Alfwear, Inc. v. Mast-Jägermeister US, Inc.
| Decision Date | 03 February 2021 |
| Docket Number | Case No. 2:12-cv-00936-TC-DBP |
| Parties | ALFWEAR, INC., Plaintiff, v. MAST-JÄGERMEISTER US, INC. Defendant. |
| Court | U.S. District Court — District of Utah |
Plaintiff Alfwear, Inc. (Alfwear) brought this suit against Defendant Mast-Jägermeister US, Inc. (Mast-Jägermeister) for federal trademark infringement, dilution, and unfair competition under federal and common law. Alfwear owns the trademark "KÜHL," which it uses in connection with its outdoor clothing brand. Mast-Jägermeister uses the word KÜHL in advertisements for its German liqueur.
Factual discovery is now complete, and Mast-Jägermeister moves the court for summary judgment on all four of Alfwear's claims. (ECF No. 127). For the following reasons, Mast-Jägermeister's motion for summary judgment is GRANTED.
The factual background is set forth at length in the parties' motions. See Def.'s Mot. to Dismiss (ECF No. 127); Pl.'s Opp'n Br. (ECF No. 170); Def.'s Reply Br. (ECF No. 214). The court repeats only those facts necessary to explain its decision. In light of the legal standard that governs summary judgment, the facts described below are either undisputed or based on evidence submitted as summary judgment exhibits and viewed in a light most favorable to the nonmoving party, Alfwear.
Alfwear is a Utah-based clothing company that manufactures and sells rugged outdoor apparel, such as fleece jackets and hiking pants. Alfwear sells clothes on its website and to retailers like REI and smaller outdoor gear shops. Alfwear owns the federally registered trademark KÜHL,1 which is the name of its clothing brand. It also uses KÜHL in connection with the sale of bottled water, wax, lip balm, mints, and posters. Alfwear's mark KÜHL is depicted on its website as follows:
Image materials not available for display.
Pl.'s Opp'n App. ("Opp'n App.") Ex. 5 (ECF No. 171-3).
Additionally, Alfwear acquired by assignment a federal trademark registration for KÜHL for use in connection with wine.2 Opp'n App. Ex. 58 (ECF No. 171-25). It has an active federal trademark application for KÜHL for use in connection with beer.3 Opp'n App. Ex. 43 (ECF No.171-16). But to date, Alfwear has not actually used KÜHL in connection with any alcoholic beverages. Def.'s App. Ex. 4 (Fay Dep.) at 116:22-117:1124 (ECF No. 127-12).
Mast-Jägermeister is the United States distributor of Jägermeister, a German herbal liqueur. Mast-Jägermeister sells its product to liquor distributors, that then sell it to liquor stores, bars, and restaurants where consumers purchase it.
In 2016, Mast-Jägermeister launched a rebranding campaign to reposition its brand from one associated with "pukey frat guys" and "college spring break parties" to something more sophisticated. Opp'n Br. at 19. As part of this marketing campaign, Mast-Jägermeister used the word KÜHL on billboards, in commercials, and as part of digital advertisements on the internet and social media.
Image materials not available for display.
Opp'n App. Ex. 30 at 1 (ECF No. 171-5); Ex. 31 at JAG000019 (ECF No. 171-6).
Most of Mast-Jägermeister's advertisements feature phrases like "DRINK IT ICE KÜHL, -18°C TO BE PRECISE," "ICE KÜHL," or "RUN TO A KÜHL SPOT." See Opp'n App. Ex. 30; 31. But a few advertisements use the word KÜHL alone. Opp'n Br. at 33; Opp'n App. Ex. 31 at JAG000052.
Although Alfwear's founder and Mast-Jägermeister's president met in person to try to resolve their trademark infringement concerns, they were unable to reach an agreement. SeeOpp'n App. Ex. 1 (Boyle Dep.) at 102:15-106:11 (ECF No. 174-1). Alfwear filed this lawsuit against Mast-Jägermeister on August 17, 2017. Compl. (ECF No. 2).
"The court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a). Tabor v. Hilti, Inc., 703 F.3d 1206, 1215 (10th Cir. 2013) (internal quotation omitted)).
"If the movant meets this initial burden, the burden then shifts to the nonmovant to set forth specific facts from which a rational trier of fact could find for the nonmovant." Talley v. Time, Inc., 923 F.3d 878, 893-94 (10th Cir. 2019) (internal quotation omitted). Should the nonmovant bear the burden of persuasion at trial, "[t]hese facts must establish, at a minimum, an inference of the presence of each element essential to the case." Id. (quoting Savant Homes, Inc. v. Collins, 809 F.3d 1133, 1137 (10th Cir. 2016)).
