The North Face executives are not Ass Men.

St. Louis – The North Face made good on its threat to sue The South Butt.  The international apparel maker filed a federal lawsuit in St. Louis late last week alleging trademark infringement by The South Butt, a Ladue-based company started by a teenager to make fun of The North Face name.  The South Butt does not appear to be backing down from the fight. “We embrace the litigation,” said St. Louis attorney Al Watkins, who represents The South Butt.  This long-simmering dispute between the two companies first made a splash two months ago. An attorney for The North Face sent a letter to The South Butt demanding it stop selling its T-shirts, fleeces and shorts. The South Butt refused – and then publicized the letter. Attention followed, and sales spiked, Watkins said.

You know why it sucks going to law school?  Because I just spent a week and a half studying religiously for an Intellectual Property exam I’ll probably get a B on.  And as a result, instead of coming up with a quick one-liner after reading this article, all I could think about was the impending trademark infringement suit.

First, South Butt will try to overcome a likelihood of confusion test by stating that no consumer would mistakenly buy a South Butt article over a North Face article of clothing.  In the story above, they compared the two products as a Lacoste shirt and a shirt with a tiger on it.  I disagree somewhat.  The news story includes a picture of the South Butt trademark, and all the company did was flip the exact North Face symbol upside down.  At first glance, I didn’t even notice they flipped it.  I think North Face would be favored slightly on a likelihood of confusion analysis.  However, South Butt does have a good chance at “cracking” into parody territory.  South Butt is a spoof of the North Face trademark, and the clear parodic nature of their use helps negate confusion significantly.  The parody should be analyzed like any other trademark problem, so South Butt would still have to overcome the fact their mark only inverts North Face’s upward curves.  The ultimate deciding factor could be consideration of whether SB’s mark is immoral or scandalous under Lanham Act 1052(a).  The mark name is somewhat vulgar or sexually suggestive.  Courts will often stretch to find a likelihood of confusion because of their fear of reputational harm to the trademark owner.  The South Butt use is certainly not as vulgar as the “Debbie Does Dallas” adult film’s use of the Dallas Cowboy cheerleader uniform trade dress, but it may be enough of a nudge to make the court find in favor of North Face.  North Face might also try to argue dilution because it could be considered a famous mark nation-wide, especially in areas that have changing seasons.  It’s still no Nike, though.  It is noted that parody is still an acceptable dilution defense, but it is quite possible that “South Butt” could fall into the “vulgar” exception.  This case is well-balanced, though I have a hunch South Butt will win based on a parody argument.