The North Face vs. The South Butt: Entrepreneurial Teen Undaunted by Lawsuit Threat

Teen says he will not abandon company despite threats from retailer.

September 30, 2009, 12:19 PM

Oct. 1, 2009— -- A Missouri teenager frustrated with his classmates' sheep-like following of a popular clothing line came up with his own parody apparel and now faces a lawsuit for trademark infringement.

Jimmy Winkelmann said he has no intention of complying with the cease and desist request sent last month by lawyers for The North Face Apparel Corp., saying his 2-year-old business -- The South Butt LLC -- poses no threat to it.

"I was like, 'How did they even find me?'" Winkelmann said. "It was ridiculous."

The 18-year-old college student said local media coverage of the blossoming legal battle has dramatically increased sales of The South Butt T-shirts, fleece jackets and shorts, so much so that his entire inventory sold out this week within 24 hours.

In an Aug. 14 letter sent to Winkelmann's St. Louis-area home, Jordan LaVine, a lawyer for The North Face, wrote 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."

There are similarities: Both logos are red squares with white lettering and design. The North Face logo features a half-dome with three ridges. The South Butt logo shows a similar design, but upside down and with two ridges that Winkelmann confirmed are meant to infer butt cheeks.

The North Face has also taken issue with Winkelmann's online video for his business in which he instructs customers to "Never Stop Relaxing," which LaVine said is a direct rip-off of TNFAC's tagline, "Never Stop Exploring."

Not only has The North Face requested that Winkelmann cease sales, production and promotion of his product, but it has also asked him to drop his trademark application for The South Butt LLC and its logo.

Winkelmann's attorney Albert Watkins, who plays squash with his client's father and traded his services for a really good bottle of burgundy, responded to LaVine with a Sept. 10 letter in which he not only declined the company's request but told it that The South Butt should be considered flattery.

"I am compelled to respectfully disagree with the posture or assertion that 'The South Butt' would in any way give rise to confusion on the part of any person," Watkins wrote. "In fact, the sense of parody employed by Jimmy within the context of his South Butt undertakings clearly demonstrate a respectful, if not flattering 'anti-North Face' posture designed in all respects to distinguish itself from any and all North Face products."

The North Face Apparel Company issued a e-mail statement to today, saying the creation of a unique logo and brand identity should be based on integrity and strong ethics.

"The North Face is all for creativity, 'butt' we opposed Jimmy Winkelmann's logo in order to protect our famous trademark. And, just to be clear, we have not sued him," the statement read. "Like thousands of companies around the world, we work diligently to protect trademark rights. This situation is, in reality, a serious problem companies deal with every day. "

Owner of South Butt Not Worried About North Face Threats

Winkelmann, Watkins said, is not exactly the kind of teen corporate giants go after, saying he is "an 18-year-old who looks like he's 12.

"He doesn't even have enough money to buy beef in college," Watkins said. "What are you going to do?"

In his Sept. 10 letter to LaVine, Waktins, with Winkelmann's blessing, gave the company the opportunity to purchase The South Butt for $1 million, an offer that has since been withdrawn because of The North Face's lack of action.

He also suggested a non-binding mediation between the two companies and noted that his client has nothing to lose by "vigorously pursuing the American dream."

Winkelmann said his parents "are loving it."

"They're supporting me through it all," he said. "We really don't know what The North Face is going to do now."

Winkelmann said the idea for The South Butt was born a few years ago when he and his high school pals were poking fun at the kids at their private high school who satisfied their need to belong by buying the exact same jackets and vests.

"People thought it was so cool to wear The North Face fleeces," he said. "Everybody had to have them."

The term "South Butt" started as a joke, he said, and "then it just, like, escalated."

Winkelmann turned to his uncle, who owned a business printing marketing items like T-shirts and pens, for help in manufacturing the first South Butt T-shirts. He said the entire company was founded not to rip-off The North Face, but to get people thinking about the alternatives.

He started with an online business and then began selling them at Ladue Pharmacy in St. Louis. Ladue's owner now acts as Winkelmann's sales manager and makes a small salary based on commission.

Seeing the burgeoning company as a way to help his parents -- who had experienced some financial hardship in the weakened economy -- pay for his college tuition, Winkelmann went a step farther.

In 2007, The South Butt was incorporated with the state of Missouri, with the help of Winkelmann's stockbroker father.

Ire From The North Face Helps The South Butt Profit

Winkelmann said he turned a profit of about $4,000 the first year, most of which went back into inventory. In the past year, he estimated that he has pocketed about $2,000, which has gone toward his education at the University of Missouri, where he is studying biomedical engineering with a business minor.

The added attention The North Face letter has brought to The South Butt has only served to bolster Winkelmann's profits.

"I don't think I was really a threat to them," Winkelmann said, before reconsidering. "Now, I'll be a threat, maybe."

He estimated selling up to 200 items in the past couple years, but now he has sold that much -- if not more -- in the past day or so. He's now rushing to fill back orders and get new inventory manufactured.

The South Butt includes T-shirts, ladies' track shorts, both $19.99 each, and fleeces, which retail for $75.29.

Although some major companies have backed down with the mere threat of a lawsuit, Winkelmann said he will not be one of them.

If anything, Watkins said, further legal action by The North Face will only serve to "steel my client's resolve to stand up and fight."

While trademark infringement is a serious concern for major corporations, the giants don't always prevail in court.

Earlier this month, McDonald's lost its trademark infringement case against McCurry, a popular Malaysian fast food restaurant.

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