Trademark bullies, being the obviously frustrating entities that they are, rarely incorporate enough shame to allow for any retreat from their bullying ways. Still, occasionally you come across a trademark bully that actually feels enough public pressure to back down. Relatively rare as these instances are, it’s worth highlighting when an informed public actually pushes back on a bully enough to get them to back down.
Meet Backcountry.com. The site sells all kinds of outdoors gear, with a focus on winter sports. As you might expect, the company also filed for trademarks for “backcountry” for clothing and apparel about a year ago. Despite that being a fairly generic term, particularly in the realm of outdoors gear, Backcountry.com then recently went on a trademark bullying spree.
The 23-year-old Utah e-retailer — founded by ski bums but owned since 2015 by private equity firm TSG Partners — this year deployed California’s IPLA Legal Advisors, the nation’s largest trademark-only law firm, in four lawsuits targeting small businesses that used the word backcountry in their name. The U.S. District Court lawsuits follow several years of the e-retailer filing dozens of lawsuits and protests with the U.S. Patent and Trade Office targeting businesses that have trademarked the word backcountry.
Backcountry.com, through a spokeswoman, declined to comment on the flurry of lawsuits.
The general public, however, did not decline to comment. In fact, the public commented very much after reports on these lawsuits and the public was not pleased. Facebook pages pledging to boycott Backcountry.com sprung up with thousands of members. A GoFundMe site was setup for Marquette Backcountry owner David Ollila, the sole entity to not cave and settle with the bully. Other community sites around the internet lashed out at Backcountry.com for bullying other businesses over a fairly generic term.
“This obviously didn’t resonate well with the market,” said Ollila, the Michigan entrepreneur behind Marquette Backcountry Ski who was sued in September by Backcountry.com for trademark infringement. “Looking at all the comments online, I see people saying that until this is rectified, they are not shopping there. I see this as a great wake-up call to the industry and awareness about what it takes to run a small business and what a fair playing field looks like.”
You see this from time to time, but the backlash from what is a fairly niche community made this all particularly sharp for Backcountry.com. Whereas we have seen plenty of instances in which trademark bullies simply dig in their heels, here the bully actually bowed to the public pressure.
“We have heard your feedback and concerns and understand we fumbled in how we pursued trademark claims recently,” Backcountry.com CEO Jonathan Nielsen wrote in an open letter posted on the retailer’s website, noting his company was dropping a federal lawsuit filed against the founder and sole operator of Marquette Backcountry Ski. “We made a mistake.”
Nielsen’s “letter to our community” — posted on the company’s website late Wednesday, a little more than three weeks before the retail industry’s Black Friday bonanza — said attempts to protect the brand involved actions “that we now recognize were not consistent with our values and we truly apologize.”
Is the timing such that this is less a company realizing it made a mistake and more that it’s trying to save the sales it expects during its busy season? Sure, but so what? The point isn’t whether Backcountry.com has turned over some new leaf or not, but is instead to highlight the power of public involvement. It wasn’t the legal merits that changed the company’s mind. It wasn’t the pleas of its victims. It was the power of the customer that actually resulted in the company dropping these lawsuits.
Perhaps this should serve as some kind of a template for how trademark bullies can be dealt with in the future.
Read more: techdirt.com