Navajo Nation v. Urban Outfitters, Inc. (935 F. Supp. 2d 1147, 2013)

MEMORANDUM OPINION AND ORDER

C. LEROY HANSEN, Senior District Judge.

On June 22, 2012, Defendants Urban Outfitters, Inc.; UO.com, L.L.C.; Urban Outfitters Wholesale, Inc.; Anthropologie, Inc.; Antrhopologie.com, L.L.C.; Free People of PA, L.L.C.; and Freepeople.com, L.L.C. (collectively “Defendants”) filed a Motion to Dismiss the Amended Complaint and Memorandum in Support (Doc. 33). Plaintiffs The Navajo Nation, the Diñé Development Corporation (“DDC”), and the Navajo Arts and Crafts Enterprise (“NACE”)(collectively, “Plaintiffs” or “The Navajo Nation”) oppose the motion. This Court, having considered the pleadings, motions, briefs, relevant law, and otherwise being fully advised, concludes that the motion to dismiss the amended complaint should be granted in part and denied in part as described herein, and that all Counts will remain in the case at this time.

I. FACTUAL BACKGROUND

The Navajo Nation is a sovereign Indian Nation with over 300,000 enrolled members. Am. Compl. (Doc. 30) ¶ 9. The Navajo Nation is an institution that acts through its political subdivision, the Division of Economic Development; its wholly-owned instrumentalities, such as NACE and DDC; its officers, employees, and authorized agents; and its members, the Navajo People. Id.

Defendant Urban Outfitters, Inc., (“Urban Outfitters”) is an international retail company that markets and retails its merchandise in its more than 200 stores located nationally and internationally and on the internet. See id. ¶ 13. Defendants UO.com, L.L.C.; Urban Outfitters Wholesale, Inc.; Anthropologie, Inc.; Anthropologie.com, L.L.C.; Free People of PA, L.L.C.; and FreePeople.com, L.L.C. are wholly-owned subsidiaries of Urban Outfitters. Id. ¶¶ 14-17. The subsidiaries are not separate autonomous entities, but rather are “brands” of Urban Outfitters. Id. ¶ 18.

The Navajo Nation alleges in its Amended Complaint that it and its members have been known by the name “Navajo” since at least 1849, have continuously used the NAVAJO trademark in commerce, and have made the NAVAJO name and trademarks famous with numerous products, including, among other things, clothing, accessories, blankets, jewelry, foods, tools, decorations, crafts, and retail services. Id. ¶ 3. Plaintiffs assert that the Navajo Nation has registered 86 trademarks using the NAVAJO component with the United States Patent and Trademark Office (“USPTO”) on the Principal Register for a variety of different classes of goods and services, including clothing, jewelry, house wares, and accessories. Id. ¶¶3, 27. Plaintiffs contend that many of their 86 registered trademarks have become incontestable under 15 U.S.C. § 1065, including Trademark Registration Nos., 2,237,848; 2,976,-666; 3,602,907; 3,787,515; 3,787,518; and 3,793,381. Id. ¶ 28.

Plaintiffs assert that they have invested substantial capital in promoting and protecting their NAVAJO trademarks, resulting in more than $500 million in sales of NAVAJO-branded goods. Id. ¶4. They contend that the NAVAJO marks are prominently featured on their and their agents’ websites. Id. ¶ 30. Plaintiffs assert that its famous NAVAJO mark is broadly recognized by purchasers of consumer goods and the general public as a trademark for the Navajo Nation’s Indian-styled and Indian-produced goods. Id. ¶ 31.

Plaintiffs allege that the NAVAJO mark is inherently distinctive, and given the incontestable status of its registration, the trademark may not be challenged as merely descriptive. Id. ¶ 29. Plaintiffs contend that the mark is suggestive, arbitrary, or fanciful and that the NAVAJO mark is immediately recognized and associated with the Navajo Nation, thus serving as an identifier of source. Id. ¶¶ 29, 46. Further, Plaintiffs assert:

“Navajo” is not a generic name for a class of products such as clothing jewelry or accessories. “Navajo” is not the name of any genus of products, such as clothing, jewelry or accessories. Customers do not go into an Urban Outfitters store, and ask for “a Navajo.” If they did, a sales person would not know how to assist them.

Id. ¶ 29. Plaintiffs contend that the term “Navajo” is not being used descriptively because “Navajo” means of or pertaining to the Navajo Nation or members of the tribe. See id. ¶ 45. Instead of using descriptive words like “geometric” or “southwestern,” they chose “Navajo” in order “to trade off of the cachet and romanticism associated with the Navajo People, who form the Navajo Nation.” Id. ¶ 46. Plaintiffs contend that Defendants falsely advertise a number of its “Navajo” products as “Vintage” and “Handmade,” making an express claim that their goods are made by members of the Navajo Nation, when only enrolled members of the Navajo Nation may sell their goods under the NAVAJO trademark. Id.

The Navajo Nation asserts that, at least as early as March 16, 2009, Defendants have used “Navajo” and “Navaho” as names and marks in direct competition with NAVAJO-branded goods. See id. ¶¶ 5, 37. In early 2011, Plaintiffs allege that Urban Outfitters started a product line of 20 or more items containing the NAVAJO trademark, which they sold on their website and retail stores. Id. ¶ 41. Plaintiffs claim that Defendants’ items sold under the “Navajo” and “Navaho” names and marks “evoke the Navajo Nation’s tribal patterns, including geometric prints and designs fashioned to mimic and resemble Navajo Indian-made patterned clothing, jewelry and accessories.” Id. ¶37. Plaintiffs assert that Defendants also used the NAVAJO mark in its internal search engine to divert customers to its products, thus engaging in initial interest confusion. Id. ¶ 40. Plaintiffs contend that Free People have sold and have continued to sell jewelry under the “Navajo” trademark and have used “Navajo” as a search term to display its retail goods. Id. ¶ 52. Plaintiffs attached as Exhibit C to their Amended Complaint copies of Defendants’ web-pages showing Free People’s use of the “Navajo” mark as a search term.” Id. and Ex. C (Doc. 30-2) at 2-3 of 29. Plaintiffs further assert Anthropologie “has sold items using the Navajo trademark as well.” Am. Compl. (Doc. 30) ¶ 52.

Plaintiffs attached as Exhibit A to their Amended Complaint an illustrative, not exhaustive, list of Defendants’ infringing activity. Id. ¶ 41. Exhibit A includes allegedly infringing products listed on the Urban Outfitters website, including, among others, “Deter Navajo Tee,” “Ecote Navajo Surplus Jacket,” “Lucca Couture Navajo Pullover Sweater,” “Navajo Bracelet,” “Navajo Feather Earring,” “Navajo Hipster Panty,” “Navajo Print Fabric Wrapped Flask,” “OBEY Navajo Glove,” “Pendleton Navajo Weekender Bag,” “Vintage Woolrich Navajo Jacket,” and “Wide Navajo Scarf.” See Am. Compl., Ex. A (Doc. 30-1) at 2-24 of 41. Exhibit A also contains allegedly infringing products sold from the Free People website, including items described as follows: “Vintage Handmade Navajo Necklace,” ‘Vintage Navajo Cuff,” and “Joplin Fringe Bag” further described as a “[ujnique Navajo patterned blanket fringe bag....” See id. at 25-33 of 41. Finally, Exhibit A includes web pages from Anthropologie that contain allegedly infringing products listed as “Navajo Blossom Pin.” See id. at 34-37 of 41. Plaintiffs also list in an illustrative, not exhaustive, chart nine registered trademarks that Defendants have allegedly infringed. Id. ¶ 54.

