Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA866633
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`ESTTA Tracking number:
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`Filing date:
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`12/21/2017
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`Proceeding
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`Party
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`Correspondence
`Address
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`Submission
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`Filer's Name
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`Filer's email
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92066411
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`Defendant
`Oneida Indian Nation of New York
`
`LINDA K MCLEOD
`KELLY IP LLP
`1919 M STREET NW , SUITE 610
`WASHINGTON, DC 20036
`UNITED STATES
`Email: linda.mcleod@kelly-ip.com, lit-docketing@kelly-ip.com,
`mike.chajon@kelly-ip.com, clint.taylor@kelly-ip.com
`Motion to Suspend for Civil Action
`
`Linda K. McLeod
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`linda.mcleod@kelly-ip.com, mike.chajon@kelly-ip.com, lit-docket-
`ing@kelly-ip.com
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`Signature
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`Date
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`/Linda K. McLeod/
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`12/21/2017
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`Attachments
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`Oneida - Motion to Suspend.pdf(2454416 bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`
`ONEIDA NATION,
`
`
`
`Petitioner,
`
`
`v.
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`ONEIDA INDIAN NATION OF NEW
`YORK,
`
`Registrant.
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`Cancellation No. 92066411
`
`Mark: ONEIDA INDIAN NATION
`Registration No.: 2309491
`Registered: January 18, 2000
`
`Mark: ONEIDA
`Serial No.: 4808677
`Registered: September 8, 2015
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`Mark: ONEIDA
`Serial No.: 4813028
`Registered: September 15, 2015
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`REGISTRANT’S MOTION FOR SUSPENSION
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`OF ALL PROCEEDINGS PENDING DISPOSITION OF CIVIL ACTION
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`Pursuant to Trademark Rule 2.117, 37 C.F.R. § 2.117(a), Oneida Indian Nation
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`of New York (“Registrant”) requests suspension of the above-identified cancellation
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`proceeding filed by Oneida Nation (“Petitioner”) against Registration Nos. 2309491,
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`4808677, and 4813028.
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`Registrant has filed a civil action against the U.S. Department of Interior
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`(“Interior”), Oneida Indian Nation v. United States Department of the Interior, 5:17-cv-
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`00913-MAD-TWD (the “Civil Action”), which is currently pending in the U.S. District
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`Court for the Northern District of New York. A true and correct copy of the complaint
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`filed in the Civil Action, along with all exhibits attached to that complaint, are attached as
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`Exhibit A (the “Civil Action Complaint”). Through the Civil Action, Registrant challenges
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`Interior’s administrative acts that allowed Petitioner to seek and obtain approval to
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`change its federally-recognized name from the “Oneida Tribe of Indians of Wisconsin” to
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`simply “Oneida Nation.” If Registrant prevails in the Civil Action, Interior’s decision to
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`recognize Petitioner as “Oneida Nation” may be set aside, and Interior may be enjoined
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`from approving “Oneida Nation” as Petitioner’s federally-recognized name.
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`It is clear that Petitioner relies on Interior’s decision to recognize Petitioner as
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`“Oneida Nation” when raising claims against Registrant in this Board proceeding. For
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`example, in both its original and amended petition for cancellation, Petitioner alleges
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`facts related to the name-change proceeding before Interior. Petitioner alleges that “[o]n
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`May 2, 2015, Petitioner conducted an election adopting . . . an amendment to change its
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`name from Oneida Tribe of Indians of Wisconsin to Oneida Nation,” “[t]he Bureau of
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`Indian Affairs approved this amendment on June 16, 2015, and this change was
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`published in 2016.” (Dkt. 8 at ¶ 12; see also Dkt. 1 at ¶ 11.)
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`Moreover, Petitioner relies on its alleged rights in the “Oneida Nation” name that
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`resulted from Interior’s decision to allege that Petitioner would suffer harm if Registrant’s
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`ONEIDA and ONEIDA-formative trademarks remain on the Register. Specifically,
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`Petitioner alleges that Registrant’s enforcement of Registrant’s registered trademarks
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`has harmed Petitioner by “limiting Petitioner’s own use of its federally-recognized
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`name—Oneida Nation.” (Dkt. 8 at ¶ 9; see also Dkt. 1 at ¶ 8.)
