by Jason Fischer

Clothing producer, The North Face (TNF), recently got a lesson in how bad trademark enforcement decisions can make a company look silly.  It seems a St. Louis teen thought that it would be amusing to create a clothing line parody, calling it “The South Butt,” — south being the logical opposite of north and butt being… well… you get the idea.  TNF was not amused, however, and they set their attorneys to attack mode, sending a cease and desist letter to the college freshman (source).

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.

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