In addition, Plaintiffs contend that using their name to sell hip flasks and panties dilutes the Navajo Nation’s goodwill in its trademarks. Am. Compl. (Doc. 30) ¶ 47. Plaintiffs argue that the use of “Navajo” with products like its “Navajo Flask” is derogatory, scandalous, and contrary to the Navajo Nation’s principles because it has long banned the sale and consumption of alcohol within its borders and the Navajo Nation does not use its mark in conjunction with alcohol. Id. ¶ 63. Plaintiffs further contend that the misspelling of the “Navajo” name as “Navaho” is contrary to Navajo Nation law, is confusingly similar to Plaintiffs’ own NAVAJO marks, and is scandalous and derogatory and should be enjoined. Id. ¶ 66.

Plaintiffs also argue that Defendants’ sale of products with significantly lower quality than Plaintiffs’ own authentic products will likely harm the reputation of the NAVAJO name and mark. Id. ¶ 64. Plaintiffs argue that Defendants use of the “Navajo” name and mark to promote its “Navajo Collection” makes it very likely consumers will incorrectly believe that the “Navajo” name is an indistinct term, rather than associate “NAVAJO” as a unique and inherently distinctive trademark. See id. ¶¶ 60-62.

Moreover, Plaintiffs assert that Defendants have offered for sale and sold products in an Indian style, motif, or design using terms like “Native American,” “Indian,” “Tribal,” and the name of a particular Indian Tribe in a way that confuses customers into believing they are being offered or purchasing authentic Indian-made products, when in fact their products are not authentic Indian-made products. See id. ¶ 71, 76. Plaintiffs contend that Defendants have falsely suggested their products are Indian products of the Navajo Nation. See id. Plaintiffs attached as Exhibit E a sample of copies of Defendants’ website pages where Defendants used search or identifier terms such as “Native American,” “Indian,” “Navajo,” or the name of a particular Indian tribe. See id. ¶ 74 and Ex. E (Doc. 30-2) at 17-29 of 29. Plaintiffs list examples of Defendants’ products that falsely suggest they are Indian products and they include the “Navajo Bracelet,” “Navajo Glove,” “Vintage Men’s Woolrich Navajo Jacket,” and “Navajo Feather Earring.” Id. ¶ 75.

The Navajo Nation sent to Urban Outfitters a “Cease and Desist” letter dated June 30, 2011, demanding that they cease using the “Navajo” trademark in connection of their sale of goods. Am. Compl., Ex. B (Doc. 30-1) at 39-41 of 41. In response, on October 24, 2011, Urban Outfitters replaced the term “Navajo” with “Printed” on its website. Am. Compl. ¶ 50. Plaintiffs assert, however, that Defendants have continued to sell their products in their retail stores under the “Navajo” and “Navaho” names and marks and have used the word “Navajo” on their sales receipts. Id. ¶ 51.

II. PROCEDURAL BACKGROUND

The Navajo Nation has brought suit against Defendants, claiming trademark infringement, trademark dilution, unfair competition, false advertising, commercial practices laws violations, and violation of the Indian Arts and Crafts Act. Specifically, Plaintiffs allege in Count One that Defendants’ use of the “Navajo” and “Navaho” mark in connection with the sale of clothing, jewelry, house ware, footwear, and similar items is likely to cause confusion, mistake, or deception in the market place, and has created actual confusion in the market place, and constitutes trademark infringement in violation of 15 U.S.C. §§ 1114 and 1117 of the Lanham Act. See Am. Compl. (Doc. 30) ¶¶ 81-91. In Count Two, Plaintiffs assert that Defendants’ 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 under § 1125(c) of the Lanham Act. See id. ¶¶ 92-96. Plaintiffs contend in Count Three that Defendants’ are also liable for Unfair Competition and False Advertising under § 1125(a) of the Lanham Act based on false advertising and infringement of the Navajo Nation’s unregistered NAVAJO trademarks. See id. ¶¶ 97-101. In Count Four, Plaintiffs allege that Defendants violated the Indian Arts and Crafts Act, 25 U.S.C. § 305 et seq., (“IACA”) by offering, advertising, marketing, displaying for sale, and selling goods that falsely suggest Defendants’ products are products of an Indian Tribe, when in fact they are not products of any Indian Tribe. See id. ¶¶ 102-22.

Plaintiffs assert state law claims in the two remaining counts. In Count Five, Plaintiffs contend that Defendants are liable for violation of the New Mexico Unfair Practices Act (“NMUPA”), N.M. Stat. Ann. § 57-12-3, through its sale of goods under the “Navajo” and “Navaho” names and trademarks, as well as its sale of other goods falsely represented as authentic goods, when Defendants knew that their 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. See id. ¶¶ 123-28. Finally, Plaintiffs allege in Count Six that Defendants’ willfully committed acts and omissions caused dilution and/or tarnishment of the distinctive quality of the Navajo Nation’s NAVAJO marks in violation of the New Mexico Trademark Act (“NMTA”), N.M. Stat. Ann. § 57-3B-15. See id. ¶¶ 129-33.

On April 30, 2012, Defendants filed a Motion to Dismiss the Complaint and Memorandum in Support (Doc. 16). Plaintiffs subsequently filed an Amended Complaint (Doc. 30). Defendants then filed a motion to dismiss the claims asserted in the Amended Complaint. The Court will deny Defendants’ initial Motion to Dismiss (Doc. 16) as moot, and will now turn to the arguments made by Defendants in their Motion to Dismiss the Amended Complaint and Memorandum in Support (Doc. 33).

III. STANDARD

The Court can dismiss a complaint for “failure to state a claim upon which relief can be granted.” Fed.R.Civ.P. 12(b)(6). Plaintiffs complaint must set forth factual allegations that “raise a right to relief above the speculative level.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007). It is not enough for a plaintiff to just set forth labels, conclusions, and formulaic recitation of the elements of a cause of action. Id. When reviewing a plaintiffs complaint in ruling on a Rule 12(b)(6) motion, the Court must accept all well-pleaded allegations as true. Smith v. United States, 561 F.3d 1090, 1098 (10th Cir.2009). The Court must view the allegations in the light most favorable to the plaintiff. Id. The Court “will disregard conclusory statements and look only to whether the remaining, factual allegations plausibly suggest the defendant is liable.” Khalik v. United Air Lines, 671 F.3d 1188, 1191 (10th Cir.2012). This plausibility standard does not require evidence of probability, “but it asks for more than a sheer possibility that a defendant has acted unlawfully.” Ashcroft v. Iqbal, 556 U.S. 662, 678, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009).

