MarkIt to Market® - May 2021: Recognizing Tribal Marks: The Native American Tribal Insignia Database

Sterne, Kessler, Goldstein & Fox P.L.L.C.
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Sterne, Kessler, Goldstein & Fox P.L.L.C.

[author: Sahar A. Ahmed, Law Clerk]

Using Native American tribal names and symbols as part of popular consumer brands has been an endemic practice within the United States for decades. Popular brands that have appropriated tribal names include Jeep Cherokee, Pontiac cars, Apache Software, and Urban Outfitters’ Navajo and Zuni clothing lines, just to name a few. Native Americans have combatted some of these uses in court, and are now actively engaged in filing for trademark protection for many tribal names and symbols. Now, at no cost, Native American tribes have a new way of protecting their intellectual property and cultural heritage.

The Native American Tribal Insignia Database

The United States Patent and Trademark Office (USPTO) recently announced that it would begin including Native American tribal insignias as part of its searchable Trademark Electronic Search System (TESS). The new Native American Tribal Insignia Database records the official tribal insignias of federally or state-recognized American Indian and Alaska Native tribes (Native American tribes) at no charge, which will allow the USPTO to consider tribal insignias during its examination of other pending trademark applications, and refuse registration of the pending marks if they falsely suggest a connection to the participating Native American tribes.

The creation of the Database evidences an appreciation by the USPTO of Native American tribal history, culture, and heritage as represented by their tribal insignias. The Database also serves to acknowledge the desire of Native American tribes to not only protect their culture associated with their tribal insignias, but also to prevent against infringing and potentially tarnishing uses of their marks.

Acceptable Database Insignias

Native American tribes may elect to participate in the Database to take advantage of its protective benefits, but are not required to do so. There are no fees or forms required for participation; however, the USPTO notes that to be accepted as part of the Database, the tribal insignias must be adopted by tribal resolution within a federally or state recognized tribe, and consist of a flag, coat of arms, other emblem, or device. Words alone are not considered a tribal insignia, and will not be entered into the Database.

tribal insignias

Insignia Request Procedure

To participate in the Database, tribes may simply send an email to the USPTO that includes a written request to enter an insignia, a JPG image of the insignia, a copy of the official tribal resolution adopting the insignia, and an authorization statement signed by an official with authority to bind the tribe. Each request is assigned a “non-registration” serial number, and is then entered into the Database. Tribes may access the submitted insignias by entering the non-registration number in the Trademark Status and Document Retrieval (TSDR) system, or in the Trademark Electronic Search System (TESS). Members of the public not affiliated with the requestor tribe may access the accepted insignias through TESS by entering the following search term (including quotation marks): “Native American Tribal Insignia”[od].

The Rights of Tribes and Registrants

The Native American Tribal Insignia Database is a beneficial, front-end means of preventing trademark applicants from securing registrations for marks that are confusingly similar to participating tribal insignias. However, the new Database does not automatically grant any property rights in those insignias to the tribe. Entry on the Database is not the legal equivalent of registering a tribal insignia as a trademark. Additionally, entry on the Database does not retroactively alter the rights of pre-existing registrants with marks already on the Principal Register.

If a tribe believes that it will be damaged as a result of a pending application, it may follow the traditional means of protecting its insignias, names, and symbols by filing a Letter of Protest with the USPTO, and possibly filing its own application. Likewise, a tribe may contest a mark published or registered on the Principal Register by filing a notice of opposition with the Trademark Trial and Appeal Board (TTAB), or file a petition for cancellation of a registration with the TTAB.

Conclusion

The USPTO’s introduction of the Native American Tribal Insignia Database demonstrates the Office’s appreciation for the culture and heritage of federally or state-recognized Native American tribes. It provides a new affordable means for tribes to protect their insignias by preventing new applicants from securing registrations on confusingly similar or infringing marks. While the Database does not alter the rights of holders of preexisting registrations, the Database presents a new hurdle to trademark applicants wishing to popularize their brands by appropriating Native American references.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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