'The Butt Face' Lays Bare the Right Time to Protect a Trademark

My professional opinion: I don’t think The Butt Face has a leg to stand on.

Let me explain. As regular readers of this column may recall, in June I wrote about an ill-advised trademark case involving Louis Vuitton Malletier S.A., the well-known maker of a variety of luxury goods. A knock-off of one of their handbags appeared briefly in the popular 2011 movie The Hangover: Part II. The company sued, asserting that that the presence of the bag created “customer confusion.” Louis Viutton lost the case, and in the process, I argued, looked really uncool and humorless before the very customers it is trying to impress.

I put forth the proposition that, as much as trademarks, copyright, and other intellectual property, reputation is what makes a brand—so companies and their counsel should think twice before recklessly suing over perceived trademark infringement and risking blowback that can have long-term reputational consequences. There is a “delicate balance” (as one observer put it) between enforcing intellectual property rights and being so aggressive legally that you hurt your client and their broader business goals. In other words: sometimes it makes good business sense to be the butt of a joke.

But make no mistake: there are times where a trademark must be protected, particularly when the infringement itself has the potential to do real damage to a brand and its reputation.

Which brings us to The Butt Face. As reported in The National Law Journal (a sibling publication of Corporate Counsel) last week, The North Face, a well-known maker of outdoor equipment and apparel, appeared before a federal judge in St. Louis in mid-August seeking to enforce a 2010 injunction against three defendants who had previously sold outdoor apparel under the brand The South Butt, and who are now selling very similar apparel using the logo The Butt Face.

The North Face had sued The South Butt LLC for trademark infringement in 2009, and the parties reached a settlement several months later. The settlement not only prevented the defendants from using The South Butt as a mark, but also “any other reproduction, counterfeit, copy, or colorable imitation of the North Face trademarks” or “any other designation that is confusingly similar.”

Surely, at this point, attorneys for The North Face must have assumed they had put this messy business behind them. Yet this summer, the matter has—for lack of a better term—reared its ugly head again, with a new The Butt Face logo that is as close to The North Face as the defendant’s prior scatological branding endeavor.