Zealously defend your trademark with care. BACKCOUNTRY

A trademark is something that a producer of products uses to brand the product is sells in the market place. Traditionally a trademark is thought of as a symbol, word or phrase that is used to distinguish similar products from one another. The association that consumers make between a trademark and the source of a product is the primary measure of the strength of a trademark. When someone brands products using a trademark in a way that causing consumer confusion as to the source of a product, that can be considered trademark infringement.

Because the strength of a trademark is closely tied to the association a consumer make with a trademark, a trademark owner must carefully police the use of its trademark in the market place. Some trademark infringement lawsuits seem silly to the average person, but sometimes silly lawsuits are necessary to maintain the rights to a trademark. However, a trademark owner must balance the protection of its trademark with the negative opinion the public can develop if a trademark owner is too zealous. If a trademark owner claims that any trademark which bears a slight resemblance to their own is infringing, that can sour the public opinion of the trademark owner. A trademark owner that develops a reputation as a bully can find themselves with a trademark that consumers avoid.

Take for instance the series of court cases and trademark opposition filings made by the company Backcountry. Backcountry is an online retailer that specializes in outdoor sports apparel. It was founded 23 years ago and trademarked the word BACKCOUNTRY in 2004. Later a drawing of a goat was registered as a trademark. The retail website mainly sells products from other companies but there are a few products that bear the BACKCONTRY trademark. Since 2016, the company has filed 50 oppositions to trademark applications filed by other companies. The oppositions filed either request cancellation of a registered trademark or oppose the registration of a trademark. The opposed trademark sometimes contain the word BACKCOUNTRY or a drawing of a goat. The results of the trademark oppositions are mixed, sometimes the opposed trademark application is abandoned, sometimes Backcountry rescinds its opposition when the trademark applicant fights the opposition, sometimes the Trademark Trial and Appeal Board rejects the opposition.

Backcounty has also pursued several court cases for trademark infringement. BACKCOUNTRY.COM, LLC, v. SNAPPERHEAD INVENTIONS, LLC, 19-CV-1727 (S.D.CA 2019) is an example of one of those cases. The defendants in this case sell skis under the product name Marquette Backcountry Ski. Backcountry claims that the defendant is misleading consumers into believing the defendant has an association with the Backcountry. The defendant claims that there is no consumer confusion.

Regardless of the outcome of each of these cases, the public is beginning to take notice in a negative way. Several news articles have been written about Backcountry’s aggressive protection of its trademark. The news articles note that several of the trademarks that Backcountry has opposed belong to organizations that not competitors. For example, Backcountry Babes, an avalanche rescue training organization for women that was targeted. The news articles claim that the legal bills of fighting a trademark infringement suit are too great for most small organizations, so they have no choice but to remove Backcountry from their name.

The take away from this is a company must carefully consider their trademark enforcement strategy. The value of a trademark is the positive association consumers make between a trademark and a product, bad press can quickly lead to a negative association.

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