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`Petitioner has also used Interior’s decision to try to limit Registrant’s use of its
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`longstanding “Oneida Nation” name and mark. Attached and incorporated into the Civil
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`Action Complaint is a January 16, 2017 letter that Petitioner sent to Registrant asserting
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`that Registrant’s “federally recognized name is Oneida Nation of New York, and
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`[Registrant] should not abbreviate that as Oneida Nation or otherwise refer to itself as
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`2
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`the Oneida Nation, which is the federally recognized name of [Petitioner].” (Civil Action
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`Complaint Ex. C at 2.)
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`Accordingly, Petitioner has taken the position that Interior’s decision to recognize
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`it as “Oneida Nation” gave Petitioner rights to that name and mark, which, according to
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`Petitioner, bear on Registrant’s ability to use, register, and enforce ONEIDA and
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`ONEIDA-formative marks (such as ONEIDA NATION as a mark and trade name).
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`Therefore, according to Petitioner, the Civil Action has a bearing on this cancellation
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`proceeding. See New Orleans Louisiana Saints LLC & NFL Properties LLC v. Who Dat?
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`Inc., 99 USPQ2d 1550 (TTAB 2011) (“The civil action does not have to be dispositive of
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`the Board proceeding to warrant suspension, it need only have a bearing on the issues
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`before the Board.”).
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`In view of Petitioner’s reliance on Interior’s decision, Registrant respectfully
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`requests that the Board suspend this cancellation proceeding pending disposition of the
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`Civil Action.
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`
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`Dated: December 21, 2017
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`
`
`By: /Linda K. McLeod/
`Linda K. McLeod
`linda.mcleod@kelly-ip.com
`Michael A. Chajon
`mike.chajon@kelly-ip.com
`Kelly IP, LLP
`1919 M Street, N.W.
`Suite 610
`Washington, D.C. 20036
`Telephone: 202-808-3570
`Facsimile: 202-354-5232
`
`Attorneys for Registrant Oneida Indian
`Nation of New York
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`CERTIFICATE OF SERVICE
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`I certify that a true and accurate copy of the foregoing MOTION FOR
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`SUSPENSION PENDING DISPOSITION OF CIVIL ACTION was served on counsel for
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`Opposer by email on December 21, 2017, at the following email address of record:
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`
`
`chris.liro@andruslaw.com
`mariem@andruslaw.com
`cathym@andruslaw.com
`aarono@andruslaw.com
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`
`
`/Larry L. White/
`Larry White
`Litigation Case Manager
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`EXHIBIT A
`EXHIBIT A
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`Case 5:17-cv-00913-MAD-TWD Document 1 Filed 08/17/17 Page 1 of 32
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`UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF NEW YORK
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`COMPLAINT
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`5:17-CV-0913 (MAD/TWD)
`Civil Action No. ______________
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`Plaintiff,
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`v.
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`
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`__________________________________________
`ONEIDA INDIAN NATION
`)
`1 Territory Road
`)
`Oneida, New York 13421,
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`Defendant.
`
`
` _________________________________________)
`
`UNITED STATES DEPARTMENT OF THE
`INTERIOR,
`
`
`1849 C Street, N.W.
`Washington, D.C. 20240,
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`1.
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`The Oneida Indian Nation (“the Nation”) – long known as the Oneida Nation, the
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`Oneida Nation of New York and the Oneida Indian Nation of New York – is a federally
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`recognized Indian tribe. See 82 Fed. Reg. 4915, 4917 (Jan. 17, 2017) (most recent official list
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`federally recognizing the Nation as Oneida Nation of New York); H.R. Rep. No. 103-781, at 4
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`(1994) (referring to the Nation as Oneida Nation and Oneida Nation of New York); L. 2013, ch.
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`174, § 12 (N.Y.) (referring to the Nation as Oneida Nation and Oneida Nation of New York);
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`Oneida Nation of New York v. Cuomo, 645 F.3d 154 (2d Cir. 2011) (referring to the Nation as
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`Oneida Nation of New York and Oneida Nation); United States v. Markiewicz, 978 F.2d 786 (2d
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`Cir. 1992) (referring to the Nation as Oneida Nation).
`
`2.
