logo
logo
logo
MENU
Danielle M. DeFilippis
Member
Danielle M. DeFilippis
Visit Profile

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?

Share
Related Posts
The Time Has Come for Trademark Modernization Act Regulations
Belmora Petitions for Supreme Court Review of FLANAX Decision
Food and Liquor Brands: What You Need to Know About Trademarks
Danielle M. DeFilippis
Member
Danielle M. DeFilippis
Visit Profile
Related Posts
The Time Has Come for Trademark Modernization Act Regulations
Belmora Petitions for Supreme Court Review of FLANAX Decision
Food and Liquor Brands: What You Need to Know About Trademarks
Share
Join our growing team
We are looking for quality attorneys to help us do more for our clients. At Norris McLaughlin, each attorney has the same opportunity to succeed whether you’re at the beginning of a career or pinnacle of the profession.
Subscribe to our content
Receive timely legal information
delivered to your inbox
Subscribe to our content
Receive timely legal information
delivered to your inbox
© 2021, Norris McLaughlin, P.A., All Rights Reserved. Attorney Advertising.
Meritas

We use cookies to ensure that we give you the best experience on our website. If you continue to use this site we will assume you consent to our cookie policy. Learn more