A Utah-based outdoor apparel maker wants L.L. Bean Inc. to take its new “Be an Outsider” ad campaign and put it back inside.

Alfwear Inc., which does business under the brand name Kühl, filed a complaint Monday against the Freeport-based L.L. Bean in a U.S. District Court in Utah, alleging that the outdoor retailer’s “Be an Outsider” campaign launched in July infringes on its own clothing trademark, “The Outsider.”

An L.L. Bean representative indicated that company officials say Alfwear’s complaint is without merit.

“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,” company spokeswoman Carolyn Beem said.

Beem declined to answer specific questions, saying the company has a policy of not commenting on pending litigation.

Alfwear is one of the largest privately held apparel brands in the outdoor industry, with over $200 million in annual retail sales in the U.S., the company said in a news release about the trademark complaint. The company sells roughly a million pairs of pants per year, including the popular style The Outsider, it said.

Alfwear’s complaint says the company holds a registered trademark for the words “The Outsider” with respect to “rugged outdoor clothing, including belts, bottoms, hats, jackets, pants, shirts, shorts, t-shirts, and tops.” According to the complaint, Alfwear’s trademark was registered on Aug. 1 of this year. It has been selling “The Outsider” clothing since “at least as early as June 22, 2015,” it says.

Alfwear’s complaint includes a copy of a cease-and-desist letter the company sent to L.L. Bean on Monday. The letter notes that L.L. Bean recently filed its own trademark application for the phrase “Be an Outsider,” and it implies that the Freeport retailer was aware that there might be a conflict with Alfwear’s trademark.

“If the … application was filed with the intent to protect this specific advertising campaign, it is unclear as to why it was filed for retail services rather than clothing, other than to knowingly circumvent Kühl’s trademark,” it says.

A prominent trademark attorney in Portland said that while the case is not a slam-dunk for L.L. Bean, the fact that the two “outsider” trademarks are being used in very different ways would seem to favor L.L. Bean.

“Kühl is using ‘The Outsider’ as a name for a specific model of pants,” said Jonathan Gelchinsky, partner and head of the trademark practice at the law firm Pierce Atwood, who is not representing L.L. Bean. “L.L. Bean is using it as a kind of a tagline for all its media.”

Gelchinsky said two trademarks do not have to be identical for a court to find that one has infringed upon the other, but he said “strong” trademarks such as “Exxon” or “Kodak” generally are entitled to stricter enforcement than “weak” trademarks that consist of common words describing how the products are to be used.

“My impression after reading this complaint is that we’re dealing with a trademark that is fairly narrow in its definition because it’s on the weaker side,” he said.

L.L. Bean’s “Be an Outsider” ad campaign, developed in partnership with Portland-based advertising firm The Via Agency, made national news in September when L.L. Bean ran a full-page insert in The New York Times containing text that is invisible while indoors but appears when exposed to sunlight.

J. Craig Anderson can be contacted at 791-6390 or at:

[email protected]

Twitter: jcraiganderson

Only subscribers are eligible to post comments. Please subscribe or to participate in the conversation. Here’s why.

Use the form below to reset your password. When you've submitted your account email, we will send an email with a reset code.

filed under: