Intro
Dough Tompkins founded The North Face (TNF) in 1965 as a professional mountaineering equipment provider. Between 1970s and 1980s, the company released a series of new products ranging from geodesic dome tents to synthetic sleeping bags. In 1998 TNF had its highest stock price at $25, but after suffering a horrible loss in 1999 and facing bankruptcy it was ultimately sold to VF Corporation in 2000 and has operated as a subsidiary company of VF corporation ever since. Growing year by year, The North Face broaden its product lines from mountaineering equipment into apparel lines, including performance wear, outerwear, snow sports gear, and functional sportswear, and equipment lines consists of tents, sleeping bags, backpacks and accessories. During its development, TNF gradually built its intellectual property (IP) portfolio to include 237 trademarks, and 24 patents. In the following paragraphs, we will discuss about how TNF deploy its IP strategically and why it focuses on the trademarks and patents instead of copyrights.
Trademarks
In general, TNF has employed a branding strategy by making its name and products synonymous with the love for outdoor lifestyles as well as the responsibility to protect environment. It also puts huge focus on trademarking product technology to make the products more professional and appealing to customers. At the same time, the North Face pays attention to expand its product offerings such as food and books that are related to outdoors and sports. Besides, the community outreach effort is also an essential part of its branding strategy in building an active lifestyle brand. TNF has applied trademarks for different series of products that target at different sports and or activities (Exhibit 1) and aims to sell products by categorizing products for such lifestyles. For example the snowboarding/skiing products it utilizes specific trademark Cryptic® and the athletic training apparel can all be found under the Flight Series® line of products. To further brand their proprietary fabrics and technology, all TNF developed technologies (Exhibit 2) are also trademarked and used to help further advertise the benefits alongside the great performance and reliability that has become synonymous with TNF brand.
TNF has expanded its product scope since its establishment in 1968 from backpacks and shoes to various sporting gears and related products. Meanwhile, the Trademark Logo of TNF was only registered for the product areas that were already in commercial. Therefore, TNF had to update the goods and services coverage of trademark whenever they expanded in to new area and added new production line (Exhibit 3). As the Result, there are six identical TNF logos on live at registration at United States Patent and Trademark Office that covers different area of products. The North Face logo is not the only trademark that North Face takes seriously; similar protection methods are also applied into different series, activities, taglines, technologies and etc. A majority of the IP held by TNF is in the form of trademarks, with 237 trademarks.
Litigation
The South Butt, LLC was a clothing and accessories company founded in May 2007 by Jimmy Winkelmann. Beside its name being confusing, the design mark and the Never Stop Relaxing tagline were severe offence to TNF’s IP.
While Winkelmann claimed the company was a simple parody, TNF responded rigorously with cease and desist letter that requested Winkelmann to cease all promotion and sales of South Butt products and abandon his trademark registration application. However, Winkelmann offered to sell his company to TNF for $1 million in response. With the continued growth of The South Butt, Winkelmann did not take the letter into consideration and in 2010, TNF sued The South Butt, LLC for trademark infringement. The argument contained followings: * The South Butt uses similar font as The North Face * The