Although presented as a motion to dismiss under the Iqbal standard, Defendants have attached a number of exhibits in support of their motion. See Defs.’ Mot., Exhibits (Doc. 33-1 through Doc. 33-12); Defs.’ Reply, Exhibit A (Doc. 36-1). Plaintiffs treat the motion as a true motion to dismiss and have not attached additional exhibits to their response, relying instead on the contents of their Amended Complaint and attachments thereto.

Federal Rule of Civil Procedure 12(d) applies when a party presents matters outside the pleadings:

If, on a motion under Rule 12(b)(6) or 12(c), matters outside the pleadings are presented to and not excluded by the court, the motion must be treated as one for summary judgment under Rule 56. All parties must be given a reasonable opportunity to present all the material that is pertinent to the motion.

Fed.R.Civ.P. 12(d). Under Rule 12(d), a court has broad discretion to refuse to accept the extra-pleading materials and resolve the motion solely on the basis of the pleading itself. See Lowe v. Town of Fairland, Okl., 143 F.3d 1378, 1381 (10th Cir. 1998). Reversible error may occur if a court considers matters outside the pleadings but fails to convert the motion to dismiss into a motion for summary judgment. Id. No conversion is required, however, when the court considers information that is subject to proper judicial notice or exhibits attached to the complaint, unless their authenticity is questioned. See Geinosky v. City of Chicago, 675 F.3d 743, 745 n. 1 (7th Cir.2012). See also Rose v. Utah State Bar, 471 Fed.Appx. 818, 820 (10th Cir. Mar. 23, 2012) (unpublished opinion)(no conversion required where court takes judicial notice of its own files and records and facts that are matter of public record). “Documents that a defendant attaches to a motion to dismiss are considered part of the pleadings if they are referred to in the plaintiffs complaint and are central to her claim.” Venture Assoc. Corp. v. Zenith Data Sys. Corp., 987 F.2d 429, 431 (7th Cir.1993).

The Court will not convert Defendants’ motion to dismiss into one for summary judgment. To do otherwise would require the Court to give notice to the parties and allow Plaintiff an opportunity to present its own extra-pleading evidence, an inefficient process better left for a motion for summary judgment filed in the normal course of the discovery process. Therefore, the Court will not consider the exhibits attached to Defendants’ motion and reply that constitute extra-pleading material that are not properly the subject of judicial notice or that are not documents referred to in Plaintiffs’ complaint and central to her claim.

With respect to Exhibits A, G, H, K, and L, they are various excerpts from the trademark file histories of some of the trademarks referred to in Plaintiffs’ Amended Complaint. Defendants, however, have not provided authority that permits a court to consider excerpted portions of a trademark file history without converting a motion to dismiss into one for summary judgment. This is not a situation where Plaintiffs attached to their complaint an incomplete document from a trademark file, and Defendants have merely sought to complete that same document in order to clarify or refute the meaning Plaintiffs subscribe to their portion of the record. Instead, Defendants have cherry-picked portions of the USPTO’s records to contest the merits of Plaintiffs’ case or support their own defenses. Other portions of those same records may support Plaintiffs’ interpretation of the file histories, and thus the evidentiary value of the materials submitted by Defendants is subject to “reasonable dispute,” and thus not best suited for judicial notice. This evidentiary consideration is exactly the type of analysis suitable for summary judgment, not a motion to dismiss. Cf. Facebook, Inc. v. Teachbook.com LLC, 819 F.Supp.2d 764, 771-73 (N.D. 111.2011) (refusing to consider extra-pleading materials filed by defendant to support its motion to dismiss, including USPTO records and an alleged admission made to the European trademark authority, as not properly the subject of judicial notice and not sufficiently central to Plaintiffs’ complaint). If Defendants’ position were correct, the entire trademark file history of each trademark allegedly infringed would nearly always be permissible to consider on a motion to dismiss in any trademark infringement case, an incredibly cumbersome analysis at the early stages of a case. See id. at 773 (“Indeed, allowing Teachbook to cherry pick portions of Facebook’s website to introduce via a motion to dismiss simply because the complaint implicates the two websites would convert an examination of the complaint in to full-blown summary judgment analysis. This result would vitiate an otherwise narrow exception to the general rule that a motion under Rule 12(b)(6) stands or falls based on the allegations in the complaint.”) The Court therefore will not consider Exhibits A, G, H, K, or L at this time.

In support of their argument that “Navajo” is recognized by consumers as a generic descriptor of a category of “Indian-styled” prints and designs, Defendants attach Exhibits B (Doc. 33-2) (numerous fashion trend reports discussing popularity of “Navajo style”), C (Doc. 33-3) (copies of websites depicting numerous brands, including Lucky Brand and Calvin Klein, marketing “Navajo jeans” and “Navajo” mitts, wrap, and dress), D (Doc. 33-4) (blog from “Etc Blog Mag” showing celebrity Nicole Richie in “Isabel Marant Navajo jeans”), E (Doc. 33-5) (magazine article depicting “boho Navajo trend”), and F (Doc. 33-6) (photographs of third-party hangtags for “Navajo Blanket” shirt and “Navajo Seed Bead” bracelet). These exhibits are not properly the subject of judicial notice, nor are they referred to in Plaintiffs’ Amended Complaint. The Court therefore will not consider Exhibits B-F at this stage.

For similar reasons, the Court also declines to consider Exhibit I, the Declaration of Ed Looram, and Exhibit J, the Declaration of Ali Reich. Other than the envelope showing when Defendants received the June 30, 2011 Cease-and-Desist letter, which arguably could be considered part of the letter attached to Plaintiffs’ complaint, the remaining statements in Exhibit I are not properly the subject of judicial notice and do not constitute documents referred to in Plaintiffs’ complaint. Ali Reich avers the following in his Declaration: he is a Vintage Buyer for Free People; Free People’s vintage products are pre-owned, “one-of-a-kind” items; of the seven items identified as Vintage Navajo jewelry attached to the complaint, all the items “are believed to be jewelry made by individuals who self-identity as Navajo Indian or are otherwise enrolled in the Navajo Indian tribe.” Defs.’ Mot., Ex. J (Doc. 33-10). Although Mr. Reich is referring to exhibits attached to Plaintiffs’ Amended Complaint, his statements do not complete the documents referred to in Plaintiffs’ Amended Complaint, and the Court will also not consider them.

