IP Law Daily, TRADEMARK—D. Utah.: Court partially upholds trademark claims in KÜHL vs. IBKÜL outdoor clothing battle, (May 13, 2025)

By George Basharis, J.D.

A long-running dispute between outdoor clothing brands moves toward trial as the federal court allows infringement claims to proceed while dismissing dilution claims.

The U.S. District Court for the District of Utah has issued a split decision in the ongoing trademark dispute between outdoor clothing companies Alfwear, Inc. (owner of the KÜHL brand) and defendants IBKUL Corp. and IBCOOL, Inc. (Ibkul). The case, which began in 2021, centers on whether IBKÜL’s mark creates consumer confusion with Alfwear’s established KÜHL brand. The court’s ruling granted partial summary judgment to both parties and made critical determinations regarding expert testimony that will significantly impact the upcoming trial. The court concluded that while Alfwear’s trademark dilution claims must be dismissed, sufficient disputed material facts exist regarding potential consumer confusion to allow the trademark infringement claims to proceed to trial. This decision represents a partial victory for both companies in a contest between similarly named outdoor apparel brands competing in overlapping markets (Alfwear Inc. v. Ibkul Corp., No. 2:21-cv-00698-DBB-DBP (D. Utah. May. 12, 2025)).

Background of the dispute. Alfwear has been using the KÜHL mark for outdoor clothing since 1994, registering the trademark in 1996 for “rugged outdoor clothing” including jackets, shirts, pants, and other apparel items. The company selected the name because “KÜHL” is the German translation for “cool” and was intended to convey that its products were both fashionable and temperature-regulating.

Ibkul, which began as a women's clothing company called “Iccicles” in 2014, rebranded to IBKÜL in 2016 to highlight its cooling technology and expand into the men’s market. IBKÜL filed for trademark protection in September 2016 and began selling products under the IBKÜL mark in November 2016. The company maintains it first became aware of Alfwear and the KÜHL mark around October 31, 2016, after Alfwear opposed its trademark application.

This opposition led to proceedings before the Trademark Trial and Appeal Board, which in 2020 sustained Alfwear’s opposition on the grounds that the marks were likely to be confused. However, that decision was later vacated and remanded by the Federal Circuit in October 2021, shortly before Alfwear initiated the current lawsuit.

Expert testimony challenges. Both parties sought to exclude each other’s expert witnesses. Alfwear moved to exclude Ibkul’s expert, Krista F. Holt, while Ibkul moved to exclude Alfwear’s expert, Rhonda Harper.

The court partially granted Alfwear’s motion to exclude portions of Ms. Holt’s report. The court excluded several sections of Holt’s report, including those containing a “Fame Survey” that Holt had conducted for another defendant in a different case. The court found that Holt had not been properly disclosed as an affirmative expert witness on the issue of fame, but only as a rebuttal expert. The court also excluded Holt’s damages analysis as outside the scope of proper rebuttal testimony.

By contrast, the court denied Ibkul’s motion to exclude Ms. Harper’s testimony concerning consumer confusion. Despite Ibkul’s criticisms of Harper’s methodology, the court determined that these critiques went to the weight of the evidence rather than its admissibility and could be addressed during cross-examination at trial.

The court then issued several notable rulings on the parties’ competing motions for summary judgment.

Alfwear’s protectable interest. The court granted Alfwear’s motion for partial summary judgment regarding its ownership of a protectable interest in the KÜHL mark. The court determined that the KÜHL mark is incontestable under the Lanham Act, providing Alfwear with conclusive evidence of its right to use the mark. The court rejected Ibkul’s arguments that Alfwear had abandoned the mark or obtained it through fraud.

Ibkul’s affirmative defenses. The court also granted summary judgment to Alfwear on Ibkul’s fair use and statute of limitations affirmative defenses. The court found no evidence that Ibkul was using IBKÜL in a way other than as a trademark. It also determined that the Lanham Act does not have a specific statute of limitations, and Ibkul had not shown that Alfwear delayed in bringing its suit or demonstrated how it had been harmed by any delay.

However, the court denied Alfwear’s motion for summary judgment on Ibkul’s issue preclusion defense, finding that the elements for issue preclusion had been met regarding a previous determination that the KÜHL mark was not famous. This finding stemmed from the court’s analysis of a prior 2021 case where the district court previously evaluated the fame of the KÜHL mark in 2016 and determined that the mark did not qualify as “famous” at that time under the Lanham Act. The court noted that the issue was identical in both cases, particularly because the timeframe for measuring the KÜHL mark’s fame was precisely the same in both disputes. The court found all requirements for non-mutual offensive issue preclusion had been satisfied: the fame determination was essential to the judgment in the prior case, the matter had been fully litigated, Alfwear was the plaintiff in both actions, and there was no evident unfairness in applying the previous finding to the current litigation. This ruling effectively foreclosed Alfwear’s ability to pursue its dilution claim, as fame is a prerequisite element for such claims under federal trademark law.

Trademark infringement claims. The court denied Ibkul’s motion for summary judgment on Alfwear’s trademark infringement claims. Analyzing the six factors for likelihood of confusion, the court found that while four factors (evidence of actual confusion, strength of the contesting mark, intent of the alleged infringer, and degree of care) favored Ibkul, the remaining two factors (similarity of the marks and similarity of products/marketing) established a genuine dispute of material fact regarding potential consumer confusion.

The court noted that the products share substantial similarities: both companies sell athleisure and performance clothing with temperature-regulating features at similar price points and through some overlapping retail channels. Additionally, the marks both use a “K” and a “u” with an umlaut to spell a phonetic equivalent of “cool,” suggesting a similar meaning to consumers.

Trademark dilution claim. Finally, the court granted Ibkul summary judgment on Alfwear’s trademark dilution claim. Applying issue preclusion from the previous 2021 case, the court found that the KÜHL mark had already been determined not to be famous in 2016—the same period relevant to the current case. Because fame is a prerequisite for a dilution claim, and this issue had been fully litigated in the prior case, Alfwear’s dilution claim could not proceed.

The case will now go to trial on Alfwear’s remaining claims for federal trademark infringement, federal unfair competition, and common law unfair competition. The parties will need to focus their presentations on the disputed factors regarding likelihood of confusion, particularly the similarity of the marks and their products in the marketplace.

The Case is No. 2:21-cv-00698-DBB-DBP.

Judge: Barlow, D.

Attorneys: Trent Baker (Baker IP PLLC) for Alfwear Inc. Darren J. Quinn (Law Offices of Darren J. Quinn) for Ibkul Corp.

Companies: Alfwear Inc.; Ibkul Corp.

Cases: Trademark UtahNews