If you’ve been paying attention on the trademark litigation front, you may have heard that The North Face recently brought a lawsuit against a freshman at the University of Missouri, Jimmy Winkelman, who has been selling clothing under the name The South Butt. Aside from the obvious trademark question of whether the consuming public is, as Jimmy’s attorney stated, "insightful enough to know the difference between a face and a butt," there are a couple other issues (unrelated to each other) that piqued my curiosity.
First, it appears that The North Face has included a claim for trademark dilution. For the uninitiated, trademark dilution is a different claim which, unlike a general claim for infringement, does not require consumer confusion. Rather, it requires the diminishing of a "famous" mark’s ability to serve as an indicator of source through "tarnishing" or "blurring." A classic example of tarnishment is the case of Moseley v. V Secret Catalogue, Inc., where Victoria’s Secret sued an individual, named Victor Moseley, who was operating an adult store under the name Victor’s Little Secret. The theory was that even if the consuming public would not be confused by Victor’s Little Secret, it damaged Victoria’s Secret because it essentially cheapened their trademark. So too here. Even if people can tell the difference between a face and a butt, the damage may still exist because The South Face will case people to associate The North Face with a butt. Notably, successful claims for dilution are rare, frequently because the "famous mark" hurdle is difficult to clear and "blurring" and "tarnishing" are difficult concepts for a court to address. To me, it’s uncertain whether The North Face can meet the "famous" requirement and whether dilution could be shown. I’d like to see how the dilution claim would play out, but I doubt we will get that chance.
Second, I can see this case turning into an absolute nightmare for The North Face from a public relations standpoint. Apparently, little Jimmy is a college freshman who started The South Butt to help pay for school. This has all the makings of a classic David versus Goliath story where the public perception will end up being that The North Face is just a giant greedy corporation that can’t take a joke and wants to beat up on a little guy. (The last I heard, The South Butt’s revenue was hovering around $5000.) While I’m not particularly knowledgeable about The North Face’s target demographic, it seems like this wouldn’t play well with a lot of them. This brings us to a teaching point: While diligence is important in protecting your brand, so is thoughtful contemplation about your enforcement actions. It’s important to weigh the risks of doing nothing (which can sometimes be very substantial), with the risks of engaging in very public litigation with a sympathetic adversary. Here, I think The North Face could have taken a more thoughtful approach than suing a poor college freshman named Jimmy right in the midst of the holiday shopping season.