IV. ANALYSIS

A. Lanham Act Claims

Congress enacted the Lanham Act in 1946 to provide national protection for trademarks used in interstate and foreign commerce in order to promote competition and the maintenance of product quality. Park ‘N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 193, 105 S.Ct. 658, 83 L.Ed.2d 582 (1985). Under the Lanham Act, the user of a mark can register it with the USPTO, and if the registrant then satisfies further conditions including continuous use for five consecutive years, the right to use the registered mark in commerce to designate the origin of the goods specified in the registration becomes “incontestable,” outside certain enumerated exceptions. KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 117, 125 S.Ct. 542, 160 L.Ed.2d 440 (2004). The Lanham Act provides a civil action for the holder of a registered mark, whether or not incontestable, “against anyone employing an imitation of it in commerce when ‘such use is likely to cause confusion, or to cause mistake, or to deceive.’ ” Id. (quoting 15 U.S.C. § 1114(1)(a)). To state a trademark infringement claim under the Lanham Act, a plaintiff must allege facts showing that (1) its mark is protectable, and (2) the defendant’s use of an identical or similar mark in commerce is likely to cause confusion among consumers. See Donchez v. Coors Brewing Co., 392 F.3d 1211, 1215 (10th Cir.2004).

A mark is protectable if it is capable of distinguishing the products it marks from those of others. Id. at 1216. The eligibility for protection and the degree of protection afforded a mark depends upon which of five categories of terms the mark fits into: fanciful, arbitrary, suggestive, descriptive, or generic. Id. See also Burke-Parsons-Bowlby Corp. v. Appalachian Log Homes, Inc., 871 F.2d 590, 593-94 (6th Cir.1989) (“Validity of a registered trademark is contingent on determining first whether the mark is (1) arbitrary and fanciful; (2) suggestive; (3) descriptive; or (4) generic.”). “The categorization of a mark is a factual question.” Donchez, 392 F.3d at 1216. “Fanciful (made-up words expressly coined to serve as trade or service marks), arbitrary (common words applied in unfamiliar ways), and suggestive marks (words that connote, rather than describe, some quality or characteristic of a product or service) are inherently distinctive, and thus receive the greatest protection against infringement.” Id. (10th Cir.2004)(quoting U.S. Search, LLC v. U.S. Search.com, Inc., 300 F.3d 517, 523 (4th Cir.2002)). Suggestive marks require a consumer to use imagination and perception to determine the product’s nature. Sally Beauty Co., Inc. v. Beautyco, Inc., 304 F.3d 964, 976 (10th Cir.2002). Generic terms cannot be registered, and a registered mark may be canceled if it becomes generic. Park ‘N Fly, Inc., 469 U.S. at 194, 105 S.Ct. 658. “A generic term is one that refers to the genus of which the particular product is a species,” in other words, it constitutes a common descriptive name. Id. See also Sally Beauty Co., 304 F.3d at 976 (giving “cola” as an example of a general class of goods).

“A descriptive mark identifies a characteristic or quality of an article or service, such as its color, odor, function, dimensions, or ingredients.” Sally Beauty Co., 304 F.3d at 976. It is protectable “only when it has acquired a secondary meaning by becoming distinctive in the applicant’s goods in commerce.” Id. (quotation omitted). Geographically descriptive terms, like other descriptive terms, must acquire secondary meaning to be protected. See Vail Assocs., Inc. v. Vend-Tel-Co., Ltd, 516 F.3d 853, 866 n. 11 (10th Cir.2008). Secondary meaning does not give the mark holder the exclusive right to use the mark in its original descriptive sense; rather, it gives the mark holder an exclusive right only in the secondary one associated with the mark holder’s goods. Id. at 866. “The stronger the evidence of secondary meaning, the stronger the mark, and the more likely is confusion.” Id. (quoting Levi Strauss & Co. v. Blue Bell, Inc., 632 F.2d 817, 821 (9th Cir.1980)).

The requirement of secondary meaning exists to protect commercial speakers’ right to use descriptive words when informing consumers of the qualities of their own goods. See KP Permanent Make-Up, Inc., 543 U.S. at 122, 125 S.Ct. 542. To acquire secondary meaning, one producer must have used the descriptive mark with reference to its goods for a sufficiently lengthy and exclusive amount of time that consumers consider the mark to mean the article is the producer’s product. J.M. Huber Corp. v. Lowery Wellheads, Inc., 778 F.2d 1467, 1470 (10th Cir.1985). “Whether a mark has acquired a secondary meaning is a question of fact.” Id. Evidence of secondary meaning may include the length and manner of the mark’s use, the nature and extent of advertising and promotion of the mark, and the efforts made to create a conscious connection in the public’s mind between the mark and a particular product. Donchez, 392 F.3d at 1218.

The majority of courts hold that the USPTO’s “decision to register a mark without requiring proof of secondary meaning creates a rebuttable presumption that the mark is suggestive, arbitrary, or fanciful rather than merely descriptive.” GTE Corp. v. Williams, 904 F.2d 536, 538 (10th Cir.1990) (in dicta, citing cases supporting presumption but deciding case on other grounds). See also George & Co. LLC v. Imagination Entertainment Ltd., 575 F.3d 383, 395 (4th Cir.2009) (“[W]e are constrained to conclude that the LCR mark is suggestive. We are obligated to defer to the determination of the USPTO, which constitutes prima facie evidence of whether a mark is descriptive or suggestive.”); Lane Capital Management, Inc. v. Lane Capital Management, Inc., 192 F.3d 337, 345 (2d Cir.1999) (“Registration by the PTO without proof of secondary meaning creates the presumption that the mark is more than merely descriptive, and, thus, that the mark is inherently distinctive.”). Prima facie evidence of the validity of the registered mark, however, does “not preclude another person from proving any legal or equitable defense or defect.” 15 U.S.C. § 1115(a). If the holder of the mark is entitled to the statutory presumption, the burden of proof shifts to the party challenging the validity of the mark. Burke-Parsons-Bowlby Corp., 871 F.2d at 593.

As noted previously, a registered mark may become “incontestable” through continuous use for five consecutive years after federal registration and compliance with enumerated statutory formalities. See 15 U.S.C. § 1065; J. Thomas McCarthy, McCarthy on Trademarks, § 11:44 at 11-116 (4th ed. 2012). “To the extent that the right to use the registered mark has become incontestable under section 15 [15 USCS § 1065], the registration shall be conclusive evidence of the validity of the registered mark, and of the registrant’s exclusive right to use the registered mark in commerce.” 15 U.S.C. § 1115(b) (emphasis added). As the Supreme Court explained when construing § 1115:

The Lanham Act expressly provides that before a mark becomes incontestable an opposing party may prove any legal or equitable defense which might have been asserted if the mark had not been registered. Thus, § 33(a) would have allowed respondent to challenge petitioner’s mark as merely descriptive if the mark had not become incontestable. With respect to incontestable marks, however, § 33(b) provides that registration is conclusive evidence of the registrant’s exclusive right to use the mark, subject to the conditions of § 15 and the seven defenses enumerated in § 33(b) itself. Mere descriptiveness is not recognized by either § 15 or § 33(b) as a basis for challenging an incontestable mark.

