Backcountry Backlash
In 2018, Backcountry.com filed for trademarks protecting the word “backcountry” in relation to outdoor clothing and gear, and since sued small business owners who have trademarked the word “backcountry.[1] Since 2015, Backcountry.com has been owned by TSG, a private equity firm, which hired IPLA Legal Advisors to commence lawsuits against small businesses using the word “backcountry” in their name.[2] Businesses sued include what was formerly known as “Backcountry eBikes” (which, following a settlement with TSG, rebranded as “Backou eBikes;” Constellation Outdoor Education, which trademarked the name “Backcountry Babes” for women-focused avalanche education clinics) and “Backcountry Denim” (which was rebranded as BDCo).[3] Additionally, “Backcountry nitro” was forced to rebrand as “Wild Barn Coffee,” and Backcountry.com lawyers demanded “Cripple Creek Backcountry” drop “Backcountry” from its name.[4]
Phillips, who launched “Backcountry Denim,” argued in response to the lawsuit that “many brands have used the word ‘backcountry’ over the past 30 years, including brands that have been selling their stuff on Backcountry.com, like Boulder’s own Backcountry Access,” and further argued that his “single-item company’s goods [jeans]” differed from significantly from Backcountry’s offerings and services, explaining that his company “has very specific technology and aesthetic, is specific in it (is a) product, is not a retail service site selling other vendors or wholesale goods … BDCo admits to sell pants, and backcountry sells pants. The selling of pants being the only similarity to backcountry. Backcountry sells thousands of other products from other brands.”[5] While Phillips cannot speak about what happened in his settlement hearing in federal court, his trademark for “Backcountry Denim” was canceled, and he no longer owns its associated website. Additionally, all associated social media channels have been closed. Phillips did, however, tell The Colorado Sun that he considers “backcountry” to be “both a destination and an aspiration. The term backcountry is a term that is the backbone why our outdoor industry exists. It should be used by all who enjoy the outdoors.”[6]
David Ollila was also sued by Backcountry.com for selling the “Marquette Backcountry Ski,” which Backcountry.com alleged caused “irreparable harm” to its trademarks.[7]. Like Phillips, Ollila was outspoken against Backcountry.com’s suing of smaller businesses using the term “backcountry,” telling The Colorado Sun, “I am obligated to fight. Morally, ethically and professionally.”[8]
These arguments seem to have resonated, as there was a quick public reaction to the Colorado Sun article concerning Backcountry.com’s lawsuits, with the Facebook group “Boycott BackcountryDOTcom” gaining more than 12,000 members, and the hashtags #boycottbackcountry and #backcountryboycott spreading on Twitter.[9] Moreover, Backcountry.com issued an apology, with their CEO Jonathan Nielson posting a statement on the brand’s website: “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, and we truly apologize.”[10] In addition, Backcountry.com announced it was withdrawing the lawsuit against Marquette Backcountry.[11]
This apology did not seem genuine to many of those initially upset by Backcountry.com’s legal actions, with Ollila telling The Colorado Sun, “I think they [Backcountry.com] need more culpability…It sounds like they are sorry they got caught with their hands in the cookie jar.”[12] Moreover, Outside Online noted that the Facebook group Boycott BackcountryDOTcom added an additional 8,000 members, with “many calling the apology transactional and pointing out that Backcountry.com still had open legal actions against dozens of other companies.”[13] Bernard Chao, director of the University of Denver Sturm College of Law’s intellectual property certification program, commented to The Colorado Sun that Backcountry.com was “basically using strong-arm tactics to inflict costs on the other side, regardless of merit…It seems like an unfortunate use of trademark law.”[14] In addition to continuing its legal action against several small businesses, “Backcountry.com’s IPLA lawyers sent dozens upon dozens of cease-and-desist letters to even more businesses.”[15] In fact, despite the negative public reaction to these lawsuits, Backcountry has almost 50 pending legal actions filed through the USPTO in 2018 and 2019.[16]
Footnotes
