SALT LAKE CITY — U.S. District Judge David Barlow granted Alfwear, Inc.’s motion for a permanent injunction against KulKote LLC and its principals on Monday, rejecting the defendants’ argument that a zero-damages verdict precluded equitable relief.
The jury had found that KulKote infringed Alfwear’s “KÜHL” trademark by using the “KülKōte” mark and engaged in unfair competition, but concluded Alfwear failed to prove it suffered actual monetary harm.
Defendants argued the verdict rebutted the statutory presumption of irreparable harm, citing an unpublished California case where a court denied an injunction after a similar no-damages finding.
Barlow dismissed the California precedent as “factually inapposite” because that jury did not find willful infringement and the ruling predated the Trademark Modernization Act’s codification of the presumption.
“The court concludes that the jury’s refusal to award damages here does not rebut the presumption of irreparable harm,” Barlow wrote.
Even without the presumption, the judge found the factor favored Alfwear, noting that the jury’s willfulness finding suggested credibility issues with the defendants’ testimony about their intent to enter the clothing market.
Defendants claimed they had ceased infringement by shutting down their consumer-facing website and removing footwear promotions, arguing the case was moot.
Barlow rejected this, stating that voluntary cessation does not moot a case unless it is “absolutely clear the allegedly wrongful behavior could not reasonably be expected to recur.”
The judge also narrowed the scope of the injunction, striking provisions that would have barred use of the “KÜHL” marks or any variation containing the letters “KUL,” as the jury only found confusion regarding the specific “KülKōte” marks presented at trial.
The injunction will bar KulKote, its certified partners, and related third parties from using the KülKōte marks in consumer advertising, social media, and public events.
Barlow declined to require Defendants to file compliance reports, finding no evidence they were likely to violate the order.