Park ‘N Fly, Inc., 469 U.S. at 196, 105 S.Ct. 658 (internal citation omitted). Consequently, the Supreme Court concluded that “the holder of a registered mark may rely on incontestability to enjoin infringement and that such an action may not be defended on the grounds that the mark is merely descriptive.” Id. at 205, 105 S.Ct. 658.

If, however, one of the enumerated defenses is established, registration constitutes only prima facie, not conclusive, evidence of the owner’s right to exclusive use of the mark. Id. at 199 n. 6., 105 S.Ct. 658 One of those defenses, § 38(b)(4), “allows the nontrademark use of descriptive terms used in an incontestable mark.” Id. at 201, 105 S.Ct. 658. This “fair use” affirmative defense is available to a party whose allegedly infringing use “is a use, otherwise than as a mark, ... of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin.... ” 15 U.S.C. § 1115(b)(4).

In addition to showing the validity of a mark, to prevail on an infringement claim under Section 32 of the Lanham Act, the plaintiff must also demonstrate that the defendant’s use of the mark was likely to cause confusion in the marketplace. See 15 U.S.C. § 1114; GTE Corp., 904 F.2d at 539. Even a plaintiff who is relying on an incontestable registration has the burden of proving likelihood of confusion. KP Permanent Make-Up, Inc., 543 U.S. at 118, 125 S.Ct. 542. Furthermore, although the validity of an incontestable mark may not be challenged, a defendant may still question the strength, and hence the scope of protection, of the mark as to different goods or services in determining the issue of likelihood of confusion. McCarthy, § 11:45 at 11-117, § 32:155. Courts look to the following factors to determine whether there is a “likelihood of confusion”: (1) the degree of similarity between the designation and the trademark in appearance, pronunciation of words used, verbal translation of the pictures or designs involved, and suggestion; (2) the intent of the defendant in adopting the mark; (3) evidence of actual confusion; (4) similarity of products and manner of marketing; (5) the degree of care likely to be exercised by consumers; and (6) the strength or weakness of the marks. Sally Beauty Co., 304 F.3d at 972; J.M. Huber Corp., 778 F.2d at 1470.

With these principles in mind, the Court will turn to Defendants’ arguments in support of their motion to dismiss.

1. Fair Use Defense

Defendants argue that that the Lanham Act counts must be dismissed for failure to state a claim because Plaintiffs fail to allege facts showing that Defendants’ use of the term “Navajo” was made to identify the source of Defendants’ products and was made in bad faith. Instead, Defendants contend that the term “Navajo” is fairly used as a descriptor for “Indian-styled” prints and designs that may include “geometric prints.” They assert that Plaintiffs inappropriately cropped the content of the websites, but that even what Plaintiffs attached to the Amended Complaint does not show that Defendants represented that the product was “put out” by the Navajo Nation.

“Although a word may have acquired a secondary meaning, it still belongs to the public in its primary descriptive sense and any person may use it, provided he does so in such a way as not to convey the secondary meaning and deceive the purchasing public.” Hygrade Food Products Corp. v. H.D. Lee Mercantile Co., 46 F.2d 771, 772 (10th Cir.1931). See also 15 U.S.C. § 1115(b)(4) (codifying common law defense). This defense is referred to as the fair use defense. See KP Permanent Make-Up, Inc., 543 U.S. at 123-24, 125 S.Ct. 542; Sunmark, Inc. v. Ocean Spray Cranberries, Inc., 64 F.3d 1055, 1058 (7th Cir.1995). When the descriptive term has acquired secondary-meaning for another’s mark, a person using the term must accompany the term with such distinguishing marks that a buyer exercising ordinary care will not be deceived. Hygrade, 46 F.2d at 773. The fair use defense also requires that the use be in good faith. Sunmark, 64 F.3d at 1058. Wdiether the fair use defense applies is a factual question. Id.

As an initial matter, Plaintiffs contend that resolution of this matter is not appropriate on a motion to dismiss because fair use is an affirmative defense, and thus, Plaintiffs have no obligation to plead facts to rebut an affirmative defense. The Court agrees with Plaintiffs that generally they need only plead sufficient facts to state their infringement claim, and have no duty to plead facts to rebut an affirmative defense. See Fed.R.Civ.P. 8. Nevertheless, “there is no reason not to grant a motion to dismiss where the undisputed facts conclusively establish an affirmative defense as a matter of law.” Hensley Mfg. v. ProPride, Inc., 579 F.3d 603, 613 (6th Cir.2009). See also Hygrade, 46 F.2d at 773 (concluding, as a matter of law, that the allegations were insufficient to show that consumers could be deceived by defendant’s use of the mark where plaintiff used its trademark on food products, but defendant merely used the name “High Grade Food Stores” on its place of business, without so marking the goods offered for sale within). Generally, however, dismissal for failure to state a claim “is appropriate in only the most extreme trademark infringement cases, such as where goods are unrelated as a matter of law, since the likelihood of confusion is generally a question of fact.” Hensley, 579 F.3d at 613 (quoting 32 Federal Procedure, Lawyer’s Edition § 74:507 (2008)).

Plaintiffs next argue that their marks are incontestable and are fanciful, arbitrary, or suggestive, as strong source-identifiers for the Navajo Nation, and that the fair use defense is not available for such marks. A number of courts, however, have rejected this latter argument, instead concluding that the key inquiry is the descriptiveness of the accused designation, not the descriptiveness of the plaintiffs trademark. See, e.g., Car-Freshner Corp. v. S.C. Johnson & Son, Inc., 70 F.3d 267, 269 (2d Cir.1995); Sunmark, 64 F.3d at 1058. But see Institute for Scientific Info., Inc. v. Gordon & Breach, Science Publishers, Inc., 931 F.2d 1002, 1010 (3d Cir.1991) (noting that fair use defense presupposed that plaintiffs mark is descriptive). Neither party cites a Tenth Circuit case addressing this issue; nor did the Court find one. The Court, however, does not need to resolve at this time the issue as to the availability of the fair use defense when the mark is fanciful, arbitrary, or suggestive, because, as explained herein, even assuming Defendants may properly assert the defense, Plaintiffs’ Amended Complaint sufficiently states a trademark infringement claim under the Lanham Act and does not conclusively establish the applicability of the fair use defense as a matter of law.

