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Popular outdoor apparel brand L.L. Bean is being sued by Alfwear Inc. for using the word “outsider” in their advertising campaigns. The plaintiff claims L.L. Bean is intentionally misleading customers by infringing on Alfwear’s newly trademarked phrase.
Alfwear Inc. is the corporate name of KÜHL, one of the largest privately held outdoor apparel companies. In August 2017, Alfwear was granted a trademark for the slogan “The Outsider” on its “rugged outdoor clothing, namely, belts, bottoms, hats, jackets, pants, shirts, shorts, T-shirts, tops.”
KÜHL says since June 2015 they’ve been selling “The Outsider” pants, and have just now gotten around to trademarking the overall expression.
Registering this phrase means competitors can’t brand items as “The Outsider,” but does this stop any other company from using the term “outsider,” even in a campaign not specifically tied to a clothing item?
That’s up to the U.S. District Court in Utah, where the lawsuit was filed on Monday.
L.L. Bean’s campaign in this lawsuit includes the phrase ““Be An Outsider,” and has been featured in the The New York Times. The catchphrase also appears in the retail store’s services, apparel, and company manifesto.
Alfwear alleges this could confuse customers, who may “incorrectly conclude” that L.L. Bean’s “goods or services originate with, or are authorized by” KÜHL.
The lawsuit claims L.L. Bean is violating the Lanham Act, which is the primary governing statute for regulating trademarks and resulting unfair competition. Alfwear goes on to complain that L.L. Bean is intentionally misleading and deceiving customers.
In addition to the lawsuit, Alfwear sent a cease-and-desist letter, requesting removal of the phrase in all ads, publications, or websites.
Plot twist: L.L. Bean recently applied for a service mark on their “Be An Outsider” slogan with the U.S. Patent & Trademark office at the end of June. According to trademark lawyer Jonathan Gelchinsky, who is not representing either side, this could be a battle of “strong” versus “weak” trademarks.
For example, a trademark on a name like “Kodak” is much stronger than one on a common word, like “outsider.” KUHL’s trademark of “The Outsider” is specifically tied to their apparel line while L.L. Bean’s use of “outsider” is a brand-wide slogan.
This narrow definition may be in L.L. Bean’s favor.
According to L.L. Bean spokesperson Carolyn Beem, “We firmly believe we are well within our legal rights to use the call to action ‘Be an Outsider,’ and look forward to resolving this issue.” The company declined to comment further on the pending legislation. Stay gold, L.L. Bean, stay gold.