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`The United States Department of the Interior (“the Department”) is an agency of
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`the United States. It owes trust obligations to the Nation, like all federally-recognized Indian
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`tribes. E.g., Federally Recognized Indian Tribe List Act of 1994, Pub. L. No. 103-454, § 103(2)
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`(“the United States has a trust responsibility to recognized Indian tribes”).
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`

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`Case 5:17-cv-00913-MAD-TWD Document 1 Filed 08/17/17 Page 2 of 32
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`3.
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`The Nation sues the Department under the Administrative Procedure Act to
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`overturn a series of final agency actions taken during the previous administration. By those
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`actions, the United States first gave federal approval to and then federally recognized the change
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`of name of the Oneida Tribe of Indians of Wisconsin (“the Wisconsin tribe”) to Oneida Nation,
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`causing confusion with and damaging the Nation. The last of the challenged agency actions –
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`the Department’s decision to change the Wisconsin tribe’s federally recognized name that is
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`published in the Federal Register in the official list of federally recognized tribes – appears to
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`have been approved by a Department official who was a member of and a former attorney for
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`that Wisconsin tribe who thus had a disqualifying conflict of interest.
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`4.
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`To be clear, the Nation’s claims here are not about what an Indian tribe chooses to
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`call itself. The Nation’s claims concern official agency action taken by the Department under a
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`federal statute, 25 U.S.C. § 5123, first to give federal approval to the Wisconsin tribe’s name
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`change, and then under another statute, 25 U.S.C. § 5131, to federally recognize the changed
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`name and to publish the federally recognized name in the Federal Register.
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`5.
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`As a result of the Department’s approval and recognition actions, the Wisconsin
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`tribe is now claiming legal rights in the Oneida Nation name. The Wisconsin tribe also is
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`insisting that the Nation has lost trademark rights in the Oneida Nation name and more generally
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`has now lost the right even to refer to itself as the Oneida Nation, a name by which the Nation
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`has been known.
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`6.
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`Department records discovered through Freedom of Information Act requests
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`reveal that, in taking the challenged actions, the Department knew about but decided not to
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`consider the Nation’s clear interests in its name and identity. The Department also did not give
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`2
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`Case 5:17-cv-00913-MAD-TWD Document 1 Filed 08/17/17 Page 3 of 32
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`the Nation notice of the Department’s contemplated actions or, consequently, an opportunity to
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`be heard before it federally approved and recognized the Wisconsin tribe’s changed name.
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`7.
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`The Department decided, without regard to any other facts, to automatically
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`accept – for purposes of federal law and federal recognition – the decision of the Wisconsin tribe
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`to change its name. By abdicating its duty to make an independent federal decision before
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`federally approving and recognizing the name change, the Department entirely yielded federal
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`decision-making responsibility to the Wisconsin tribe.
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`8.
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`The Department has since confirmed to the Nation that, without applying any
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`limiting principle, it automatically gives federal approval to and federally recognizes any change
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`that an Indian tribe chooses to make concerning its name. Thus, pursuant to this non-public rule,
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`the Oneida Tribe of Indians of Wisconsin was able to automatically bind the United States, for
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`purposes of federal recognition of the Wisconsin tribe, to the tribe’s unilateral decision to jettison
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`“Tribe” and Wisconsin and to assume the name “Oneida Nation.”
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`9.
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`The Department’s actions were arbitrary and capricious and otherwise violated the
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`Department’s obligations under the List Act, 25 U.S.C. § 5131, the Indian Reorganization Act, 25
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`U.S.C. § 5123, and the Administrative Procedure Act, 5 U.S.C. §§ 555 & 701, et seq., as well as
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`its statutory and trust obligations to Indian tribes, including the Nation.
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`10.
