BUTT OF THE JOKE

By Alexander JSW Johnson

As the cold weather draws near, I’m dipping into the archives to tell the tale (tail?) of a not-so-classy play on words made at the expense of North Face, a brand (debatably?) famous for cold weather gear to warm one’s buns.

If you haven’t gleaned it yet, this is an intellectual property article about butt jokes and the lessons that can be learned about taking a joke, or maybe taking one too far.

Fair warning, I can assure you that the cheeky puns in this piece are all intended.

Back in the mid-2000s, a St. Louis high schooler Jimmy Winkelmann Jr., came up with a cheeky play on North Face’s name as a silly joke: SOUTH BUTT. Winkelmann’s joke originated to make light of his classmates seemingly all purchasing and wearing NORTH FACE gear.

Eventually, the joke grew from a de minimis gluteus minimus to a sizable gluteus maximus; he formed South Butt, LLC and filed three U.S. applications¹ for the tushy trademarks from 2007–2009, including the design below.

South Butt’s rump had started a rumpus, but North Face did not wish to be the butt of the joke.

North Face opposed two of South Butt’s applications (one had seemingly slipped through the cracks on their watching efforts) and filed a federal lawsuit in December 2009 alleging trademark infringement (likelihood of confusion) and trademark dilution. A cold move when St. Louisan’s were preparing to freeze their tails off, even if Nelly’s Hot in Here was still on rotation in STL.

The case did not go far on the merits, reaching a settlement in April 2010. Though, Winkelmann seemingly did an about-face and launched THE BUTT FACE, a second joke product line that triggered contempt claims by North Face in 2012 which resulted in a consent judgment against Winkelmann.

Thus, no decision on North Face’s likelihood of confusion or dilution claims were ever reached.

Showing a likelihood of confusion would’ve required North Face to show that purchasers would believe an affiliation or sponsorship existed between the marks or that they referred to the same source.

But the joke was an obvious parody, right? So, would anyone have been confused?

​​​​​The Supreme Court ruled in 2023 that parody isn’t a viable defense when the parody is made via the mark itself (versus through ornamentation). So today, the joke would be on the jokester for the parody defense, it seems.

Even without parody as a viable defense, on the merits, it’s hard to see one confusing a FACE for a BUTT, particularly these polar-specific ones. However, North Face’s complaint went deeper than just the primary names, as North Face also asserted these registered trademarks:

                                   NEVER STOP EXPLORING (Reg. No. 2897197)

                                                                                                                               (Reg. No. 1030071)

South Butt incorporated both of those marks into its jokes, using the below online:

Still, the totally different wording could cut against finding confusion, because in their actual buying experience and subsequent encounters with the garments “in the wild,” consumers may view the design element as fungible. South Butt’s inverted design and punny tagline may only be perceived by would-be buyers as minor accents to the messages conveyed by the primary word marks—a South Side derriere (SOUTH BUTT) versus a North Side mug (NORTH FACE)—such that no confusion would be likely.

The truly compelling issue, in my opinion, was North Face’s dilution claim.

Dilution protects “famous” marks from third parties trading on the trademark owner’s goodwill. Critically, a party seeking a dilution claim does not have to show consumers would be confused.

However, dilution is only available for trademarks that are considered “famous”—those that are “widely recognized by the general consuming public … as a designation of source of the goods or services of the mark’s owner.” See 15 U.S.C. § 1125(c)(2). Said differently, famous means recognized even by non-purchasers; household names.

Is NORTH FACE famous under the Lanham Act? Seems probable. Would purchasers be buying SOUTH BUTT for its independent brand significance, or because of its comment on the famous brand it plays on? Seems the latter; and that would seem to be the kind of trading on goodwill of famous marks that dilution is meant to address.

The dilution case might have been a winner. We can only speculate.

We do not have to speculate, however, that a good brand joke may seem to have upside, but it could quickly have you knocked onto your backside.

¹U.S. Ser. Nos. 77840757, 77137920, and 77617979.

Alexander JSW Johnson is a pun-loving attorney at Fishman Stewart with more than a dozen years of extensive experience in trademark and intellectual property matters. He works in the firm’s Trademark Practice Group. He holds a B.A. in Art (studio emphasis) and Journalism.