The North Face Moves for Contempt Against "THE SOUTH BUTT" Defendants Over New Trademark "THE BUTT FACE"

Foley Hoag LLP - Trademark, Copyright & Unfair Competition

Readers of this blog might remember our previous coverage of the 2010 trademark dispute between The North Face Apparel Corp. and The South Butt, LLC. The defendants in that case adopted the trademark THE SOUTH BUTT for clothing that resembled the style of clothing sold under the well-known mark THE NORTH FACE. According to the Complaint, South Butt repeatedly attempted to register THE SOUTH BUTT as a trademark and offered to sell its business to The North Face for $1 million. For its part, South Butt claimed that its use of THE SOUTH BUTT and the tagline NEVER STOP RELAXING (a play on The North Face’s tagline NEVER STOP EXPLORING) was protected parody.

The parties entered into a Consent Injunction in April of 2010, which prohibited South Butt and its principals from “using, without the express written permission of The North Face, any of the THE NORTH FACE Trademarks, or any other designation that is confusingly similar to any of the THE NORTH FACE Trademarks, including, but not limited to the THE SOUTH BUTT Trademarks, in any manner as to be likely to dilute, cause confusion, deception or mistake,” from “diluting and infringing the THE NORTH FACE Trademarks, and damaging The North Face’s goodwill,” and from “otherwise competing unfairly with The North Face in any manner.”

The North Face recently filed a motion for contempt against the defendants, alleging that the principals of South Butt are now selling T-shirts, caps and sweatshirts under the trademark THE BUTT FACE, and are using the tagline NEVER STOP SMILING. The North Face has requested expedited consideration of its motion, on the grounds that “the Winkelmanns used the original lawsuit as a lucrative marketing device to promote sales of their infringing products through a media blitz. We assume they will attempt to same here. Thus the sooner this matter is heard and resolved, the better.”

The motion papers make for an interesting read. The memorandum paints a rather unflattering picture of the father-and-son team who are the principals of South Butt, based on the father’s testimony earlier in the case:

"While Winkelmann, Sr. admitted he was running the business, he described how he kept Winkelmann, Jr. involved to drive sales and to further the David & Goliath story – make it a “19 year old versus North Face.” … On receiving the initial letter from The North Face requesting that TSB desist from infringing on THE NORTH FACE Trademarks, Winkelmann, Sr. explained that he did two things: (1) he added a multitude of new products to meet the expected increased demand; and (2) rather than engage “litigation counsel,” he retained Albert Watkins for purposes of managing publicity."

This stands in rather stark contrast to South Butt’s Answer, which identified the son, Jimmy Winkelmann, as the person behind the company and characterized him as a "cherubic teenager, budding entrepreneur and college freshman from the heartland of America" who "founded his company with parodic respect for Plaintiff." Such tongue-in-cheek characterizations were peppered throughout the defendants’ papers prior to the entry of the Consent Injunction, to the obvious annoyance of The North Face (and, it seemed at times, the judge). The North Face is obviously getting ahead of that issue this time.

The motion papers allege that the Winkelmanns formed a new company, Why Climb Mountains, LLC, just two days after the entry of the Consent Injunction and immediately began making plans to use and register THE BUTT FACE as a substitute for THE SOUTH BUTT in direct violation of the Consent Injunction. The North Face commissioned a consumer survey, described in the declaration of well-known survey expert Gerald Ford, showing that approximately 35% of respondents identified The North Face as being associated with THE BUTT FACE when shown an example of the defendants’ T-shirts.

It will be interesting to see how Judge Sippel responds to the contempt motion. He has already scheduled a status conference with the parties’ counsel on August 14 to discuss the pending motion in chambers – which generally means off the record.

It will also be interesting to see whether the Winkelmanns will enjoy any favorable publicity regarding their latest adventure. Some people don’t find a joke funny the second time around, and the potential consequences of violating a court order are extremely serious. Stay tuned.


DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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