Plaintiffs have alleged sufficient facts to show that Defendants have used the term “Navajo” in a trademark sense and that Defendants did not sufficiently accompany “Navajo” with such distinguishing marks that a buyer exercising ordinary care would not be deceived into believing they were purchasing an item produced by the Navajo Nation. The factual allegations are also sufficient to show that the mark is likely to create confusion in the marketplace. Unlike in Hygrade, Plaintiffs here have alleged that Defendants’ infringing use was on similar goods that Plaintiffs market and sell, e.g., clothing, jewelry, and other accessories, and that the goods compete in many of the same channels of commerce. See, e.g., Am. Compl. (Doc. 30) ¶ 5. Moreover, Plaintiffs have alleged facts that, when viewed in their favor, indicate that a buyer exercising ordinary care might be deceived into thinking they were buying a product manufactured by the Navajo Nation or a member thereof. For example, Plaintiffs attached evidence that Urban Outfitters advertised on its website “Navajo Bracelet” and “Navajo Feather Earring” without clarifying words or images that “Navajo” did not mean that it was made by a member of the Navajo Nation and was merely descriptive of the style. See Am. Compl., Ex. A (Doe. 30-1) at 7-8 of 41. Similarly, Plaintiffs presented facts that Free People sold and advertised items such as a “Vintage Handmade Navajo Necklace,” id. at 27 of 41, and that Anthropologie advertised items like a “Navajo Blossom pin,” id. at 34 of 41, without clarifying information that “Navajo” did not indicate the source of the items. See Sunmark, 64 F.3d at 1059 (“When the products involved are similar, “likelihood of confusion” may amount to using a word in a “misleading” way, violating 15 U.S.C. § 1125(a)(1) — not because the likelihood of confusion makes the use nondescriptive, but because the confusion about the product’s source shows that the words are being used, de facto, as a mark. And the defense is available only to one who uses the words of description “otherwise than as a mark.” ”).

Unlike the cases cited by Defendants, the descriptive word at issue in this case, “Navajo,” has a primary meaning that refers to the Navajo tribe, and its people. See Webster’s Third New International Dictionary of the English Language 1508 (3d ed. 1986) (defining “Navajo” as “an Athapaskan people of northern New Mexico and Arizona ranging also into Colorado and Utah — called also Diñé” and as “a member of such people”) (excerpt from Dictionary attached to Decl. of Karin B. Swope, Ex. A (Doc. 35-1) at 4 of 17). It is true that “Navajo” has a geographic component, as well, linking members to a particular geographic region that encompasses the Navajo Nation. See id. Unlike other purely geographic marks, however, “Navajo” refers to the Navajo people and the Navajo tribe, and the tribe is the legal entity that has registered the “NAVAJO” marks in question. Webster’s Dictionary also defines “navajo blanket” and “navajo rug” as “a blanket woven by the Navaho in geometric designs of symbolic meaning.” Id. Although this definition shows that “Navajo” may be used as an adjective for a rug or blanket, it also demonstrates that, even when used as an adjective, the term conveys information that the source of the rug or blanket is the Navajo tribe or a member thereof. Consequently, use of “Navajo” by Defendants, even as an adjective, could reasonably create a likelihood of confusion among consumers as to whether “Navajo” refers to the NAVAJO brand and the Navajo Nation as the source of the product. Cf. Baglin v. Cusenier Co., 221 U.S. 580, 592-93, 31 S.Ct. 669, 55 L.Ed. 863 (1911) (“If it be assumed that the monks took their name from the region in France in which they settled in the eleventh century, it still remains true that it became peculiarly their designation. And the word ‘Chartreuse,’ as applied to the liqueur which for generations they made and sold, cannot be regarded in a proper sense as a geographical name. It had exclusive reference to the fact that it was the liqueur made by the Carthusian monks at their monastery.... It could not fail to be recognized at once that these were the distinctive designations of the liqueur made by the monks, and not geographical descriptions available to anyone who might make cordial in a given section of country. The same would have been true if the monks had voluntarily removed, and continued their manufacture elsewhere.... This undoubtedly is a valid mark.”).

The Court recognizes some items include another company’s brand, such as Obey, in the product’s description. See, e.g., Am. Compl., Ex. A (Doc. 30-1) at 11 of 41 (“OBEY Navajo Glove”). The Court cannot find as a matter of law, however, that the inclusion of a separate company’s name in the product’s advertised name eliminates all alleged confusion regarding the source of the product. This issue is thus a fact question not suitable for determination on a motion to dismiss. Cf. Fortune Dynamic, Inc. v. Victoria’s Secret Stores Brand Mgmt., Inc., 618 F.3d 1025, 1041-42 (9th Cir.2010) (concluding that genuine issue of fact existed as to whether defendant’s use of term “delicious” constituted fair use, where scope of defense varies with level of descriptive purity; jury could reasonably conclude lack of precautionary measures on tank top outweighed evidence of some descriptive use; and defendant had many alternative words at its disposal to adequately capture its intended message).

Defendants nevertheless contend that Paragraphs 31 and 37 of the Amended Complaint “acknowledge, albeit indirectly, that the term ‘navajo’ is a descriptor for ‘Indian-styled’ prints and designs that may include ... ‘geometric prints.’ ” Defs.’ Mot. (Doc. 33) at 10. At this stage, the Court must view the facts and all inferences in Plaintiffs’ favor. The Court finds Defendants’ argument without merit. For example, Paragraph 31 states that the NAVAJO trademark is a famous mark and is widely recognized by consumers as a mark for the Navajo Nation’s Indianstyled and Indian-produced goods. Am. Compl. (Doc. 30) ¶ 31. The Amended Complaint alleges sufficient facts that consumers view the “NAVAJO” mark as a source identifier for the Navajo Nation.

Defendants additionally argue that Plaintiffs have themselves acknowledged that “fair use” of “Navajo” would include “Navajo Style Goods.” To support this argument, Defendants rely on the license agreement executed by DDC and submitted to the USPTO in connection with the prosecution of Trademark Serial No. 76/700,672. This Court, however, will not consider evidence outside the record, and thus, will not consider this argument at this stage.

Defendants further contend that Plaintiffs have failed to show either improper trademark “use” or “bad faith” as to Defendant Free People because the “use” of the term “Navajo” is a descriptor of vintage, pre-owned items originally from artisans who identify as Navajo Indians. To prove the source of the vintage items, Defendants rely on the Declaration of Ms. Reich. The affidavit is less than a model of clarity to prove the truth of what is asserted. Ms. Reich avers that the items “are believed to be” jewelry made by indivictuals who self-identify as Navajo Indian without explaining the basis for her belief. Defs.’ Mot., Ex. J (Doc. 33-10) ¶ 4. In any event, the Court will not at this stage of the proceedings consider this extra-pleading Declaration.

Turning then to the facts as alleged in the Amended Complaint, the exhibits do not expressly say that the items were made by individuals who self-identify as Navajo Indians. For example, the only reference to “Navajo” in Exhibit A (Doc. 30-1) at 27 of 41 is “Vintage Handmade Navajo Necklace.” The Court finds these allegations sufficient to state a claim that Defendant Free People is using the “Navajo” mark in a trademark sense that likely will confuse customers as to whether the vintage products originate from Plaintiffs. The fact question regarding whether the vintage items were indeed made by Navajo Indians is, once again, better left to summary judgment or trial.

