Trademarks & Parodies: The North Face versus The South Butt

Parody has been an effective tool used for centuries by comedians and social commentators to poke fun at well-known celebrities, politicians and institutions through mimicry. But when someone mimics a trademark, when does it cross the line from parody to trademark infringement?

According to North Face Apparel Corp., manufacturers of outdoor


equipment and apparel that bear The North Face logo, a teenager in suburban St. Louis has crossed that line. On December 10, 2009, North Face filed suit against James A. Winkelmann, Jr. for “marketing apparel that directly and unabashedly infringes and dilutes The North Face’s famous trademarks.”  Winkelmann, through his limited liability company and website, as well as a chain of local pharmacies, has been selling outdoor apparel similar to that of The North Face under the trademark “The South Butt.”  The word mark, along with a similar (albeit inverted) logo, is an obvious spoof on the more famous mark.  Winkelmann is even using a parody of the North Face slogan, “Don’t Stop Exploring.”  Winkelmann’s slogan: “Don’t Stop Relaxing.”  In an attempt to emphasize the humuorous nature of his brand, Winkelmann has included the following disclaimer on his website: “If you are unable to discern the difference between a face and a butt, we encourage you to buy North Face products.”

But there has been no smile on The North Face. In its complaint against Winkelmann, The South Butt, LLC and Williams Pharmacy, Inc., the outdoor apparel giant asserted that “[w]hile defendants may try to legitimize their piracy under the banner of parody, their own conduct belies that claim.”  Citing two attempts to federally register THE SOUTH BUTT and a proposal to sell the business to The North Face for $1 million (an offer which was later withdrawn in light of increased sales as a result of the publicity from the dispute), The North Face claimed it had no choice but to protect its famous brand and trademarks.

Where does the law stand on parody marks? The U.S. Trademark Manual of Examining Procedure (TMEP) acknowledges that there are “confusing parodies” and “non-confusing parodies,” but case law seems to favor the owner of the mark being parodied. In 1981, theTrademark Trial and Appeal Board (TTAB) held that the mark CLOTHES ENCOUNTERS was likely to be confused with CLOSE ENCOUNTERS OF THE THIRD KIND for men’s and women’s clothing, and in 1986, a U.S. District Court ruled in favor of Mutual of Omaha Insurance Company when an anti-nuclear activist sold t-shirts with the mark “Mutant of Omaha.”  In 2006, the TTAB held that LESSBUCKS COFFEE was confusingly similar to the more famous STARBUCKS COFFEE.  However, sometimes the parody mark is determined to be non-confusing.  In 1987 a U.S. Circuit Court of Appeals ruled that LARDASHE for pants was not an infringement of theJORDACHE mark.

So where does this leave The North Face and its southern counterpart? Trademark owners need to defend the often hard-earned good will associated with their marks against those who would trade off of that good will by using confusingly similar marks. There is also the problem of dilution famous marks if the good of the infringing party are of a lesser quality.

But there can also be a down side to taking legal action against an infringer, especially if there is a large disparity between the size and fame of the two parties. When a clothing Goliath like The North Face takes on a David in the field like The South Butt, the public often sides with David, creating a public relations nightmare for the larger company.  And there’s also the issue of free publicity for the alleged infringer.  The South Butt was a relatively unknown brand with primarily local sales prior to The North Face taking it on.  As a result of the national attention caused by the controversy, sales of The South Butt products have skyrocketed.

When protecting its trademarks, big companies like The North Face need to find a delicate balance between defending against unfair competition and being able to laugh at itself.

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