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

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

ByABC News
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. "