Backcountry sues!

[BobbyJones]

Another David and Goliath round of trademark infringement lawsuits:

https://www.adventure-journal.com/20...m-backcountry/

Sigh.

[jr59]

Not sure what the big deal is? Rolex issues 1000s of cease and desist letters a day, and will sue you if you don’t comply. Plus if they do make a mistake, the write this legal form letter, saying how mistaken they were, AND tell you, that you cannot use their letter in any form or fashion.

Big companies do it all the time.

[charliedid]

Isn't that what companies do to protect a legally owned TM?

[notsew]

The difference is Rolex is a pretty clear proprietary term, its a made up term to represent their brand. Backcountry is a word that describes a region or activity. How can you claim exclusive use of that? To sue other firms trying to evoke the same spirit as you is ****ty. You know, its kinda like a bike company suing people for using the name of a city in France.

Originally Posted by jr59

Not sure what the big deal is? Rolex issues 1000s of cease and desist letters a day, and will sue you if you don’t comply. Plus if they do make a mistake, the write this legal form letter, saying how mistaken they were, AND tell you, that you cannot use their letter in any form or fashion.

Big companies do it all the time.

[jr59]

Originally Posted by notsew

The difference is Rolex is a pretty clear proprietary term, its a made up term to represent their brand. Backcountry is a word that describes a region or activity. How can you claim exclusive use of that? To sue other firms trying to evoke the same spirit as you is ****ty. You know, its kinda like a bike company suing people for using the name of a city in France.

Reasonable point

[72gmc]

this reeks of a private equity firm that has no concept of the ubiquity of the term, and no care for the community that their customers are a part of.

Now planning to return a recent purchase I made.

[45K10]

Originally Posted by 72gmc

this reeks of a private equity firm that has no concept of the ubiquity of the term, and no care for the community that their customers are a part of.

Now planning to return a recent purchase I made.

Agreed, I'm done buying stuff from BC and CC.

[FlashUNC]

Originally Posted by notsew

The difference is Rolex is a pretty clear proprietary term, its a made up term to represent their brand. Backcountry is a word that describes a region or activity. How can you claim exclusive use of that? To sue other firms trying to evoke the same spirit as you is ****ty. You know, its kinda like a bike company suing people for using the name of a city in France.

The fault here is US trademark law. Either you vigorously defend every example of a trademark as you're owning it or you're opening yourself up to weakening future claims that the trademark isn't, well, a trademark.

It's why (among other reasons) Ford sued Ferrari over the use of F150. No one would ever confuse the two car makers, but Ford has their truck name to defend. And that's just a letter and three numbers.

[madsciencenow]

Originally Posted by FlashUNC

The fault here is US trademark law. Either you vigorously defend every example of a trademark as you're owning it or you're opening yourself up to weakening future claims that the trademark isn't, well, a trademark.



It's why (among other reasons) Ford sued Ferrari over the use of F150. No one would ever confuse the two car makers, but Ford has their truck name to defend. And that's just a letter and three numbers.

Agree with flash on this. If you don’t defend a registered TM then you could lose it. TMs are meant to protect consumers from confusion in the marketplace.


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[steamer]

Originally Posted by 45K10

Agreed, I'm done buying stuff from BC and CC.

same here.

[72gmc]

Originally Posted by FlashUNC

The fault here is US trademark law.

I don't disagree at all. The company that applies for a trademark on a clearly ubiquitous, fair-use term, and gets what they want from a trademark office that doesn't seem to do its homework, still bears some responsibility.

[polyhistoric]

Trademark lawyer here... treading carefully. The law requires trademark owners to take steps to protect their brand not only from infringement but also from dilution. If you allow multiple third-parties to adopt similar names for similar or related services, after time your own mark becomes worthless. How you define similar/related services is the key question. One thing to note is that the "lawsuits" are not actually Federal Court cases, but administrative matters that relate only to the ability to REGISTER a trademark. One strategy for companies with a commonly used word for a traademark is often that they allow others to use marks, but not register.

I would not boycott a company solely for enforcing trademark rights - there is often a lot more to the story than is being said. This could also be the PE influx actually gives them a legal budget to do something they wanted by had no means to accomplish before. Poor customer service and other reasons are good material for boycott.

[madsciencenow]

Originally Posted by 72gmc

I don't disagree at all. The company that applies for a trademark on a clearly ubiquitous, fair-use term, and gets what they want from a trademark office that doesn't seem to do its homework, still bears some responsibility.

What homework do you feel the USPTO should have done?


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[polyhistoric]

Originally Posted by 72gmc

I don't disagree at all. The company that applies for a trademark on a clearly ubiquitous, fair-use term, and gets what they want from a trademark office that doesn't seem to do its homework, still bears some responsibility.

Trademark law is not about taking your words away - its about using a term for a business product or service in a novel way. Neither the trademark office or the law is at fault here. Prior to BACKCOUNTRY were there companies using that word "as their name" for catalog services for various outdoor sporting goods? You can still use the word "backcountry" to describe types of gear or locations. But for BACKCOUNTY the brand, they are not located in the "backcountry," their gods are not only for "backcountry" applications - the name evokes all the things you may associate with th word, but does not directly describe it. In trademark law we call this a suggestive mark.

Fair use is a completely unrelated concept - it is a defense to infringement. It is using another's intellectual property because there is no other reference point. The most famous example is when NEW KINDS ON THE BLOCK sued a newspaper for having a NEW KIDS ON THE BLOCK poll about the band. The Court said there was no infringement and the newspaper's use was fair use because they couldn't reference the band without using the name. The same is true for auto shops that want to advertise they work on Honda's - just don't use the trademark owner's name as your own business name.

[unterhausen]

I imagine most or all of these uses of backcountry were in use prior to the adoption of the name by the internet company. I unsubscribed from their emails, best I can do to show my disapproval.

Penn State was recently granted a trademark for "Happy Valley," which just shows how bogus our trademark system really is. They have said they will be permissive about allowing others to use it though.