Here’s What Happened:

Alfwear Inc. sells outdoor clothing. In 1993, the company rebranded and started using the German word “kühl” meaning a cool temperature for its clothing line. Alfwear has used the trademark KÜHL ever since for its clothing and expanded related products like luggage, lip balm, mints, and posters. Alfwear also registered the word without the umlaut over the “u”. Alfwear acquired by assignment a federal trademark registration for KÜHL for use in connection with wine and has a pending federal trademark application for KÜHL for use in connection with beer.

Mast-Jaegermeister US, Inc. (“MJUS”) distributes a German herbal liqueur under the Jägermeister brand. In 2016, MJUS decided to distance itself from frat guys and spring break parties to remake its image as a premium brand. To highlight its German heritage, MJUS incorporated German words with easily understood English equivalents, such as “kühl,” “darke,” “perfekt,” “meister,” and “dekadent. MJUS's campaign featured the term “KÜHL” on billboards, in commercials, and in its digital advertising campaign, using the word in phrases like “KÜHL AS ICE” and “DRINK IT ICE KÜHL”.

In 2017, Alfwear sued MJUS for trademark infringement and unfair competition.

The district court granted MJUS’ motion for summary judgement finding that there was little likelihood of confusion.

Alfwear appealed to the Tenth Circuit Court of Appeals. Alfwear argued that MJUS was using the same exact word and therefore consumers were likely to be confused. The Tenth Circuit didn’t see it that way.

The Tenth Circuit found that MJUS only used “kühl” in association with other MJUS marks. The Court explained that Alfwear often depicts the KÜHL mark alongside a logo of a shield-type shape containing a stylized, snow-covered mountain peak in the colors brown, black and white against a bright blue sky. In contrast, MJUS uses the word “kühl” in phrases such as “kühl shots” or “kühl as ice,” on top of a black or green background and accompanied by a combination of either the mark JÄGERMEISTER, the Jägermeister logo or images of a Jägermeister bottle.

The Court found that MJUS did not intend to copy Alfwear’s mark. Once MJUS became aware of Alfwear’s mark, it was careful not to use the word on its apparel or liquor products.

The Court also determined that there was insufficient evidence of actual confusion. Alfwear executives heard about confusion. But that wasn’t enough. Alfwear’s survey evidence didn’t help because the survey participants weren’t shown the marks as they appeared in the marketplace and the survey contained leading questions.  

The Court also found that the two products were not similar. The consumers exercised a higher degree of care when purchasing Alfwear’s expensive apparel products as opposed to MJUS’s alcohol products.

The Court affirmed the summary judgment.

WHY YOU SHOULD KNOW THIS:  Here we have the use of an identical word. But the two parties used the words in different ways. Alfwear was actually using it as a brand name. MJUS included it in a larger ad campaign designed to update its image. However, it’s always risky to use the exact trademark that someone else is already using; even if it’s in a different way for a different product.

Case Information: Alfwear, Inc. v. Mast-Jaegermeister US, Inc., No. 21-4029, 2023 WL 5765891 (10th Cir. Sept. 7, 2023)

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