Defendants also argue that “Navajo Beauty” as shown in Exhibit E (Doc. 30-2 at 26) was made by customer of Free People, and thus, does not constitute trademark “use” by Defendant Free People. Plaintiffs, however, have acknowledged that their claims do not encompass actions by Defendants’ customers; rather, Plaintiffs allege that Defendants were using “Navajo” in their labeling and in their search engines to divert customers to their products. See Am. Compl. (Doc. 30) ¶ 40. The Tenth Circuit has recognized a Lanham Act claim based on “initial interest confusion,” which “in the internet context derives from the unauthorized use of trademarks to divert internet traffic, thereby capitalizing on a trademark holder’s goodwill.” Australian Gold, Inc. v. Hatfield, 436 F.3d 1228, 1239 (10th Cir.2006). It is unclear from Exhibit E whether Defendants are responsible for using the phrase “Navajo Beauty” to describe one of the collections of their products, as the web page says the “Navajo Beauty” collection was created by “indiehippiepixie.” Nevertheless, construing Plaintiffs’ complaint in the light most favorable to them, the Court concludes that Plaintiffs have sufficiently alleged Defendants have used the term “Navajo” to divert internet traffic on their websites. The Court is therefore unwilling to decide the particular issue of whether Defendant Free People infringed on the “NAVAJO” trademark when advertising the “Palmedo Blanket Bag” without development of the factual record concerning how Defendants allegedly used “Navajo” in their internal search engines to divert customers to products like the Palmedo Blanket Bag.

Finally, the Court cannot find, as a matter of law, that the “nominative fair use” doctrine warrants dismissal. Nominative fair use is a doctrine that applies when a defendant uses a mark to refer to the trademarked good itself and permits fair use of the mark so long as it does not inspire a mistaken belief by consumers that the speaker is sponsored or endorsed by the trademark holder. Toyota Motor Sales, U.S.A., Inc. v. Tabari, 610 F.3d 1171, 1175-76 (9th Cir.2010). The doctrine provides a fair use defense when a good is so well-known and so unique that it can effectively be identified only by use of its trademark. See Swarovski Aktiengesellschaft v. Building No. 19, Inc., 704 F.3d 44, 49 (1st Cir.2013). The Ninth Circuit’s test for nominative fair use is whether (1) the product is readily identifiable without use of the mark, (2) defendant used more of the mark than necessary, or (3) defendant falsely suggested he was sponsored or endorsed by the mark’s holder. Toyota Motor Sales, 610 F.3d at 1175-76. Different circuits use the doctrine to measure different concepts and have endorsed different approaches to the doctrine. Swarovski, 704 F.3d at 52-53. See also McCarthy, § 23:11 (describing various circuits’ views on nominative fair use). The Tenth Circuit does not appear to have endorsed the doctrine or formulated its approach to resolving the doctrine. See Health Grades, Inc. v. Robert Wood Johnson Univ. Hosp., Inc., 634 F.Supp.2d 1226, 1241 (D.Colo.2009). Assuming, without deciding, that the Tenth Circuit recognizes the doctrine, the Court concludes that whether “Navajo” is the only word reasonably available to describe the particular designs of the products at issue is a fact question not suitable for resolution at this time, particularly where the Amended Complaint alleges that “geometric” or “southwestern” are alternative ways to describe the goods at issue. See Am. Compl. (Doc. 30) ¶ 46. Plaintiffs have sufficiently stated a claim of likelihood of confusion, not only as to source, but also as to sponsorship or endorsement.

2. Whether “Navajo” when used in connection with clothing and clothing accessories is a generic descriptor

Defendants argue that “Navajo” is today a generic descriptor for a particular type of design and style of clothing and clothing accessory. “When the relevant public ceases to identify a trademark with a particular source of a product or service but instead identifies the mark with a class of products or services regardless of source, that mark has become generic and is lost as an enforceable trademark.” Creative Gifts, Inc. v. UFO, 235 F.3d 540, 544 (10th Cir.2000). A plaintiff demonstrates secondary meaning in a mark when there is evidence that the consuming public understands the mark to denote a good coming from a single source. See Burke-Parsons-Bowlby Corp., 871 F.2d at 596. Absent direct proof of secondary meaning, which is usually difficult to obtain, a court may draw reasonable inferences from evidence of long-term usage and considerable effort and expenditure of money toward developing a reputation and good will for the trademark. Id. Sales volume and advertising expense are relevant, although each standing alone may not establish secondary meaning. See id. Extensive advertising and a long duration of use of the mark may be sufficient to establish secondary meaning. See id.

Without deciding whether “Navajo” is a descriptive, suggestive, arbitrary, or fanciful mark, the Court finds that Plaintiffs have alleged enough facts to show, at the very least, secondary meaning, and thus, that their mark is not generic. Plaintiffs allege that the Navajo Nation and its people have been known by the name “Navajo” since 1849, and they have marketed and retailed clothing, housewares, and jewelry using the NAVAJO name and marks since 1941. Am. Compl. (Doc. 30) ¶ 3. Further, the Amended Complaint states that Plaintiffs have invested substantial capital in promoting their trademark, resulting in more than $500 million in sales of NAVAJO-branded goods. Id. ¶ 4. These allegations of duration of use of the mark and successful advertising provide a factual basis to support their legal conclusion that consumers recognize the NAVAJO mark as indicating that the goods, including clothing and clothing accessories, come from Plaintiffs.

Defendants rely, in part, on Exhibits BF in support of their argument, but as previously explained, the Court will not consider these extra-pleading exhibits. Defendants also point to Exhibit E (Doc. 30-2 at 26) where “indiehippiepixie” describes a collection as “Navajo Beauty.” The Court does not find that this one entry is sufficient to prove Defendants’ argument about what the general public perceives as the meaning of “Navajo.” This argument is simply better suited for a motion for summary judgment or trial.

3. Trademark Dilution (Count II)

The Lanham Act also provides that “the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who ... commences use of a mark ... in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark....” 15 U.S.C. § 1125(c). Plaintiffs have alleged that Defendants’ use of “Navajo” and “Navaho” in promoting, marketing, and selling their retail items constitute willful trademark dilution by blurring and tarnishment. Defendants argue Count II should be dismissed for a number of reasons.

First, Defendants contend that “Navajo” is not famous as a source of relevant goods. They argue that Plaintiffs represented to the USPTO that the “Navajo” mark was first used in connection with clothing such as shirts and jackets in 1995 and 2005 and that the Amended Complaint is devoid of particular facts showing the extent and geographic reach of Plaintiffs’ sales, advertising, and publicity.

The Lanham Act defines a “famous” mark as one that “is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner.” 15 U.S.C. § 1125(c)(2)(A). A court may consider all relevant factors including the duration, extent, and geographic reach of advertising and publicity of the mark; the amount, volume, and geographic extent of sales of goods offered under the mark; the extent of actual recognition of the mark; and whether the mark is registered on the principal register. Id. § 1125(c)(2)(A)(i)-(iv). Whether a mark is “famous” is a factual question. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1372 (Fed.Cir.2012). Fame for dilution requires a more stringent showing than fame for likelihood of confusion. Id. at 1373. Fame for dilution requires widespread recognition by the general public; in other words, it is a mark that has become a “household name.” Id. (quoting Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002, 1012 (9th Cir.2004)).

