Backcountry.com a year ago filed for trademarks protecting the word “backcountry” for all sorts of outdoor gear as the online retailer launched its first-ever branded jackets, skis and apparel. Now the e-commerce behemoth is suing small business owners who have trademarked the word “backcountry.”
“My feeling is that nobody should have the right to the term ‘backcountry,’” said Jordan Phillips, who launched his American-made jeans company Backcountry Denim in 2017 and was sued this year in California federal court by Backcountry.com. “It’s like trying to trademark ‘road’ or ‘beach’ or ‘mountain.’”
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.
IPLA attorney John H. Kim last year filed for trademarks on behalf of Backcountry.com for hundreds of pieces of gear, including tailgate pads for bikes in pick-up beds, climbing ropes, crash pads for rock climbing, avalanche probes, ski goggles, ski helmets, bike tools, water bottles, bedding, camp chairs, duffel bags, dog leashes, climbing skins, chalk bags and women’s clothing.
Last year Backcountry.com announced it was joining venerable outdoor manufacturers Flylow, Black Diamond, Smartwool and skimaker DPS to launch its first-ever namesake lifestyle and backcountry ski touring collections. The new products carry the company’s signature white mountain goat.
Earlier this year the company announced even more goat-branded stuff, with Backcountry.com-branded climbing, mountain biking, winter apparel, travel and outdoor lifestyle clothing bearing the Backcountry logo. This year’s expansion included collaborations with brands Black Diamond and Burton.
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The e-retailer sued Utah bikemaker Backcountry eBikes in February, and the company settled in May and is now known as Backcou eBikes. In July the website sued Constellation Outdoor Education, which trademarked the name Backcountry Babes for its Colorado-born, women-focused avalanche education clinics. That case was settled less than three weeks after Backcountry.com sued. The settlement deals are sealed but the Backcountry Babes website and trademark is still live.
Backcountry.com filed for its first registration of a service mark in 2004 for “retail store services, mail order services and computerized online retail store services.” It secured the trademark in 2007.
The trademark database at justia.com shows 316 businesses using the word “backcountry.” The list includes guides, outfitters, safety gear, first-aid kits, cooking pots, food, cigars, a film festival, automaker car trim packages and tires, vape oils, coffee, liquor, bedding, body wash, dog food, yoga classes, lodges and all variety of hunting and angling equipment. Several companies on the trademark lists have changed their names in recent months or let their trademark expire.
In March, Backcountry.com sued Phillips, a longtime outdoor industry executive who worked with Gregory Packs and Levi’s before launching Backcountry Denim in 2017 after raising $41,000 in seed money on Kickstarter. The lawsuits filed in California District Court followed a petition the company filed through the USPTO in 2017.
Phillips, who moved from California to Boulder this summer, responded to the California lawsuit himself, arguing 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, which makes avalanche safety equipment.
The e-commerce retailer has targeted just about every business in the country using the word “backcountry,” but it has not hassled Backcountry Access, which is owned by private equity giant Kohlberg & Co.
“We’re the one company they haven’t gone after, since we were in the game long before they were. And we’re now one of their biggest suppliers,” said Bruce Edgerly, who co-founded Backcountry Access in 1994 with his friend Bruce McGowan.
Edgerly heard earlier this year that the website was threatening companies with lawsuits and he emailed Backcountry.com co-founder John Bresee, who was the editor of Powder Magazine in the late 1990s when Edgerly was a writer there.
“I wanted to try to talk him down,” Edgerly said.
But Bresee died in his sleep from a suspected diabetic cardiac arrest in late June following a 180-mile motocross ride across the Utah desert.
“Backcountry would not be Backcountry without John. The original idea for what ultimately grew to be Backcountry was his,” wrote Olympic ski jumper Jim Holland in a Powder Magazine obituary for his friend.
Holland co-founded Backcountry.com alongside Bresee, selling avalanche beacons with the website backcountrystore.com in 1996. The two lifelong friends sold to John Malone’s Liberty Media Corp. in 2007, which then sold to TSG Consumer Partners in 2015.
Bresee owned the backcountryaccess.com website in the 1990s but gave Edgerly and McGowan the website in exchange for a backcountry skiing snow shovel.
“He was missing his at the time. But that’s the kind of guy he was. Respectful of the relationship,” said Edgerly, who doubts his friend would have approved of the Backcountry.com lawsuits. “He was a purist skier, a ski journalist and small business owner before he became a business sensation. He wouldn’t do that to his own people.”
