A Tale of Two Oneida Nations: Trademark Challenge Rejected by Second Circuit for Lack of Standing

The Second Circuit recently affirmed a district court’s dismissal of the Oneida Indian Nation of New York’s action challenging the U.S. Department of Interior’s (“DOI”) approval of Oneida Tribe of Indians of Wisconsin’s federally recognized name change based on a lack of standing.

The Oneida Indians have long been separated into two groups, the group that moved to Wisconsin and the group that remained in New York.  The Oneida Tribe of Indians of Wisconsin (the “Wisconsin Oneidas”) requested that DOI conduct a Secretarial election to amend the tribe’s constitution, including changing the tribe’s name to “Oneida Nation.”  The DOI allowed the election to proceed but noted that the tribe’s new name may cause confusion with the Appellant, Oneida Nation of New York (“New York Oneidas”).  The Wisconsin Oneidas proceeded with the name change and the DOI published the new name on the Federal Register for federally recognized tribes.

Subsequently, the Wisconsin Oneidas petitioned the Trademark Trial and Appeal Board (“TTAB”) to cancel the New York Oneidas’ registrations for the marks ONEIDA and ONEIDA INDIAN NATION.  The Wisconsin Oneidas claimed that its use of those names predated use by the New York Oneidas, as well as asserting fraud and abandonment.  In response, the New York Oneidas brought an action under the Administrative Procedure Act requesting an order setting aside DOI’s approval and publication of the Wisconsin Oneidas’ name change and enjoining the DOI from approving the Oneida Nation name. 

The district court granted DOI’s motion to dismiss for lack of subject matter jurisdiction based on the New York Oneidas’ lack of standing for a failure to allege injury.  The New York Oneidas appealed the district court’s dismissal arguing that it had standing based on the following injuries: (1) harm related to the TTAB proceeding; (2) actual and potential confusion; and (3) reputational harm.  The Second Circuit rejected each of these arguments as discussed in turn below.

First, the New York Oneidas argued that it would be prejudiced in the TTAB proceeding by the DOI’s approval of the Wisconsin Oneida’s name change which would bolster the Wisconsin Oneidas’ position.  The New York Oneidas also argued that it will suffer “monetary injury” from the proceeding.  In rejecting these arguments, the Second Circuit concluded that even if these were cognizable injuries, they were not redressable by a favorable decision in the present case.  The court noted that the Wisconsin Oneidas’ petition to cancel was based on grounds independent of the name change (fraud and abandonment).  Moreover, while the petition was also based on the Wisconsin Oneidas’ prior use of the ONEIDA NATION mark in commerce, this use far predated DOI’s approval of the name change.  The Second Circuit thus concluded that the New York Oneidas failed to show that it was “likely, as opposed to merely speculative, that any injury relating to the TTAB proceeding would be redressed by a favorable decision.”

Second, the New York Oneidas argued that the likelihood of confusion between the tribes’ respective names was sufficient injury to confer standing.  In support of its argument, the New York Oneidas cited to two instances of confusion described in its complaint: (1) a request from the Department of Health and Human Services and (2) an invoice, both of which were sent to the New York Oneidas instead of the Wisconsin Oneidas.  While the Second Circuit considered whether these purported instances of confusion constituted concrete injuries, the court rested its decision on the basis that that the record did not demonstrate that any commercial confusion was traceable to the DOI’s approval of the Wisconsin Oneidas’ name change.  As discussed above, the Wisconsin Oneidas have been using the ONEIDA NATION name for decades and the record did not reflect that the confusion between the two tribes increased as a result of the DOI’s approval of the name change.  Additionally, the court concluded that a favorable decision in this case would not prevent the Wisconsin Oneidas from its continued use of the ONEIDA NATION mark.  The Second Circuit accordingly affirmed the district court’s conclusion that the New York Oneidas pleaded confusion could not support standing.

Finally, the Second Circuit rejected the New York Oneidas’ argument that the DOI’s approval of the name change diminished its “status and reputation as the original Oneida Nation.”  The Second Circuit concluded that the DOI’s approval of the name change “said nothing about the New York Oneidas, let alone anything derogatory”; the court also noted the DOI’s policy of approving, automatically, any name chosen by a tribe.  As such, the court found that Appellant had not alleged redressable reputational harm.

The case is Oneida Indian Nation v. United States DOI, 2019 U.S. App. LEXIS 31501, 2019 U.S.P.Q.2d (BNA) 401110 (2d Cir. Oct. 21, 2019).