The Jägermeister liqueur company is asking a court to stop a clothing company from messing with its cool, or more precisely, its “kühl.”
Mast-Jägermeister US Inc., based in White Plains, sued Alfwear Inc. of West Murray, Utah, on Jan. 22 in federal court to declare the clothing company”™s KÃœHL trademark invalid.
A trademark should not be used, Jägermeister argues, to prevent a subsidiary of a German company from selling a product with a German name that uses a common German word to describe and advertise itself.
Alfwear, founded in 1986, is known for rugged outdoor clothing and accessories. It owns ten “KÃœHL” trademarks for clothing, bags, breath mints, coffee, fabrics and water bottles.
Alfwear conducts business as KÜHL Clothing, and it has vigorously protected its trademarks, filing 11 infringement cases since 2012, according to the complaint, including a $400 million claim in 2017 against Jägermeister. The trial is set for September in Salt Lake City federal court.
The liqueur company wants federal court in White Plains to stop Alfwear”™s “baseless litigation war.”
Doing so would protect the public interest, Jägermeister asserts, “because an injunction will prevent further harm to other market participants who attempt to use a merely descriptive word to conduct and advertise their businesses.”
The German “kühl” means cool, as in temperature, the complaint states. It is not slang for hip or popular.
Jägermeister says it does not use “kühl” in the way of a trademark. Rather, it uses it as a description in advertising, as in “kühl as ice” or “drink it ice kühl.”
Alfwear”™s website defines “kühl” as “cool” in English, and “fun” in Scandinavian slang.
But Alfwear”™s “kühl,” Jägermeister argues, has little or nothing to do with temperature or with the German language.
Nor is there potential for confusing consumers, Jägermeister states, or for diluting or tarnishing Alfwear”™s trademarks.
Their products are “entirely distinct” in appearance, use, price and market availability, the complaint states.
Jägermeister says its use of “kühl” qualifies as “descriptive fair use” under trademark law.
Jägermeister is asking the court to declare that it has not infringed on a valid trademark and to permanently bar Alfwear from taking any legal action against the liqueur company for use of “kühl.”
Alfwear did not respond to email messages asking for its side of the story, and a customer service representative charged with handling urgent matters declined to transfer a phone call to anyone in the company.
Jägermeister is represented by Manhattan attorneys Craig J. Mariam and Ronald Giller.
Jägermeister ”“ “Master Hunter” ”“ is a herbal liqueur based on a secret recipe of 56 ingredients, plus water, alcohol and sugar, concocted in Germany in 1934.
The liqueur was brought to the U.S. in 1975 by New Rochelle importer Sidney Frank. In 2015, Mast – Jägermeister bought out Sidney Frank Importing Co. and established its U.S. subsidiary.