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`Unless the Department’s actions are set aside, the potential for damage and
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`unfairness to Indian tribes – and chaos – is enormous. Many tribes share common histories and
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`have similar names and now are susceptible to the same misappropriation of identity that the
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`Nation has suffered. Among them are the Mississippi Band of Choctaw and the Choctaw Nation
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`of Oklahoma; the Iowa Tribe of Kansas and Nebraska and the Iowa Tribe of Oklahoma; the
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`Mississippi Band of Choctaw Indians and the Choctaw Nation of Oklahoma; the Ponca Trobe of
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`Case 5:17-cv-00913-MAD-TWD Document 1 Filed 08/17/17 Page 4 of 32
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`Indians of Oklahoma and the Ponca Tribe of Nebraska; the Seminole Tribe of Florida and the
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`Seminole Nation of Oklahoma; the Sac & Fox Nation of Missouri in Kansas and Nebraska, the
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`Sac & Fox Nation, Oklahoma and the Sac & Fox Tribe of the Mississippi in Iowa; and the
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`Kickapoo Traditional Tribe of Texas, the Kickapoo Tribe of Oklahoma and the Kickapoo Tribe of
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`Indians of the Kickapoo Reservation in Kansas. Under the rule the Department applied here, for
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`example, either of the Choctaw tribes could claim the mantle of the Choctaw Nation – or both
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`could – and the Department, absurdly, would recognize those changes for purposes of federal law
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`and federal recognition. A similarly absurd result could apply to all of the other tribes given as
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`examples above, and to others not listed as examples here.
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`11.
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`If the Department is required to consider the interests of all affected tribes and to
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`make an independent federal decision before federally approving and federally recognizing tribal
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`name changes, absurd and harmful results are unlikely to occur.
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`JURISDICTION AND VENUE
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`12.
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`28 U.S.C. §§ 1331 and 1362 provide federal subject matter jurisdiction. This
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`action arises under the Administrative Procedure Act, 5 U.S.C. §§ 551, et seq. & 701 et seq.,
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`under 25 U.S.C. §§ 5123 & 5131 and under federal statutory and common law creating or
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`recognizing trust responsibilities on the part of the United States to Indian tribes. Plaintiff is an
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`Indian tribe with a governing body duly recognized by the Secretary of the Interior.
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`13.
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`Judicial review is authorized by the Administrative Procedure Act, 5 U.S.C.
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`§§ 701 et seq., and by 25 U.S.C. § 5123(d)(2). The challenged decisions are final agency actions
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`not subject to further administrative review. The Nation has suffered a legal wrong and is
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`adversely affected and aggrieved by the agency actions, in which it had and has a clear interest.
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`Case 5:17-cv-00913-MAD-TWD Document 1 Filed 08/17/17 Page 5 of 32
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`14.
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`This district is a proper venue pursuant to 28 U.S.C. § 1391(e)(1). The
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`Department is an agency of the United States. No real property is involved in this action, and the
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`Nation resides in this district. Further, a substantial part of the omissions giving rise to the
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`Nation’s claims (failures of notice to the Nation) occurred in this district.
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`FACTS
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`A.
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`Two Separate Indian Tribes: Formation of the Oneida Tribe of Indians of
`Wisconsin
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`15.
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`The Oneida Nation was an original member of the Haudenosaunee, or Six Nations
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`Confederacy, in New York, which consists of: the Mohawk, the Oneida, the Cayuga, the
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`Onondaga, the Seneca and the Tuscarora.
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`16.
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`In the latter part of the eighteenth century, the United States entered into several
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`treaties recognizing the Oneida Nation and promising to protect its lands in New York. 7 Stat. 15
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`(Oct. 22, 1784); 7 Stat. 33 (Jan. 9, 1789); 7 Stat 44 (Nov. 11, 1794); 7 Stat. 47 (Dec. 2, 1794). Of
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`these, the most important is the November 11, 1794 treaty, which is referred to as the Treaty of
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`Canandaigua. The Treaty of Canandaigua acknowledged and continues to acknowledge the
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`Oneida reservation in New York. See Oneida Indian Nation v. Madison County, 665 F.3d 408,
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`443-44 (2d Cir. 2011).
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`17.
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`In the years following 1794, some Oneida Nation members sold Nation lands,
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`moved to Wisconsin and formed a separate tribe that became known as the Oneida Tribe of
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`Indians of Wisconsin. That tribe made its own treaties with the United States, and moved onto a
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`new reservation provided by the federal government near Green Bay. The treaty providing that
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`reservation was made only with the Wisconsin tribe, which recognized it as a separate tribe. 7
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`Stat. 566 (Feb. 3, 1838) (referring to the “First Christian and Orchard Parties of the Oneida
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`Indians Residing at Green Bay”). The Wisconsin tribe has not since resided in or exercised tribal
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`Case 5:17-cv-00913-MAD-TWD Document 1 Filed 08/17/17 Page 6 of 32
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`governance in New York, where the Nation continued to exist, govern, and treat separately with
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`the United States.
