Where IP Meets PR

What does Backcountry.com’s backpedal say about modern trademark enforcement?

Backcountry.com is doing damage control after its widespread trademark enforcement drew negative press in recent weeks. The Colorado Sun reported on the outdoor retailer’s widespread threats of litigation against smaller companies using the word “backcountry” in their brands, and a social media-driven boycott followed — just as the holiday gift-buying season ramps up.

The company has since taken the extraordinary step of cutting ties with its outside trademark counsel, IP Legal Advisors, and issuing a public apology in which it said it would “reexamine [its] broader approach to trademarks.”

“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, and we truly apologize,” said Backcountry.com CEO Jonathan Nielsen in a Nov. 6 statement.

The company had filed dozens of petitions with the U.S. Patent and Trademark Office to cancel the trademarks of other companies using the term “backcountry.” 

Its targets included brands like Marquette Backcountry Skis and Backcountry Denim Co., but they also included companies outside the realm of outdoor gear, like Backcountry Nitro coffee.

Nielsen said he is looking to resolve the companies’ trademark challenges directly with the businesses. He didn’t confirm, the Colorado Sun noted, whether the company plans to withdraw its petitions to cancel other companies’ trademarks.

Meanwhile, a Facebook group calling to boycott Backcountry.com listed more than 22,000 members as of Friday. That number that grew even after Backcountry.com announced its change in strategy.

The radical change in trademark strategy has been cause for discussion among intellectual property experts and practitioners — how much should IP counsel and their clients think about public image when protecting their trademarks?

Ian Saffer, a partner at Adsero IP in Littleton, said it’s common practice to at least consider how the public might perceive a company’s trademark enforcement, especially in the internet age.

“Each time, a conversation should be had,” Saffer said. “Is this something that we want to do, and how do we do it?” But trademark owners shouldn’t let the risk of public backlash dissuade them from acting when they discover trademark infringement, he added. Trademark owners have a duty to police their own marks under the law. If they leave widespread, unauthorized use of their trademarks unchecked, they risk their brand names becoming generic terms, like escalator or aspirin, which used to be protected.

“That’s the nightmare scenario, and owners have to police against that possibility,” Saffer said.

Public perception might be different if the trademark is for a term like “backcountry” that’s already
 commonly used. 

The Facebook group, “BoycottBackcountryDOTcom” declares in its description: “Trademarking backcountry is like trademarking camping or mountains. No one should own or enforce the trademark to it.”

What IP practitioners have to think about is how they should reach out to the “target,” what their demand should be and how they should word it,
Saffer said.

A “bad letter” — where a trademark owner is openly hostile — risks “making the rounds” online, Saffer said. But polite demand letters have earned their companies some positive attention, he noted. Saffer cited the example of Jack Daniels’ demand to a book publisher, which a Forbes.com headline called “The World’s Nicest Cease-And-Desist Letter Ever,” that went viral in 2012.

“If you’re going to do enforcement, think about the possibility that it’s going to go viral,” Saffer said. “You want your correspondence to be polite. You want it to explain the law … so that that’s out there. You want to be reasonable in terms of what you ask for, so if you’re asking someone to phase out the use of a mark, to give them the time and space to do that in a way that’s not going to unnecessarily hurt their business. That might even include helping them rebrand, either giving them time or even conceivably money to rebrand.”

Some companies regarded to be “trademark bullies” have included Monster Energy, which has been aggressive in acting against craft brewers using “monster” in their beer names, and Louis Vuitton, which has gone after not just potential counterfeiters but also bagmakers and toymakers that claim their products “parody” the luxury brand.

But for a company like Backcountry.com to publicly walk back its trademark enforcement is “a very unusual situation,” said Bernard Chao, a professor who teaches IP law at the University of Denver Sturm College
of Law.

“For the most part, trademark bullies don’t suffer much public backlash,” Chao said. “And I think the reason why this [Backcountry.com] case is a little different is it’s just so apparent and so easy” for the general public to grasp that the term “backcountry” shouldn’t belong to anyone, he added. “We have trademark law to prevent confusion, not to own a name.”

The breadth of Backcountry.com’s trademark enforcement, which included companies beyond outdoor gear and apparel, looks to have played a role in the backlash, Chao said. 

It’s hard to imagine Backcountry.com was losing any money to the coffee company due to brand confusion, he added. “It’s just not conscious of the business goals of the company when you go after such small players in areas that don’t actually compete with you.”

Another factor is that Backcountry.com’s clientele might be more socially conscious and likely to mobilize if they disagree with what a brand is doing. 

Consumers often expect outdoors-centric companies to behave as “good citizens,” like having sustainable practices or donating to environmental causes, so being labeled a “bully” to entrepreneurs could be more of a liability in Backcountry.com’s case, Chao said.

As the Colorado Sun reported, Backcountry.com said it has “paused” most of its enforcement actions and wouldn’t commit to dropping all of its cancellation petitions against companies at the USPTO.

“My guess is maybe they think that there’s a couple of these assertions that they actually care about,” Chao said. “Maybe there’s someone out there that actually really is infringing on their trademark, and that actually does compete with them in their field of use.”

Chao added, “And they need a little bit of time to go through those because they actually just fired their attorneys.”

— Doug Chartier

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