19/11/2019
Consumer outrage against e-retailer Backcountry.com illustrates the risks of taking an overly aggressive approach to the enforcement of trade mark rights, particularly where the mark in question is arguably quite descriptive.
“The Backcountry” was originally the name for a region in North America, west of the Appalachian mountains, but much later it came into general use in the US to describe any remote and sparsely populated rural or mountain area.
The company that later became Backcountry.com was founded in 1996, but the actual domain name was only purchased in 2004. Backcountry.com quickly became one of the most profitable online retailers of outdoor clothing and gear in the US. The company owns a number of US applications for and registrations of trademarks consisting of or containing “BACKCOUNTRY”, for various goods associated with outdoors activities and for services including online retail store services.
In the last couple of years, Backcountry.com has reportedly filed over 50 requests with the US PTO to cancel or refuse trade marks containing “BACKCOUNTRY” in other ownership. Since early 2018 the company has pursued a somewhat aggressive approach towards protection of its marks. Dozens of small businesses across the US that have “BACKCOUNTRY” in their names have been sued or served cease and desist letters. These businesses include an organic snack manufacturer, an e-bike retailer, a jeans maker, a snowmobile guide service and even an outdoor education programme called “Backcountry Babes” that specialises in cultivating women’s leadership skills. Some of these have settled quietly, but others resisted.
One of the small businesses that refused to back down is Marquette Backcountry Skis. The owner, David Ollila, fought back against the lawsuit brought by Backcountry.com in September 2019. On 31 October 2019 the Colorado Sun ran a story reporting on a number of the “backcountry” lawsuits, including the one brought against Marquette Backcountry Skis, asking whether what Backcountry.com was doing was “bullying or just business”.
Online reaction was swift. Many in the outdoor community in the US consider “backcountry” to be just as generic as “outdoor”, and turned to social media to express their outrage at what they saw as a large company bullying small businesses and seeking to claim a monopoly over a word that should be free for all to use. Hashtags proliferated. A GoFundMe page was set up to help Marquette Backcountry Skis fight its case. More than 21,000 people joined a Facebook group calling for a boycott of Backcountry.com, and the group issued a petition urging Backcountry.com to cease all legal action, make amends to injured companies and embrace coexistence of the term “backcountry” with other companies and organisations. The petition stated: “As we see it, you can own ‘backcountry.com’ but ‘backcountry’ as a term should belong to our collective community and industry, not you and your business.”
Faced with this media storm, Backcountry.com quickly reconsidered their approach. The company issued an apology and dropped the case against Marquette Backcountry Skis, hiring David Ollila as a consultant and agreeing to donate to two non-profit organisations which he had helped to create. Jonathan Neilson, CEO of Backcountry.com, stated that his company was not trying to “expunge backcountry from everyone’s lexicon, shut down entire organizations, or exclusively own the word”, claiming that the company “has never been interested in owning the word ‘backcountry’ or completely preventing anyone else from using it.”
Mr Neilson promised that his company would be taking a completely fresh look at how they do things and would be changing it in a big way. He further stated that Backcountry.com had suspended all legal actions and had fired the attorneys who had been representing the company in the trade mark disputes.
So far, at least, Backcountry.com does not appear to have actually dropped any of its legal actions apart from the one against Marquette Backcountry Skis, or any of the actions filed with the US PTO. However, Mr Neilson has indicated that his company’s reparations will not be limited to Marquette Backcountry Skis.
One lesson to be taken from all this is that if you choose a trade mark which includes a descriptive or generic word, you need to be particularly careful in how you seek to enforce your rights over this mark. Reddie & Grose attorneys can advise on how to choose a mark which is strongly distinctive and thus easier to protect, as well as on appropriate steps to take in defence of an existing trade mark which may not be so distinctive.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
