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North Face vs. South Butt: Is this the Start of a TM War?

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By Tanya Roth, Esq. on January 08, 2010 12:30 PM

Perhaps you've heard that the big 'Face is trying to kick a little Butt? That is correct, outdoor apparel giant North Face company has filed suit against indoor apparel dwarf, South Butt, a small clothing company started as a joke by college freshman Jimmy Winkelmann. The North Face is suing for trademark infringement and related causes of action based, at bottom (pun intended), on the idea that the simple American consumer would not be able to tell the two brands apart, and that North Face's brand would be damaged by South Butt, much to the financial detriment of North Face.

The irony of North Face's suit (well, one irony, there are almost too many to count) is that the brands are similar, in a very flattering way. In its Complaint, North Face gives a bit of company history, writing that the brand (by the way, now owned by a self styled "$7 billion-plus apparel powerhouse") was started by two simple hikers with a love of the outdoors and a dream. What the company won't condone is the University of Missouri student with the same dream. Oh, and a fairly similar jacket and tag line: Never Stop Relaxing. North Face itself prefers the line: Never Stop Exploring.

One way for North Face to win its suit, is to show that consumers are confused by the origin of the South Butt products and that this confusion is lessening the sales and harming the reputation of the holder of the valid trademark, North Face. There might be some very interesting evidence to be presented, should this fleece fight go to trial. Winkelmann, a most enterprising and entrepreneurial individual, has started a "South Butt Challenge App" on Facebook with the intent of asking consumers, 'can you tell the difference between a face and a butt?' It's clever, good PR, and if it throws up some real numbers, may put a damper on the North Face likelihood of confusion argument. 

Another claim that might give North Face a leg up is that of "tarnishment and dilution." To prevail, North Face must show that they have a "famous" mark and that the trademark is being "blurred" or "tarnished" by association with the South Butt goods. Blurring occurs when the trademark is linked to dissimilar goods, for example a North Face fax machine. Tarnishing occurs when the trademarked goods are cast in an "unflattering" light by association with inappropriate or inferior goods or services. That one just might work, depends how unflattering you find it to be compared with a butt.

And now back to the Butt, one defense to a claim of dilution is parody. Yes, in a side by side comparison the NF and SB products do look similar, but that is the point. Winkelmann, disgusted by the frantic need of his peers to fit in at his private high school by wearing North Face apparel, started the South Butt company as a parody and as a way to strike out on his own. Sound familiar North Face? As discussed in a post on Findlaw's Law and Daily Life, regarding a similar case, there may be a viable exception to trademark protection for a true parody.   

Unfortunately for North Face, their need to crush what they see as a threat by "competitor" South Butt has ironically (you knew there would be more) strengthened the popularity and market share of the Butt brand. To sum it up succinctly, as commenter Vince N. wrote on the South Butt website, "I'm buying a jacket just because now. I'd never heard of the South Butt until northern jerks sued." Well said, Vince.

Will it be the triumph of the little guy with the dream, or the large corporation who has already had their chance at success the American way? Stay tuned, a response to the Complaint will be due soon.

My friends, Never Stop Litigating!

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