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October 2023

Intellectual Property Litigation Team Secures Win on Behalf of Liqueur Distributor in Trademark Infringement Lawsuit

Gordon Rees Scully Mansukhani Partners Craig Mariam and Hazel Pangan, with Partner Mark Nickel serving as local counsel, secured a win for Mast-Jaegermeister U.S., Inc., the distributor of the Jägermeister liqueur, in a trademark infringement and dilution action brought by Alfwear, Inc., a Utah-based manufacturer of outdoor clothing sold under the brand “KüHL.”

Alfwear sued Jägermeister over the use of the word “kühl,” German for “cool,” in an advertising campaign, alleging that Jägermeister infringed Alfwear’s trademark rights under the Lanham Act and violated Utah state law. Alfwear filed a preliminary injunction motion, to which the GRSM team prepared a fulsome response complete with trademark surveys showing the lack of consumer confusion and fame of the KÜHL mark. Alfwear withdrew its motion following receipt of Jägermeister’s opposition. 

GRSM then filed a motion for summary judgment, which the district court granted. The district court agreed with Jägermeister that no reasonable juror could find a likelihood of confusion from the parties’ respective uses of the word “kühl” because the parties’ products and sales channels did not overlap, the appearance of the word as used by the parties in the actual marketplace was highly dissimilar, there was no evidence of any intent to infringe by Jägermeister, and Alfwear failed to establish commercial strength and fame as a matter of law, among other reasons. Critical to the court’s finding were the flaws in Alfwear’s trademark survey, which, as argued by GRSM, failed to simulate actual marketplace conditions under which consumers would encounter the parties’ uses of the word. 

Alfwear appealed to the Tenth Circuit Court of Appeals. The appellate court, after oral argument, affirmed summary judgment, holding that the district court did not err in granting summary judgment on the lack of any likelihood of confusion. On appeal, the court analyzed each of the likelihood of confusion factors, largely adopting GRSM’s arguments that the district court faithfully applied each factor in concluding that there was no triable issue of fact on Alfwear’s claims. The case is Alfwear, Inc. v. Mast-Jaegermeister US, Inc., No. 21-4029, 2023 WL 5765891, at *1 (10th Cir. Sept. 7, 2023) (Holmes, Kelly, Carson, JJ.).

Craig J. Mariam
Mark A. Nickel
Hazel Mae B. Pangan