Earlier this month, Backcountry.com (Backcountry), a prominent Utah-based online retailer of outdoor equipment, came under swift backlash for filing numerous trademark infringement claims against smaller businesses due to their use of the term “backcountry” in either their business names or marketing materials.
Lawsuits Targeting Small Businesses
This year, the 23-year-old e-retailer hired California’s IPLA Legal Advisors, the nation’s largest trademark-specific law firm, to pursue four lawsuits targeting small businesses that used the word “backcountry” in their business name or marketing materials. The current U.S. District Court lawsuits continue the pattern of several years of Backcountry filing dozens of lawsuits and protests with the U.S. Patent and Trade Office (PTO), targeting businesses that have trademarked or utilized the word “backcountry.” These lawsuits and protests began shortly after Backcountry was granted rights to the BACKCOUNTRY mark in 2018.
Criticism of Backcountry’s lawsuits centered on the perceived bullying of small companies who cannot afford to fight back, like Backcountry Nitro Coffee, Backcountry Denim, and Backcountry Pursuit, all of which changed their business names under pressure from Backcountry at a great cost to their businesses. Other sources of anger stem from the idea Backcountry is attempting to hoard the use of a word that is at the core of the outdoor community, as well as Backcountry’s assertion of dominance within the outdoor community at the expense of locally owned, independent businesses.
According to news reports, many companies have opted to settle with Backcountry under undisclosed terms. Others, however, have not had the same luck. For example, Backcountry eBikes had to rebrand to Bakcou eBikes after it was sued in February 2019, and Backcountry Denim Co. also had to rebrand to BDCo after a settlement hearing this year.
“My feeling is that nobody should have the right to the term “backcountry,”” said Jordan Phillips, who launched his American-made jeans company Backcountry Denim Co. in 2017 and was sued this year in California federal court by Backcountry. “It’s like trying to trademark “road” or “beach” or “mountain.””
The term “trademark bully” is often used to describe powerful, well-known individuals or companies who either make over-reaching claims or are overly aggressive in pursuing trademark claims. Over-reaching tends to occur when there is no commercial impact to the enforcer by the alleged trademark violation. Some of the various types of behavior demonstrated by trademark bullies include: unreasonable demand letters, overly burdensome litigation, or failing to agree to a reasonable compromise.
Following the immense public backlash, Backcountry CEO Jonathan Nielsen issued a formal apology for the aggressive manner in which his company defended its trademarks. In a letter posted to the company’s website, Nielsen said, “We have heard your feedback and concerns, and understand we fumbled in how we pursued trademark claims recently. We made a mistake. In an attempt to protect the brand we have been building for nearly 25 years, we took certain actions that we now recognize were not consistent with our values.”
Legal Counsel Fired And New Partnerships Forged
Additionally, Nielsen severed ties with Backcountry’s legal counsel, IPLA Legal Advisors, and withdrew its lawsuit against Snapperhead Inventions, the manufacturer of the Marquette Backcountry Ski. Notably, and somewhat surprisingly, in a bid to placate its remaining critics, Backcountry partnered with several of the companies it previously filed claims against. So far, Backcountry Babes, Wild Barn Coffee (formerly named Backcountry Nitro), and Snapperhead Inventions have partnered with Backcountry. It is unknown whether other partnership offers to previously affected businesses have been extended by Backcountry.
If you have a trademark issue that you need legal advice for, contact the attorneys at Whitcomb, Selinksy PC at (303) 534-1958 or complete an online contact form.