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Trademark Troubles in the Backcountry

November 29, 2019 Blogs

This month’s news about backcountry.com and its trademarks presents a case study for trademark attorneys and businesses alike as background:

Backcountry.com is a Utah based, leading online retailer of clothing and outdoor recreation gear. It started in 1996 and has successfully grown into a company of 1200 employees and an estimated $500 million in annual revenue—mainly by selling others’ products on its platform. The company recently decided to start selling its own branded products. As part of the groundwork, it took steps to strengthen and protect its backcountry brand and expanded product line, including by filing federal trademark applications and adopting a trademark monitoring and enforcement program against potentially confusing brands and retailers.

Backcountry’s enforcement program was aggressive. Through a combination of administrative proceedings at the United States Patent and Trademark Office (USPTO) and federal trademark litigation, it was able to move many brands and retailers away from using the term backcountry. However, not all of backcountry’s targets folded. This is where things get interesting.

A critical mass of backcountry’s targets caught the attention of The Colorado Sun—a Denver-based newspaper. The sun began a series of articles highlighting backcountry’s enforcement program and the stories of its targets. Moreover, it questioned whether backcountry was overreaching. As the news played out, trademark law and rights largely took a backseat as the outdoor recreation community collectively recoiled at the idea that one company could own so much of the term backcountry. Boycotts against backcountry.com took off on social media. People began gofundme campaigns to help targets with legal expenses. Backcountry.com soon started issuing public apologies, firing attorneys, scaling back enforcement, and, in a supreme act of contrition, even hiring one of the targets to help it navigate the issues.

Details can be found here, here, here, here, and here.

As a practicing trademark attorney, I see so many interesting things here. This is like a black box to a crash investigator or, to a biologist, the part of the jungle that has a bunch of new species. Here are just a few observations:

  1. Brand selection is complex.
    Like it or not, brands exist in market ecosystems and rights landscapes that are dynamic. Using the backcountry mark as a platform to sell others’ products may have been easily negotiated terrain, but expanding backcountry as a strong mark for self-branded products in a forest of similar users was much rougher country. The better you understand your trademark and the landscapes it will live in, the more likelihood you will have of reaching your branding goals.
  2. Trademark enforcement should be carefully tailored.
    Trademark enforcement is unavoidable for trademark owners. As a legal matter, if you don’t enforce against other users, your brand will weaken and you will lose rights altogether. However, if your enforcement program triggers a coordinated, public backlash and product boycotts, the costs outweigh the benefits and you’re doing something wrong. Trademark enforcement can be tricky and strategies should be well planned and executed.
  3. The market affects brand strategy and protection in unique ways.
    It is well known that the market can affect trademark rights. One common example of this occurs when a previously protected trademark becomes generic and trademark rights are lost. With backcountry, the market (at least a competitive portion of it) exerted heavy influence by sidestepping trademark law altogether and simply voting against efforts to strengthen the brand. I think the lesson is that comprehensive brand strategy needs to examine industry environment, public relations, and other variables in addition to legal rights.
  4. Knowing the rules of the trademark game and how to play it are key.
    One thread of the story stands out: a business owner that became as educated as possible about trademark law and fought back to influence the outcome of the dispute. In a quote from one article, the owner states “that a small independent person with a strong conviction and a little bit of talent can level the playing field.” In today’s business environment, it is more important than ever to know the rules of the trademark game and how to play it. see also Sammy Hagar, can’t hang.