Backcountry.com finally spoke on Wednesday, almost a week after a social media firestorm ignited by news the online retailer has been suing small business owners who used the word “backcountry” in their business names.
“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.”
More than 12,000 Facebook users have signed up as members of a Boycott BackcountryDOTcom page following Colorado Sun reports that the Park City, Utah-based online retailer had filed federal lawsuits against four small business owners who used the name “backcountry.” The retailer also filed dozens of petitions for cancellation of previously registered trademarks held by businesses across the country.
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The social media backlash has led thousands of former Backcountry.com shoppers to call and email the e-commerce giant.
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.” The company has declined The Sun’s requests for comments and interviews several times in the past week.
Nielsen said the federal lawsuits filed this year against the nonprofit avalanche education provider Backcountry Babes, the one-employee Backcountry Denim Co., Utah’s Backcountry eBikes and Marquette Backcountry Ski were “a last resort” that followed attempts to resolve the trademark disputes “amicably and respectfully.”
David Ollila, who founded Marquette Backcountry Ski in 2010 and trademarked the name in 2013, laughed at the notion that the company’s initial petitions for cancellation of his trademark, filed through the U.S. Patent and Trade Office, were respectful.
He points to emails the company’s trademark lawyers with the IPLA law firm sent to business owners like Boulder’s Jenny Verrochi, who was bullied into abandoning her registered trademark for Backcountry Nitro coffee and ended up rebranding her canned cold brew as Wild Barn Coffee.
Those IPLA emails, reviewed by The Sun, warned her that if she did not accept the settlement terms to give up her company’s name and website, Backcountry.com “will not be inclined to resolve this matter amicably if it is forced to oppose your application and formally litigate the matter.”
“I think they need more culpability,” Ollila said. “It sounds like they are sorry they got caught with their hands in the cookie jar.”
Bernard Chao, director of the University of Denver law school’s intellectual property certification program, said it was “odd” that Backcountry.com petitioned the USPTO for cancellation of trademarks registered before the company’s 2018 applications for trademarks outside its long-standing service mark as an online retailer.
(The company filed USPTO applications to use the backcountry mark on a variety of outdoor apparel and equipment in 2018, but secured its mark as an online retail store in 2007.)
“They are basically using strong-arm tactics to inflict costs on the other side, regardless of merit,” Chao said. “Still, it’s not uncommon to assert rights you don’t have, especially against smaller players because you know they can’t afford to litigate, even though they have a meritorious defense. I just have to think, is it really worth their time to make someone else rebrand? It seems like an unfortunate use of trademark law.”
One example of a company expanding into a new realm and requiring a broader trademark involves a clash of two business giants decades ago.
From the mid 1970s through the 1990s, Apple Computer battled the Beatles’ Apple Corps over the right to use the Apple name in the music business. The Beatles created Apple Corps as a holding company for their Apple Records in the late 1960s, but as Apple Computer grew into the music business, Apple Corps sued. Lawsuits and settlements followed the Apple-vs.-Apple battle until a final settlement delivered the computer company rights to the name Apple for its growing music business in 2007.
Want to know more about how we reported out this story? Read a Reddit “Ask Me Anything” with reporter Jason Blevins.
Backcountry.com, which was founded in 1996 by a pair of ski bums selling avalanche transceivers out of their garage in Park City and is now owned by private equity firm TSG Consumer Partners, did not target larger players in its recent legal actions.
Publisher Adam Howard, for instance, said the company never contacted his Backcountry Magazine. Bruce Edgerly said his Backcountry Access — the venerable Boulder-based avalanche-safety gearmaker owned by private equity giant Kohlberg and Co. — was not contacted.
Smaller businesses that did get letters from Backcountry.com’s lawyers, like Weston Backcountry in Minturn and the 26-year-old North Carolina T-shirt printer and wholesaler American Backcountry, declined to comment, citing confidentiality agreements.
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In addition to filing dozens of petitions for cancellation of trademarks through the USPTO, Backcountry.com’s IPLA lawyers sent dozens upon dozens of cease-and-desist letters to even more businesses. They always seemed to target the smaller businesses owned by entrepreneurs; the businesses that make up the backbone of the outdoor industry.
Each of the complaints revolves around the pivotal premise of trademark enforcement, which involves one company’s use of a trademarked word, phrase or name creating confusion in the marketplace around another business using a similar mark.
Typically, the business that first filed to protect that mark has the higher ground in those disputes. And that’s where Backcountry.com’s actions stand apart, because the company pursued companies that had trademarked the word “backcountry” before 2018, when the online retailer expanded into the business of branding its own stuff.
“Backcountry has never been interested in owning the word ‘backcountry’ or completely preventing anyone else from using it,” Nielsen, the company’s CEO, wrote. “But we clearly misjudged the impact of our actions.”
The company has close to 50 pending legal actions filed through the USPTO in 2018 and 2019 demanding that the office cancel dozens of companies trademarks involving the word “backcountry.”
It’s unclear from Nielsen’s statement whether the company would pull those legal actions as well. It’s also unclear whether the company would return websites and trademarks it muscled from small business owners like Jordan Phillips, who rebranded his Backcountry Denim Co. as BDCo. following USPTO petitions and seven federal lawsuits filed by Backcountry.com — one for every mark he held.
Phillips declined to comment late Wednesday, saying he wanted time to think about his next step.
Ollila said the apology from Nielsen could change his plan to fight the company’s federal lawsuit. The entrepreneur and venture capitalist told The Sun last week he was “morally, ethically and professionally obligated” to fight the company’s heavy-handed tactics.
“To be fair, this is not about Marquette Backcountry Skis. It’s about the small nonprofits, it’s about the guides and the small businesses they targeted. This has all been about the lawsuits filed against the people in front of me and the ones coming for the people behind me,” Ollila said. “What we’ve witnessed here is that it takes 25 years to build a business and a reputation and it can be lost very quickly with these poor decisions. I wonder how the market will react to this. I wonder if they can be forgiven.”
Jon Miller, a Denver-based backcountry skier and snowmobiler who started Backcountry United in 2013 as a way to bring together human-powered and motorized backcountry users for avalanche awareness and public lands stewardship, is a moderator of the Boycott Backcountry Facebook page. The page’s membership started climbing rapidly following Nielsen’s apology.
Miller, who works as a brand marketing consultant, expects membership of the Facebook page to top 15,000 by Thursday. He called the apology “a step forward” but said the company needs to do much more to alleviate anger over the aggressive legal action “against entrepreneurs with purpose-driven, passion-built brands.”
“People are up in arms because the backcountry is our sanctuary. It’s our respite. It’s where we spend the most precious moments of our lives. They need to be better stewards of that,” Miller said.
Miller would recommend that the e-retailer start supporting more avalanche education efforts and start encouraging its 1,200-plus employees to donate time for trail maintenance or participating in public land conservation work.
“This boycott isn’t about a word,” he said. “What is happening is that a corporation has a stranglehold over our culture in a battle over a word they literally don’t even own.”