San Diego Trademark Attorney® Blog

North Face Shuts Down "Butt Face" Apparel Maker With Trademark Contempt Ruling

October 18, 2012

fleece.jpg San Diego - The makers of a parody line of clothing named "The Butt Face" have been held in contempt for violating a 2010 injunction barring them from any use of The North Face Apparel Corp.'s trademarks or similar names, according to a consent judgment filed Tuesday.

A Missouri district court ordered James A. Winkelmann Sr., James A. Winkelmann Jr. and their company Why Climb Mountains LLC to stop using The Butt Face trademarks or any other reproduction, counterfeit, copy or imitation, specifically including parody, of The North Face's trademarks. The clothing makers must also cease any communications of any kind about The North Face or their now-defunct clothing lines The South Butt and The Butt Face.

The Winkelmanns are enjoined from passing off any product as somehow related to The North Face or using any name likely to dilute, confuse or deceive. They must also turn over all domain names and Twitter accounts that violate the prior injunction or the current order, the court said.

The defendants must turn over any goods bearing The Butt Face trademark for destruction, and disgorge payments of $65,000 The North Face previously made to them.

The 2010 consent injunction came as part of a settlement agreement, under which the Winkelmanns agreed not to use The South Butt trademark or any other similar names that might be confused with The North Face. The North Face first brought its infringement claims against the Winkelmanns in 2009.

Since the entry of that consent injunction, the Winklemanns created Why Climb Mountains and knowingly and intentionally engaged in conduct in direct violation and reckless disregard of the injunction, with the intent to trade on The North Face's fame, goodwill and trademarks, The North Face's contempt motion, filed in August, said.

"The Winkelmanns used the original lawsuit as a lucrative marketing device to promote sales of their infringing products through a media blitz," the motion said. "We assume they will attempt to same here. Thus the sooner this matter is heard and resolved, the better."