The Backcountry.com debacle isn't really about trademarks

It's more about the nature of the outdoor industry.

First off, not a huge fan of how Backcountry has approached this whole situation. It’s never fun to see big companies going after small companies.

However, it seems like most of outdoor media (with the exception of SNEWS) has failed to responsibly report on the topic and instead sensationalize Backcountry’s (fairly common) behavior. It’s a complex topic, but discussions/articles have had more of an obvious slant towards “Backcountry is evil” rather than “hey, what’s actually going on here”. 

EDIT: As this article has spread, folks have raised concerns about me being part of some kind of coordinated campaign. So, disclaimer here. While the Outbound (the company) has previously done business with Backcountry, no one asked me to write this article or paid me to do it, and there has been no coordination or discussion with Backcountry or Outside PR (a small PR agency both companies share). I personally have never worked with Backcountry.

So, let’s dig in. I’ve been spending a significant amount of time in the USPTO database, reading through the litigation around Backcountry, as well as investigating the history of trademark litigation by several other well-known outdoor retailers. Additionally, I’ve been reading way too much legalese around trademark law. 

Backcountry is currently the owner of the “Backcountry” trademark (several, actually) as it applies to a wide range of outdoor goods and services. As a retailer + branded apparel trademark goes, this is all pretty standard. It’s essentially the same language that Patagonia, REI, etc have on their trademarks. As both a marketplace and a maker of goods, the trademark (for better or worse) is quite wide. Their claim to this particular mark largely stems from how long it’s been in use (since ~1996), and how long they’ve been doing their own branded products. Recently, Backcountry has begun filing cease-and-desists and trademark litigation to several companies using the word Backcountry in their name.

It’s important to note that some of your other favorite companies (including ones that people say they will frequent instead of Backcountry) are also often involved in trademark litigation. What Backcountry is doing is not a major outlier when compared to other companies. That doesn’t mean that it’s good, or “right”, just that it’s not abnormal for a large company enforcing a trademark.

--

Here are a few examples:

Patagonia vs

Paeonia (seems to be a hair care company that wanted to make clothing)

Patagonia Artisan Bread (bread)

Reveal Patagonia (tourism and guide company focused on Patagonia)

Patagonia Beer 

REI vs

REI Roofing

Takara Sake (for a sake product containing the letters REI)

Yeti Coolers vs

Cool Yeti Coffee

Yeti’s Grind

--

All links to litigation: Backcountry (50), Patagonia (100+), REI (34), Yeti (64), Prana (16), Columbia (52), Mountain Hardwear, The North Face (100+) -- they also have trademarks for "Himalayan" and "Basecamp"

Who’s gonna start the ‘boycott Patagonia for trademarking the widely used name of a region in another country” Facebook group?

I think it’s a failing of this discussion by several outlets to sensationalize the behavior of Backcountry (regardless of what you think of it) without also putting it in the context of what other large industry players do on a regular basis to enforce their trademarks. I'm not making a judgement on the validity of all these suits, (or saying that all of Backcountry's were correct, or exactly the same), but it's important to recognize that others also actively enforce trademarks.

Ok, with all that established, why are people upset?

There seem to be a few key issues, I’ll discuss them one at at time.

They believe that Backcountry is a bully.

As I said above, it sucks to see a big company go after smaller ones. It feels wrong. But there is an emotional component to this reaction that goes beyond logic and clouds further discussion on the topic. At the end of the day, Backcountry has the trademark as it pertains to the sale of a wide range of outdoor goods and services, and has an imperative to enforce it. Could you argue that they don’t need to or could be more nuanced? Yes. But that risks allowing companies to use it, diluting their trademark and potentially actually losing it. Again, this doesn't mean that their actions are "right".

They believe that Backcountry shouldn’t be able to trademark “Backcountry”.

This one is more complicated. It’s probably the most common criticism I’ve seen. There are probably hundreds of facebook comments that say something along the line “backcountry is a generic term that has been used for a long time, it’s ridiculous that Backcountry can trademark it”. Here’s a quote from Jordan Phillips, CEO of Backcountry Denim.

“My feeling is that nobody should have the right to the term ‘backcountry’…It’s like trying to trademark ‘road’ or ‘beach’ or ‘mountain.’”

