TNF’s letter asserted that use of the “South Butt” logo (pictured below) constitutes an infringement of their own federally registered trademark (pictured above).  On its face, TNF’s claim is not so unreasonable.  As any trademark owner (who has a decent attorney) can tell you, trademark rights can be lost if you don’t enforce them.  TNF must, in order to maintain its ability to sue legitimate infringers, actively look for unauthorized uses of its logo.  However, owning federal trademark rights does not mean you can stop every use of your mark that you don’t like.  Federal trademark law was created to prevent consumers from becoming confused about the source of goods, not give complete exclusionary rights in logos, words, and phrases.  It certainly wasn’t meant to give companies the power to stifle criticism — a point that corporate attorneys seem to frequently fail to explain to their clients.

In order to be actionable as an infringement, the South Butt logo must be likely to cause confusion in the minds of the consuming public.  In other words, if “a moron in a hurry” would not be able to tell the difference between these two logos, then TNF could conceivably stop South Butt from using their logo.  I think South Butt’s attorney states the issue with TNF’s claim pretty well:

I did try to explain with a great deal of candor to counsel for the North Face that the general public is aware of the difference between a face and a butt.  (source)

The irony is that, as many other companies have learned in the past, over enforcing your trademark rights can have the exact opposite effect from the one that you intended.  In this case, only a few people were even aware of the “South Butt” brand before TNF took any action.  Presumably, TNF wanted to suppress this innocent gibe at their popular brand, but instead, they only managed to boost web traffic at shop.thesouthbutt.com.

This story was originally published on The Tactical IP Blog.