To support their conelusory assertion of fame, Plaintiffs set forth that the Navajo Nation and its people have been known by “Navajo” since 1849; Plaintiffs have continuously used the NAVAJO trademark in commerce; Plaintiffs have marketed and retailed clothing, jewelry, and house wares since 1941; and Plaintiffs registered the NAVAJO trademark in 1943. See Am. Compl. (Doc. 30) ¶ 3. This evidence shows a significant duration of use of the mark. Although Plaintiffs do not allege many non-conclusory facts concerning the geographic reach of their advertising, they do allege they have invested “substantial capital in promoting and protecting” the NAVAJO trademark, resulting in more than $500 million in sales of NAVAJO-branded goods, and that the NAVAJO marks are prominently featured on a number of Plaintiffs’ websites. Id. ¶¶ 4, 30. Additionally, they have alleged that the Navajo Nation has registered 86 trademarks using the NAVAJO component with the USPTO on the Principal Register. Id. ¶ 3. Plaintiffs also more generally allege that the NAVAJO trademark is “a famous mark” and is “broadly recognized by purchasers of consumer goods, including clothing, jewelry, and house wares, and by the United States’ general public as a trademark for the Navajo Nation’s Indian-styled and Indian-produced goods.” Id. ¶ 31. Viewing all reasonable inferences in Plaintiffs’ favor, the Court concludes that these allegations are sufficient to create a factual issue concerning the fame of the mark for dilution to survive dismissal at this stage. Cf. Cartier, Inc. v. Deziner Wholesale, L.L.C., No. 98 Civ. 4947, 2000 WL 347171, at *6 (S.D.N.Y. April 3, 2000) (unpublished opinion) (granting plaintiff summary judgment on trademark dilution claim after finding mark famous based on nationwide use of mark for 92 years in connection with Cartier’s luxury items and defendant was aware of cachet of Cartier name).

Defendants next contend that Plaintiffs have failed to state a dilution by blurring claim because Plaintiffs have not shown how Defendants’ use of “navajo” impairs the distinctiveness of “Navajo.” The Lanham Act defines “dilution by blurring” as an “association arising from the similarity between a mark ... and a famous mark that impairs the distinctiveness of the famous mark.” 15 U.S.C. § 1125(c)(2)(B). Plaintiffs allege that Defendants’ use of “Navajo” in retailing its 23 “Navajo” products and its marketing of its “Navajo Collection” makes it likely that consumers will incorrectly believe that the “Navajo” mark is an indistinct term. Am. Compl. (Doc. 30) ¶ 60. This allegation, in combination with the complaint as a whole, is sufficient to state a dilution by blurring claim. Defendants rely again on Exhibits B-F to show that consumers and the fashion industry use “navajo” in connection with clothing and clothing accessories that do not originate with Plaintiffs. The Court will not consider these extra-pleading materials, and thus, the dilution by blurring claim will remain in the case at this time.

Additionally, Defendants assert that Plaintiffs have failed to state a claim for dilution by tarnishment. “Dilution by tarnishment” under the Lanham Act is association arising from the similarity between a mark and a famous mark that harms the reputation of the famous mark. 15 U.S.C. § 1125(c)(2)(C). “Tarnishment occurs where a trademark is linked to products of shoddy quality, or is portrayed in an unwholesome or unsavory context, with the result that the public will associate the lack of quality or lack of prestige in the defendant’s goods with the plaintiffs unrelated goods.” New York Stock Exchange, Inc. v. New York, New York Hotel LLC, 293 F.3d 550, 558 (2d Cir.2002) (internal quotations omitted). Some courts have found tarnishment when a mark is placed in the context of sexual activity, obscenity, or illegal activity. Hormel Foods Corp. v. Jim Henson Productions, Inc., 73 F.3d 497, 507 (2d Cir.1996) (collecting cases).

Defendants contend that the “Navajo Print Fabric Wrapped Flask” is not a sufficiently unwholesome association to Plaintiffs’ NAVAJO mark to constitute tarnishment. They note that the Fire Rock Navajo Casino registered trademark includes “shot glasses” among its goods. See Defs.’ Mot., Ex. G (Doc. 33-7). Plaintiffs allege harm to their reputation based on the Navajo Nation banning the sale and consumption of alcohol within its borders. Although the Court has declined to consider extra-pleading materials, Plaintiffs admit that there is an exception for alcohol consumption within the confines of the dining areas of a Navajo Nation Gaming Enterprise facility. Plaintiffs further admit that the Navajo Nation’s Gaming Enterprise registered the “FIREROCK NAVAJO CASINO” mark for shot glasses used in the dining rooms of their gaming facilities. In light of these admissions, the Court concludes, as a matter of law, that Plaintiffs’ allegations of tarnishment based on the use of “Navajo” with the “Navajo Print Fabric Wrapped Flask” are not sufficiently unwholesome or unsavory to support a tarnishment claim. Cf. Ringling Brothers-Barnum & Bailey Combined Shows, Inc. v. B.E. Windows Corp., 937 F.Supp. 204, 211 (S.D.N.Y.1996) (holding that circus could not succeed on tarnishment claim based on association of THE GREATEST SHOW ON EARTH mark with an adult establishment that serves alcohol where circus’s own employee admitted that alcohol is served at some venues where circus performs and some of circus’s restaurant sponsors also sell alcohol).

Plaintiffs also allege that Defendants’ use of “Navaho” is “scandalous” because the Navajo Nation Code provides that the use of “Navajo” shall use the spelling “j”, not “h.” Am. Compl. (Doc. 30) ¶ 66. Plaintiffs have provided the Court with no authority for the proposition that misspelling a mark is “scandalous” and constitutes dilution by tarnishment, nor could the Court find any such authority. Significantly, Plaintiffs’ own complaint notes that “Navaho” is a long-thought acceptable spelling. See id. ¶ 2 n. 2. Furthermore, Plaintiffs rely on Webster’s Third New International Dictionary in their briefs, which also uses “Navaho” and “Navajo” interchangeably. See Deck of Karin B. Swope, Ex. A (Doc. 35-1) at 4 of 17. The Court finds that the alleged misspelling in this case is not sufficiently “scandalous” to state a claim for dilution by tarnishment.

Plaintiffs additionally allege a theory of dilution by tarnishment based on Defendants’ marketing and retailing of products of significantly lower quality than the Navajo Nation’s own products. Defendants argue that is a legal conclusion unsupported by any facts. Defendants also argue that Plaintiffs’ own complaint shows that consumers are happy with Defendants’ products, noting that the Exhibits attached to the Amended Complaint reveal that all of the products reviewed by consumers received at least a 3-star ranking, with the majority of products receiving 4.5 out of 5 stars. The Court is not willing to find at this time that the star-ratings conclusively demonstrate the quality of Defendants’ products. Moreover, not all the products attached as Exhibits have been reviewed by consu