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What Does it Mean to “Be An Outsider”?

Trademark Applicants Registration Filings - Survey Expert

Snow tubing with my family this weekend called to mind a trademark infringement case I read about while vacationing this past holiday season in Salt Lake City, Utah.  A local publication ran a story about a Utah-based apparel maker, KÜHL, filing suit against L.L. Bean over Bean’s recent ad campaign “Be An Outsider.”

In August 2017, KÜHL obtained a trademark registration for the mark “THE OUTSIDER” for “Rugged Outdoor Clothing, namely, Belts, Bottoms, Hats, Jackets, Pants, Shirts, Shorts, T-shirts, Tops.”  The lawsuit is pending in the United States District Court for the District of Utah.  The Complaint asserts that KÜHL has been using THE OUTSIDER mark since 2015 and that Bean’s “Be An Outsider” campaign promoting the sale of its apparel is an attempt to trade off the goodwill of KÜHL’s brand and is likely to cause confusion in the marketplace.  In its response to the Complaint, Bean challenges the validity of KÜHL’s trademark and also asserts that confusion is unlikely given the play on words with “Be An” referring to “BEAN”.  Interestingly, Bean is scheduled to open its first Utah store in Fall of this year, which will be the first store west of Colorado.

So what does it mean to “be an outsider”?  According to KÜHL’s website, the company’s passion is to have fun outdoors while following your own beliefs and desires.  THE OUTSIDER mark would then be a double entendre, invoking not just the sense of being in the outdoors but also individuality.  Bean’s “Be An Outsider” video advertisement (which can be found on its website and also YouTube®) invokes similar impressions.  Will there be confusion here?  What do you think?