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`18.
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`Department officials have provided affidavits, filed in federal court, addressing
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`the names and identities of the Nation and the Wisconsin tribe. In 1976, the Chief of the Tribal
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`Relations Branch in the Office of Indian Services within the Bureau of Indian Affairs (“BIA”)
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`provided an affidavit asserting:
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`The Oneida Indian Nation of New York and the Oneida Tribe of Wisconsin are
`federally recognized Indian tribes. The Oneida Nation of New York is one of the
`Indian tribes which entered into and signed [three federal treaties between 1784
`and 1794, including the Treaty of Canandaigua]. The Oneida Tribe of Wisconsin
`is recognized by the Secretary of the Interior as a successor in interest to the
`signatories of those treaties.
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`The Bureau of Indian Affairs recognizes the Oneida Indian Nation of New York as
`the Indian tribe which remained on the New York Oneida Indian reservation. . . .
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`. . .
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`The Bureau of Indian Affairs recognizes the Oneida Tribe of Indians of Wisconsin
`as a distinct and separate entity from the Oneida Indian Nation of New York.
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`March 17, 1976 Affidavit of Leslie M. Gay, Jr., filed in Oneida Indian Nation of New
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`York v. Williams, et al., Civ. No. 74-CV-167 (N.D.N.Y.) (emphasis added).
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`19.
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`A Deputy Commissioner of Indian Affairs later provided a similar affidavit:
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`The Secretary of the Interior recognizes the Oneida Nation of New York as the
`Indian tribe that remained on the New York Oneida Reservation. . . .
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`The Secretary of the Interior recognizes the Oneida Tribe of Indians of Wisconsin
`as a distinct and separate entity from the Oneida Nation of New York.
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`The Secretary of the Interior recognizes the Oneida Nation of New York and the
`Oneida Tribe of Indians of Wisconsin as federally recognized tribes and lists them
`on the current official list . . . printed in the Federal Register.
`
`
`June 14, 2001 Affidavit of Sharon Blackwell, filed in Oneida Indian Nation of New York State, et
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`al. v. State of New York, et al., Civ. No. 74-CV-187 (N.D.N.Y) (emphasis added).
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`6
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`Case 5:17-cv-00913-MAD-TWD Document 1 Filed 08/17/17 Page 7 of 32
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`B.
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`The Department’s Prior Decisions to Recognize Distinctly Named Tribes:
`Oneida Tribe of Indians of Wisconsin and Oneida Nation of New York
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`20.
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`For decades, the Department officially recognized and distinctly named an
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`“Oneida Nation of New York” and an “Oneida Tribe of Indians of Wisconsin,” using appropriate
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`words to distinguish the “Tribe” in “Wisconsin” from the “Nation” in “New York.”
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`21.
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`After passage of the Indian Reorganization Act of June 18, 1934 (“the IRA”), 48
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`Stat. 984, the Department conducted separate tribal elections to determine whether either tribe
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`wanted to reorganize under the IRA. The Nation voted to retain its traditional government in
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`New York and not to reorganize or to have a written constitution. The Wisconsin tribe voted to
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`reorganize in Wisconsin with an elective form of government, specifying its name as “Oneida
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`Tribe of Indians of Wisconsin” in a written constitution that required and received formal
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`approval by the Department.
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`22.
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`In 1979, the Department began to periodically publish in the Federal Register a
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`list of all federally recognized Indian tribes. The list establishes – for other federal agencies and
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`the public and for the purpose of federal law – which Indian tribes are recognized by the United
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`States and the name by which the United States officially recognizes them.
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`23.
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`Since 1994, pursuant to the 1994 List Act, the Secretary of the Interior has been
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`required to annually publish that Federal Register list. 25 U.S.C. § 5131(b), Federally
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`Recognized Indian Tribe List Act of 1994 (“List Act”), Pub. L. No. 103-454, 108 Stat. 4791
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`(Nov. 2, 1994). The annual list must be “accurate,” and its publication is a function of the “trust
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`responsibility” of the United States to Indian tribes and of federal respect for “the sovereignty of
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`those tribes.” Pub. L. No. 103-454 § 103(2) & (7). The List Act was Congress’ response to,
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`among other things, actions of the Department taken “capriciously and improperly” with respect
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`to withdrawal of recognition of tribes and tribal leaders. H.R. Rep. No. 103-781, at 4 (1994).
