration No. 3,308,305 - The insignia for the Pascua Yaqui Tribe. The Database of Native American Tribal Insignia is also useful insofar as Section 2(a) of the Lanham Act prohibits the registration of a trademark that consists of or comprises matter that may falsely suggest a connection with persons, institutions, beliefs or national symbols. For example, under this provision of the Lanham Act, the Trademark Trial and Appeal Board - an administrative court that is part of the Patent and Trademark Office and which rules on the registerability of trademarks - refused to register the mark "APACHE" for use in connection with cigarettes because the name falsely suggested a connection with the nine federally recognized Apache tribes that are known for producing tobacco products. See In re White, 73 USPQ 2d 1713 (TTAB 2004). It is important to note that in In re White, the Trademark Trial and Appeal Board reached its decision in large part because the goods in question - cigarettes - were widely known to be produced and marketed by Indian tribes. It is likely that the Board would have reached a different decision if the goods at issue were unrelated to Indian commerce, especially since the name "APACHE" has been registered in connection with various goods, such as bicycles (U.S. Reg. No. 2,912,969) and powerboats (U.S. Reg. No. 3,071,622). Disputes involving Indian names and insignia are also arising in the courts. For example, in May of 2007, Cherokee Nation Enterprises. L.L.C. of Oklahoma opposed the registration of U.S. Trademark Application Serial No. 78/773,672, owned by the Georgia Tribe of Eastern Cherokee, which covers the intended use of the following mark in connection with the indication of membership in an Indian tribe. See U.S. Trademark Opposition No. 91177319. The grounds for the opposition include a likelihood of confusion with the marks of the Cherokee Nation that are used in connection with its casino and entertainment services; misrepresentation of citizenship in the Cherokee Nation; and a false suggestion of a connection with the citizens of the Cherokee Nation in violation of Section 2(a) of the Lanham Act. In its answer, filed in March, the Georgia Tribe of Eastern Cherokee denied the allegations in the opposition, and asserted that it is a State of Georgia recognized tribe with pending federal recognition. The Georgia Tribe of Eastern Cherokee also challenged the trademark rights of the Cherokee Nation by asserting that, historically, the Cherokee Nation was divided in the 1800s, and that some Cherokee, including themselves, legally remained in the east. This case remains pending before the Trademark Trial and Appeal Board. In any event, taken together, the Lanham Act, the Database of Native American Tribal Insignia, and the Indian Arts and Crafts Act may be used to prevent the deceptive or falsely misleading use and/or registration of Indian names and insignia. Furthermore, these laws may be useful tools for the protection of Indian names and insignia. Under the Lanham Act, tribes may have their insignia placed in the Database of Native American Tribal Insignia and they may register their names and insignia as trademarks for use in connection with the goods and services they sell. Registration of these names and insignia may assist tribes in enforcing their corresponding trademark rights against infringers who pass-off counterfeit goods or services as genuine or authentic. The history suggests that the law in the United States relating to the use and protection of Indian names and insignia is in a state of development and may change in the future.
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