By Denise Ouellet

Tired of watching “The North Face” logo transform from a brand of apparel into a status symbol in the halls of his school, Jimmy Winkelmann created his own brand of clothes mocking the outdoor clothing line called “The South Butt.”  Winkelmann’s company uses a logo very similar to that of The North Face but mocks its “Never stop exploring” attitude with an alternative message, “Never stop relaxing.”

As funny as some are finding it, The North Face is anything but amused. They filed suit in mid-December alleging a variety of federal and state trademark violations including infringement, dilution by blurring, dilution by tarnishment, and false designation of origin.

Typically I don’t follow a lot of trademark cases but reading about this case frustrated me. The general consensus is that people know the difference between a “face” and a “butt” and that The North Face is ridiculous for bothering to sue this kid. However, no one has bothered to consider the alternative. Sometimes, yes, it’s nice to be able to point fingers at the “corporate man” for sticking it to the little man but I don’t think that’s fair in this case.

If you’re in The North Face’s position, you HAVE to sue this kid. In trademark law, you don’t get to pick and choose when you decide to protect your mark. You have to constantly police it and prevent others from using or diluting it to maintain strong protection. I think the misunderstandings looming in the articles I’ve been reading stem from the popular misconception that trademark law protects the look and design of a mark. While it is true that trademark law protects “marks” per se, it doesn’t protect what you see. This would fall into copyright law. Trademark law protects something you don’t see. It protects the association consumers have with what they see and the source of that good or service. Remember that power for trademark law is derived from the Commerce Clause of the Constitution and thus requires some basis in interstate commerce to regulate. Protecting the consumer’s association with a good or service is how trademarks are regulated by the Commerce Clause. Trademark protection allows consumers to know that when they see a certain mark, they know it’s a certain brand and therefore they can reasonably expect the same product or service as they have had before.

If you’re a company that owns trademarks and you don’t police your mark, or watch that others are not using it, you can effectively abandon your mark and lose all protection. Therefore, as prudent counsel for the corporation, effectively patrolling use of your trademarks is essential. So if you’re The North Face, you have to protect your mark against this type of alleged infringement or you risk losing all protection the next time an infringer comes along.