The North Face and The South Butt Reach a Settlement
On April 9, 2010, The North Face Apparel Corp. settled its lawsuit against The South Butt, a company run by Jimmy Winkelmann, an 18-year-old college student at the University of Missouri-Columbia.
The South Butt sells T-shirts, fleece jackets, sweat shirts and backpacks with the tag line, “Never Stop Relaxing,” a parody of the North Face line, “Never Stop Exploring.” The South Butt’s logo features a half-dome with two ridges upside down, which, according to Winkelmann, are meant to infer butt cheeks. This logo is similar to The North Face logo that features a half-dome with three ridges, and both logos are red squares with white lettering and design. Winkelmann said his idea for The South Butt was born when he and his high school friends were poking fun at the kids at their private high school who satisfied their need to belong by buying the exact same North Face jackets and vests.
On August 14, 2009, a lawyer for The North Face wrote to Winkelmann that the companies’ logos are “similar enough to possibly cause consumer confusion as to the source, sponsorship or affiliation of particular problems and services that could dilute or tarnish the distinctive quality of the famous and distinctive TNFAC marks.” The North Face requested that Winkelmann cease the sale, production, and promotion of his product, and also to drop his trademark application for The South Butt mark and logo.
Winkelmann’s attorney disagreed with The North Face’s posture that The South Butt would give rise to confusion, and said that The South Butt’s sense of parody only distinguishes itself from any of The North Face’s products.
The settlement agreement was entered on April 9 in U.S District Court in St. Louis. The terms of the agreement were not disclosed, but the South Butt is still offering its products on its website.
By Jeesun Kim