Well…that’s not exactly true. Just because a word is widely used doesn’t mean that it can’t be trademarked. See: Patagonia, Apple, Amazon, Columbia, Prana, Marmot, Yeti, Outside, and on and on.

Now, it is true that “backcountry” is in kind of an odd spot here. As far as I can tell (not a lawyer), you can’t trademark things that are inherent to being able to describe the product

"Generic “marks” are devices which actually name a product and are incapable of functioning as a trademark…The rationale for creating the category of generic marks is that no manufacturer or service provider should be given exclusive right to use words that generically identify a product." (https://www.bitlaw.com/trademark/degrees.html)

Things like “shirt”, “pants”, “skis”, “coffee”, “software”, etc. These can't be trademarked because that's what the product actually *is*. The idea is that you shouldn’t be able to prevent other companies from accurately describing their products. Which is where it gets weird, since backcountry is kind of-ish a category of products, but can't define a product itself.

While certainly an edge case, I think you’d be hard pressed to argue (legally) that “backcountry” is a necessary element to prevent a trademark in this context. It certainly wouldn’t fall under a “generic” trademark, but you might be able to argue it as a “descriptive” trademark. Sure, you have “backcountry skis”, but Backcountry isn’t suing to prevent people from calling skis that. They’re litigating to prevent people who sell outdoor-related goods and services calling their companies Backcountry or trademarking things that way, much in the same way that Patagonia sues other companies that sell clothing (or food products, via Patagonia Provisions) if they use a name or word mark similar to Patagonia. 

At the end of the day, they did get the trademark granted by USPTO. Is there a possibility that someone could truly challenge that trademark? Absolutely -- it would certainly be a protracted legal battle. We may not like that this is the case, but they appear to be within their rights (for now). This doesn't mean that what they are doing is right, good for the community, or good PR (obviously not) -- and they are experiencing the consequences of that perception by many consumers as we speak.

I think what this issue has really revealed is a very opinionated set of consumers with strong beliefs about what the outdoor industry is at its very core.

Is the outdoor industry a business or a community?

For better or worse, I think there’s a tendency to view the industry through rose-colored glasses. For decades, the outdoors was the space of hippies and dirtbags. These were the people who started the first true outdoor companies, people like Doug Tompkins, Royal Robbins, and Yvon Chouinard. Backcountry.com was much the same way, started by ski bums in Park City. This is the industry people want to believe in — one run by people like you, a community of outdoor enthusiasts doing right by each other and the community. So when we read about Backcountry “attacking the little guys”, it feels like a betrayal of what we believe the industry stands for.

The reality might be a bit different. In 2018, the government estimated the size of the outdoor industry at $373 billion. The outdoors is big business.

North Face aka VF Corp owns several popular brands and does over $12B a year in revenue. REI did revenues of 2.8B in 2018. Patagonia is over 200M. Columbia, Sorel, Mountain Hardwear and Prana are all the same company, with revenues of $2.8 billion. Most of these companies file cease-and-desists or litigate to enforce their trademarks. As big businesses do, sometimes they make decisions focused on the betterment of their bottom line, their brand, or their shareholders — rather than consumers. 

Now, I’m not here to say that you need to accept “BIG BUSINESS”, that we should abandon community values, or that it’s not possible to run a huge company and also be nice to everyone (just very, very hard). You certainly have the right to boycott Backcountry if you see that as an acceptable remedy for this situation. You can support local businesses or buy directly from brands in order to have a more personal relationship with your gear and where you get it from.

But we should also acknowledge that all businesses are made up of people that in all likelihood — aren’t actually bad people. Life is complicated, and big businesses are more complicated than most things. Unfortunately it seems to me that many of people that are upset just seem to enjoy being angry. I’m happy that there has been a response that will probably warrant a response from Backcountry assessing their trademark enforcement strategy (update: response here), but let’s keep it civil, have a discussion informed by facts not opinions, and be reasonable.

We want to acknowledge and thank the past, present, and future generations of all Native Nations and Indigenous Peoples whose ancestral lands we travel, explore, and play on. Always practice Leave No Trace ethics on your adventures and follow local regulations. Please explore responsibly!

Kyle FrostAdmin

Wearer of many hats at The Outbound Collective. I'm @kylefrost pretty much everywhere.