When evaluating a motion for summary judgment, the court must view the facts and draw all reasonable inferences in favor of the non-moving party. Tabor, 703 F.3d at 1215. But this is only true insofar as "there is a 'genuine' dispute as to those facts." Scott v. Harris, 550 U.S. 372, 380 (2007). "Where the record taken as a whole could not lead a rational trier of fact to find for the nonmoving party, there is no 'genuine issue for trial.'" Id. (quoting Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586-587 (1986)).
In moving for summary judgment on Alfwear's federal trademark infringement claim under 15 U.S.C. § 1114(1), Mast-Jägermeister makes two principal arguments. First, Mast-Jägermeister invokes 15 U.S.C. § 1115(b)(4)'s fair use defense, explaining that it does not employ KÜHL as a trademark or source identifier. Instead, it uses KÜHL to merely describe the proper temperature of its liqueur. Second, Mast-Jägermeister maintains that no reasonable juror could find a likelihood of confusion between the parties' marks.
For the reasons set forth below, the court agrees with Mast-Jägermeister that there is no likelihood of confusion. Because likelihood of confusion is required for Alfwear to prevail on its trademark infringement claim, its absence stops this case from continuing to trial regardless of whether Mast-Jägermeister can also assert a fair use defense.
A trademark is "any word, name, symbol, or device, or any combination thereof ... to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown." 15 U.S.C. § 1127. To prevail on a trademark infringement claim, a plaintiff must establish that (1) it has a legal right to a mark and (2) that the defendant's use of a similar mark is likely to generate consumer confusion in the marketplace.4 See Affliction Holdings, LLC v. Utah Vap or Smoke, LLC, 935 F.3d 1112, 1114 (10th Cir. 2019).
In the Tenth Circuit, "likelihood of confusion is a question of fact [ ] amenable to summary judgment." Sally Beauty Co. v. Beautyco, Inc., 304 F.3d 964, 972 (10th Cir. 2002). Summary judgment will be granted if "no reasonable juror could find likelihood of confusionbetween plaintiff's and defendants' marks." King of the Mountain Sports, Inc. v. Chrysler Corp., 185 F.3d 1084, 1093 (10th Cir. 1999).
In assessing whether there is a likelihood of confusion, the court considers the following, non-exhaustive list of factors:
(1) the degree of similarity between the marks;
(2) the intent of the alleged infringer in adopting its mark;
(3) evidence of actual confusion;
(4) similarity of products and manner of marketing;
(5) the degree of care likely to be exercised by purchasers; and
(6) the strength or weakness of the marks.
Sally Beauty Co., 304 F.3d at 972. Even though these factors are interrelated and no individual factor is dispositive, the degree of similarity is the most important factor. Id.; see also Team Tires Plus, Ltd. v. Tires Plus, Inc., 394 F.3d 831, 833 (10th Cir. 2005) ("At all times . . . the key inquiry is whether the consumer is likely to be deceived or confused by the similarity of the marks." (internal quotations omitted).
As discussed below, the majority of the factors demonstrate that there is no likelihood of confusion between the parties' use of KÜHL. Although the third factor—actual confusion—weighs slightly in favor of Alfwear, the remaining factors strongly support Mast-Jägermeister.
The degree of similarity between the parties' marks is tested on three levels: sight, sound, and meaning. King of the Mountain Sports, Inc., 185 F.3d at 1090. The marks' similarity is not measured in isolation. The court must also consider the "effect on marketplace presentation, including lettering style and logos, the placement of words within the marks, the item on whichthe marks were placed, and the meaning of the marks." Affliction Holdings, 935 F.3d at 1115 (internal quotes omitted). Beer Nuts, Inc. v. Clover Club Foods Co., 711 F.2d 934, 941 (10th Cir. 1983) (internal quotes omitted).
Accordingly, "a lower degree of similarity is required when the marks are placed on closely related goods." Affliction Holdings, 935 F.3d at 1114-15. If a consumer encounters two related goods within the same market, that consumer would likely be confused even if the marks were only slightly similar. Nautilus Grp., Inc. v. ICON Health & Fitness, Inc., 372 F.3d 1330, 1345 (Fed. Cir. 2004). "On the other hand, even if two marks are identical, if they are encountered in different contexts, the consumer can often easily distinguish between the two products." Id.
Alfwear argues that Mast-Jägermeister's use of KÜHL is identical to its own. Both marks consist of the word KÜHL in capital letters, with an umlaut, and in a similar font. See Opp'n Br. at 3. But...
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