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`7
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`Case 5:17-cv-00913-MAD-TWD Document 1 Filed 08/17/17 Page 8 of 32
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`That “disturbing tendency in the Department” involved the Nation in particular. Congress
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`specifically criticized the Department’s “unilateral[]” decision to recognize a new government
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`“of the Oneida Nation of New York last year [1993] without consulting, notifying or discussing
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`the decision with the Oneida Nation or its leaders,” a decision reversed after “active intercession
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`by members of the House.” Id. (emphasis added). Note especially Congress’ interchangeable
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`use of the names Oneida Nation and Oneida Nation of New York.
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`24.
`
`In all of the lists published from 1979 through passage of the 1994 List Act and
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`then from passage of the Act through January 29, 2016, the Department used geographic
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`designations and the names “Nation” and “Tribe” to distinguish the “Oneida Nation of New
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`York” and the “Oneida Tribe of Indians of Wisconsin.”
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`a. The Nation was listed as “Oneida Nation of New York.” See 44 Fed. Reg.
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`7235, 7236 (Feb. 6, 1979); 47 Fed. Reg. 53130, 53132 (Nov. 24, 1982); 53
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`Fed. Reg. 52829, 52831 (Dec. 29, 1988); 58 Fed. Reg. 54364, 54367 (Oct. 21,
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`1993); 60 Fed. Reg. 9250, 9253 (Feb. 16, 1995); 61 Fed. Reg. 58211, 58213
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`(Nov. 13, 1996); 62 Fed. Reg. 55270, 55272 (Oct. 23, 1997); 63 Fed. Reg.
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`71941, 71943 (Dec. 30, 1998); 65 Fed. Reg. 13298, 13300 (Mar. 13, 2000); 67
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`Fed. Reg. 46328, 46330 (July 12, 2002); 68 Fed. Reg. 68180, 68182 (Dec. 5,
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`2003); 70 Fed. Reg. 71194, 71196 (Nov. 25, 2005); 72 Fed. Reg. 13648,
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`13650 (Mar. 22, 2007); 73 Fed. Reg. 18553, 18555 (Apr. 4, 2008); 74 Fed.
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`Reg. 40218, 40220 (Aug. 11, 2009); 75 Fed. Reg. 60810, 60812 (Oct. 1,
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`2010); 77 Fed. Reg. 47868, 47870 (Aug. 10, 2012); 78 Fed. Reg. 26384,
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`26387 (May 6, 2013); 80 Fed. Reg. 1942, 1945 (Jan. 14, 2015); 81 Fed. Reg.
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`5019, 5022 (Jan. 29, 2016); 81 Fed. Reg. 26826, 26829 (May 4, 2016).
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`Case 5:17-cv-00913-MAD-TWD Document 1 Filed 08/17/17 Page 9 of 32
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`b. The Wisconsin tribe was listed by a name that always incorporated the
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`distinguishing words “Tribe” and “Wisconsin:” as “Oneida Tribe of
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`Wisconsin, Oneida Reservation, Wisconsin” in the 1979 list, 44 Fed. Reg.
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`7235 (Feb. 6, 1979); as “Oneida Tribe of Indians of Wisconsin, Oneida
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`Reservation, Wisconsin” in the 1982 list, 47 Fed. Reg. 53130, 53132 (Nov. 24,
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`1982); as “Oneida Tribe of Wisconsin” in the lists published between 1988
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`and 2000, 53 Fed. Reg. 52829, 52831 (Dec. 29, 1988); 58 Fed. Reg. 54364,
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`54367 (Oct. 21, 1993); 60 Fed. Reg. 9250, 9253 (Feb. 16, 1995); 61 Fed. Reg.
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`58211, 58213 (Nov. 13, 1996); 62 Fed. Reg. 55270, 55272 (Oct. 23, 1997); 63
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`Fed. Reg. 71941, 71943 (Dec. 30, 1998); 65 Fed. Reg. 13298, 13300 (Mar. 13,
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`2000); and as “Oneida Tribe of Indians of Wisconsin” in the lists published
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`between 2002 and January 29, 2016, 67 Fed. Reg. 46328, 46330 (July 12,
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`2002); 68 Fed. Reg. 68180, 68182 (Dec. 5, 2003); 70 Fed. Reg. 71194, 71196
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`(Nov. 25, 2005); 72 Fed. Reg. 13648, 13650 (Mar. 22, 2007); 73 Fed. Reg.