Phillips registered a federal trademark for Backcountry Denim Co. in 2017, and Backcountry.com filed a petition for cancellation against the registration within weeks of his filing. Despite the lawsuits filed through the USPTO, the company was unsuccessful in getting that canceled. So, just as Phillips was delivering his first jeans to Kickstarter supporters, the online retailer sued him in California’s U.S. District Court.
Phillips, who fought the company’s protest of his trademark through the USPTO for more than two years, fought the federal lawsuit for more than five months, longer than any other business owner targeted by Backcountry.com this year.
“I reached out to other companies under fire and either they wouldn’t respond to me or simply could not afford the legal fees to fight,” Phillips said. “Understandable, as these cases can rack up high six-figure legal bills fast and take immense amounts of time.”
After hundreds of hours studying trademark law, Phillips penned his response to Backcountry.com’s complaint, denying that his single-item company’s goods and services were identical to Backcountry.com’s goods and services.
Backcountry Denim Co., Phillips wrote, “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.”
Phillips can’t talk about what happened during his settlement hearing in federal court. His trademark for Backcountry Denim was canceled on Aug. 19, 2019. He no longer owns his website, which is dark. His company’s social media channels are closed, and he’s rebranded his company as BDCo.
“I can’t actually tell you what that stands for though. Isn’t that weird?” said Phillips, who is selling his long-lasting jeans and, soon, new products through his website at BDCo.co. “The backcountry is 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.”
In September, the website went after David Ollila, a serial entrepreneur who in 2010 created a short ski for climbing snowy hills he called the Marquette Backcountry Ski. He trademarked the name in 2013, selling the short $190 skis he makes himself in his hometown of Marquette, Michigan, through his website, marquette-backcountry.com.
Backcountry.com sued Ollila in California’s U.S. District Court in San Diego, arguing that his conduct has caused “irreparable harm” to the company’s trademarks and damages that “will be proven at trial.”
Backcountry.com argued that Ollila knew he was intentionally abusing the Backcountry.com mark because he had ordered products from the website in 2002 and 2010. The retailer is also seeking to overturn the U.S. Patent and Trademark Office decision granting Ollila his trademark.
“Defendants’ actions were undertaken intentionally to obtain an unfair advantage over Backcountry and in conscious disregard of Backcountry’s rights, and were malicious, oppressive, and/or fraudulent,” the lawsuit reads. “Backcountry requests punitive or exemplary damages … in an amount sufficient to punish and deter defendants and to make an example of them.”
Ollila said the company wants three times all the profits he’s ever made selling the Marquette Backcountry Ski as well as legal fees and a penalty.
Ollila is digging in for a fight. He’s been an inventor since his 20s, creating the first action-sports helmet camera, VIO Sport, which, ironically, he sold on Backcountry.com in the mid 2000s. In 2010, he spent $90,000 and nine months to develop the Marquette Backcountry Ski, built for climbing and descending hills in Michigan’s Upper Peninsula. (He’s also the guy who stood firm when he protested four hours stuck in a weather-grounded 50-seat regional jet in 2007 at Kennedy International Airport, interviewing the captain with his VIO camera. The brouhaha that followed led to laws requiring airlines to return to the gate when stuck on a tarmac for prolonged periods.)
Ollila sold $97,000 worth of the skis in his first year. The Marquette Backcountry Ski is more than a ski, he said. It’s an example of how one dreamer can take a concept to market for less than $100,000 — without hiring full-time employees. He can churn out 300 to 400 pairs in three nights of work, deploying a machine typically used to make running boards for Jeeps. He runs the business on his phone, working about 50 hours a year — that’s not a typo — and earning what he called “the average household income.”
The process led Ollila, the head of innovation for Flint, Michigan venture capital firm Skypoint Ventures, to create 100k Ideas, a Flint non-profit that unites students with entrepreneurs to test their innovations and develop ideas. In the last three years, 100k Ideas has vetted 470 concepts and created 56 products, connecting garage-tinkering inventors with capital and resources and providing a chance for anyone with an idea to earn an income.
“So how can I back down from this bullying while at the same time I am telling everyone they need courage to pursue financial freedom and living on your own terms?” Ollila said. “I am obligated to fight. Morally, ethically and professionally.”
This story has been corrected to reflect the correct owner of Backcountry Access, Kolhberg & Co., which acquired the company in 2017 from Newell Brands.
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