North Face Sues to Police Trademark

Jimmy Winkleman Jr. is a 19 year old freshman at Missouri University who started a “leisure wear” company called The South Butt. The fleece wear products sold by The South Butt bear a striking resemblance with The North Face apparel, most especially the Denali Jacket.   The North Face thinks that the similarities between the two brands and products will cause confusion for the general consumer.  The South Butt founder, Jimmy Jr. points out however, that the general public is quite savvy and “capable of telling the difference between a butt and a face.” aba journal article Despite this ever so insightful remark by the founder, The North Face is not taking this lightly.  In December of 2009 The North Face filed suit against The South Butt in the U.S. District Court for the Eastern District of Missouri, alleging infringement, trademark dilution and unfair competition.

In my opinion, The North Face has a tough fight, but potentially a winning one.  It is good to see a large company like The North Face fighting this type of litigation.  With intellectual property (the brand generally speaking) being the most valuable asset a company has, it is imperative that these types of legal battles are fought.  Unless you enforce the trademark, you basically lose it.  Non-enforcement can in some cases be seen as permission to use the brand.  The dissolution of the brand due to non-enforcement of the trademark is sometimes referred to as genericide.

In their complaint they point out that the parody may try to give legitimacy to The South Butt’s company however their marketing “unabashedly infringes and dilutes The North Face’s trade dress…”  Upon getting to court, the Judge ordered that they mediate the issue.  On March 23rd, 2010, despite the slogan of The South Butt to “Never stop relaxing” (also a direct nod to The North Face’s “Never Stop Exploring” slogan) the mediation got extremely heated and a recess had to be called within minutes of beginning mediation. River Front Times

The North Face asserts that The South Butt may try a defense of parody, under the fair-use defense.  However, The South Butt’s actions are not consistent with simple parody; rather they are more characteristic of unfair competition.  They use the brand and image of The North Face to add legitimacy to their brand for the purpose as the founder states- purely to make a profit, not to comment on The North Face product.  Parody is a method to communicate a specific message or criticize and idea, not a method to turn a profit.  The other main question is whether The South Butt brand and marketing would cause confusion among consumers. The Lanham Act A cursory glance at The South Butt’s apparel shows that they are directly mimicking The North Face’s look and trade dress. A good example of what trade dress is and the factors courts use to identify infringement see General Motors Corp v Lanard Toys, 468 F.3d 405, 80 U.S.P.Q.2d 1608 (Fed. App. 2006).

The North Face Denali Jacket                                The South Butt “Denali Jacket”

It seems feasible that a consumer could see The South Butt brand and attribute it to The North Face.  The South Butt directly copied the iconic jacket that has set The North Face apart from other competitors.  More so, not out of the realm of imagination, an uninformed consumer could assume this is the leisure brand of The North Face.  The South Butt website’s flippant acknowledgement of The North Face (only recommending that if you cannot tell the difference between a butt and a face to purchase from The North Face) www.thesouthbutt.com does not adequately distance itself from The North Face brand.  The South Butt brand can easily, if not willfully cause confusion in the marketplace.  Looking to the trademark- it’s simply an inversion, just like the name.  While it is very easy, as the founder of The South Butt says to differentiate between a face and a butt their logo and placement thereof are exceedingly similar to The North Face’s.  Think about the last time you passed someone wearing a North Face jacket- what directions were the arches going?

The North Face “Legit” LogoThe South Face Logo

Once The North Face sent a cease and desist to The South Butt, their website hits and sales soared up to $100,000.  If it weren’t for the direct copying and even audacious attempts to trademark (twice!) The South Butt’s name and logo, then The North Face may not have had notice nor had to take legal action. River Front Times I have to wonder if this wasn’t just a plan to get notoriety, especially since Jimmy Jr. initially offered to sell The South Butt to The North Face for $1 million, until his sales started to increase.

While The North Face in all its corporate glory probably won’t be severely hurt by The South Butt’s presence, this is an exemplary case of the need to enforce trademarks.  This type of litigation not only protects and adds value to the trademark and the brand, but also deters would-be infringers from attempting the same business model as The South Butt.

Written by:Lauren Whiting, JD Candidate 2012

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