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`18553, 18555 (Apr. 4, 2008); 74 Fed. Reg. 40218, 40220 (Aug. 11, 2009); 75
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`Fed. Reg. 60810, 60812 (Oct. 1, 2010); 77 Fed. Reg. 47868, 47870 (Aug. 10,
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`2012); 78 Fed. Reg. 26384, 26387 (May 6, 2013); 80 Fed. Reg. 1942, 1945
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`(Jan. 14, 2015); 81 Fed. Reg. 5019, 5022 (Jan. 29, 2016).
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`25.
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`The Department’s use of the words “Tribe” and “Nation” with differentiating
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`geographic designations was consistent with the Department’s established practice to distinguish
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`Indian tribes that share historic roots. Numerous examples – like the Mississippi Band of
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`Choctaw and the Choctaw Nation of Oklahoma – are named in paragraph 10, above.
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`C.
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`Previous Efforts of the Wisconsin Tribe to Pass Itself Off in New York as the
`Nation
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`26.
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`Beginning in the 1990s, the Wisconsin tribe sought to interfere in Nation affairs
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`and to claim the Nation’s rights. For example, the Wisconsin tribe claimed an interest in
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`revenues from the Nation’s casino in New York, claimed rights in the Nation’s reservation in
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`New York, and asserted the power to settle the Nation’s land claim against the State of New York
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`(then pending in the Northern District of New York).
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`27.
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`The Wisconsin tribe also formed an entity that it named the “Oneida Preservation
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`Committee,” which was named and acted to materially mislead the public into believing it was a
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`Nation entity working in New York on behalf of the Nation. The Committee was headed by a
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`Wisconsin tribal official.
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`28.
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`By confusing the public, causing it to believe that the Committee was the Nation,
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`and then intensifying local hostility to the Nation by threatening the Nation’s non-Indian
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`neighbors with the loss of their lands, the Wisconsin tribe intended for the Committee to pressure
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`the Nation to settle its land claim case. The Committee flooded the area in and around the
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`Oneida reservation in central New York with adversarial mailings and radio ads, knowing that
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`references to Oneida, the Nation and Oneida Nation would be universally understood to refer to
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`the Nation. Specifically, the Committee:
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`a. used the tribal name “Oneida,” omitting any Wisconsin reference;
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`b. falsely stated in writing that “[t]he Oneida Preservation Committee is charged
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`by the Nation with working out a settlement that will not displace current
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`residents;”
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`c. used stationery with a logo that mimicked the Nation’s logo;
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`d. used stationery with “New York” printed on it and used a New York return
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`address and a New York postmark on mailings; and
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`e. stated in mailings that the committee spoke for “the Oneidas,” “the Oneida
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`people” and “the people of the Oneida Nation.”
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`29.
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`30.
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`After a mid-1994 mailing, the Nation filed suit to stop the impersonation.
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`The Committee settled by agreeing to a “JUDGMENT AND PERMANENT
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`CONSENT ORDER” that the court entered. The order applied to the Committee, its chair and
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`“all other persons acting under them or on their behalf” and requires them, among other things,
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`to use the following disclaimer in future documents and radio advertisements: “The Oneida
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`Preservation Committee is not affiliated with or approved by the Oneida Indian Nation of New
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`York.” The order required the disclaimer on any document or radio advertisement using the
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`terms: “Oneida Nation,” “Oneida Indian Nation,” “Oneida Preservation Committee,” “the
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`Oneida People,” “the Oneidas,” “the people of the Oneida Nation” and “the Oneida Indians.”
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`D.
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`The Wisconsin Tribe’s Subsequent Strategy to Misappropriate and Assume
`the Oneida Nation Name Nationally
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`31. More recently, the Wisconsin tribe sought to misappropriate the historic Oneida
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`Nation name and identity and to be something other than the Oneida Tribe of Indians of
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`Wisconsin. Misappropriating the historic Oneida Nation name and eliminating any reference to
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`Wisconsin is intended to convey the false message that the Oneida Nation actually left New York
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`and now resides in Wisconsin and that the Nation on its reservation in New York is an offshoot
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`of a true Oneida Nation that is located in Wisconsin. It also confuses the public and siphons
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`away the goodwill that the Nation has created in its business and governmental relations.
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`32.
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`The Wisconsin tribe wanted a federal imprimatur to be placed on the new name
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`and to have the United States change the name by which the United States officially recognizes
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`the Wisconsin tribe.
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`33.
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`To that end, on November 10, 2010, the Wisconsin tribe’s government passed a
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`resolution requesting that the Secretary of the Interior conduct a Secretarial election in which the
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`tribe’s members could vote to amend the tribe’s constitution in several ways, including changing
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`the tribal name from “Oneida Tribe of Indians of Wisconsin” to “Oneida Nation.” A Secretarial
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`election is a federal election conducted by the Secretary of the Interior pursuant to federal
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`regulations set forth in 25 C.F.R. Part 81. See 25 U.S.C. § 5123 (governs Secretarial approval of
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`amendment of tribal constitutions).
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`34.
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`By letter dated January 19, 2011, the Wisconsin tribe submitted the resolution to
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`the Midwest Regional Office of the BIA and sought a decision by the Department to conduct a
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`Secretarial election regarding the name change.
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`E.
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`The BIA Midwest Regional Office’s Decisions Approving a Secretarial
`Election Regarding the Name Change and Approving the Name Change
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`35.
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`By federal statute and regulation, at the times relevant here, the United States
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`acted in its role as trustee to Indian tribes in that it controlled the process of holding Secretarial
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`elections and amending tribal constitutions. The Department could not have approved the
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`Wisconsin tribe’s name-change amendment if it were found to be “contrary to applicable laws,”
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`which are defined to include federal statutes, federal common law and executive orders. 25
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`U.S.C. § 5123 (c)-(d) (statute governing Secretarial elections); Pub. L. 100-581, § 102 (Nov. 1,
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`1988); 25 C.F.R. Part 81; see also 80 Fed. Reg. 63094 (Oct. 19, 2015) (recent amendments to
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`regulations, effective Nov. 18, 2015, permitting tribes to amend constitutions to remove
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`requirement that the Department approve subsequent amendments). The federal statute
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`governing Secretarial elections contains an explicit requirement of non-discrimination by the
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`Department as to federally recognized Indian tribes, a requirement that incorporates the general
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`duty as trustee among multiple beneficiaries. 25 U.S.C. § 5123(f)-(g).
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`36.
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`By letter dated October 11, 2011 (Exhibit A to this complaint), the Midwest
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`Regional Office advised the Wisconsin tribe that “[n]one of the proposed amendments appear to
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`be contrary to law” and that “a secretarial election can proceed.” Ex. A, at 1 & 5. The letter
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`provided no explanation or other analysis and did not identify any law or legal principle under
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`which the name-change amendment had been evaluated. Incredibly, the letter described the
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`harm the proposed name change would cause the Nation and others but yielded any
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`responsibility to consider that harm to the Wisconsin tribe, merely offering “comments . . . for
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`consideration by the Oneida Tribe:”
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`A concern is that the name “Oneida Tribe of Indians of Wisconsin” has a long
`history including the reorganization under the Indian Reorganization Act.
`Changing the name will cause confusion for a number of entities engaged in
`business with the Oneida Tribe as well as other governments. Compounding this
`difficulty will be the name of the tribe in the state of New York, called the
`“Oneida Nation of New York”. While the two names would not be exactly the
`same they are close enough so that they will undoubtedly be confused more often
`than they are now. The Oneida Nation of New York is often referred to as the
`Oneida Indian Nation, including some self-determination contracts with the
`Bureau of Indian Affairs, which will compound the existing confusion over this
`matter.
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`Id. at 2 (emphasis added).
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`37.
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`The Midwest Regional Office’s letter indicated no consideration of, or even
`
`awareness that the law governing its decision included, among other things, the Department’s
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`trust obligations to the Nation imposed by federal common law and explicitly recognized in
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`federal statutes. Nor did the Department acknowledge or consider its obligation under 25 U.S.C.
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`§ 5123(f) not to enhance or diminish any tribe’s legal rights when making any decision, and did
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`not acknowledge or consider established agency practice to use geograp