Backcountry Takes It Back

Customers don’t like trademark bullies.

Jonathan Nielsen, the CEO of Backcountry.com, LLC learned that lesson the hard way.

As of this writing,* there are over two dozen registrations that include the word BACKCOUNTRY for various outdoor related goods and services that do NOT belong to Backcountry.com.

When you have a trademark like BACKCOUNTRY for outdoor gear and retail sales of outdoor gear, you have to accept that companies in that space are going to use pretty similar marks for pretty similar goods and services. It’s just not that strong a trademark.

Despite that, Backcountry.com started opposing applications, trying to get registrations cancelled and filing lawsuits against companies they thought were infringing.

The consumers in that market started noticing.

Social media blew up.

Then, miraculously, Mr. Nielsen did the right thing.

He published a letter to the outdoor community acknowledging that his company “took certain actions that . . . were not consistent with [his company’s] values . . ..” Mr. Nielsen pledged to “reexamine our broader approach to trademarks to ensure we are treating others in a way that is consistent with the culture and values envisioned by our founders and embraced by our community.”

Way to go, Mr. Nielsen. We can’t get everything right all the time, but we can apologize, and get things right the second time.

 

*December 2, 2019.

Where Are They Now?

What happens to a trademark application once it’s been filed?

To find out, I tracked all the applications filed on one day: February 8, 2016.[1]

There were 1,396 applications to register trademarks filed with the U.S. Trademark Office that day.

As of this writing,[2] only 840, or about 60%, made it all the way to registration.

494 of those applications are dead and gone.

Another handful, 62 applications, are still in process. Some are being opposed and some are still trying to prove use. I estimate that half of those 62 will be dead before it’s over.

How did all those 494 applications die?

• 228 died because the applicant never filed proof it was using the trademark. Maybe that’s because their plans changed or their business died.
• 221 died because the Trademark Office issued an office action. which is the Trademark Office’s way of saying that the trademark can’t be registered[3].
• 29 died because the applicant “expressly abandoned” the application, which is code for “someone sent them a cease and desist letter.”
• 12 died because someone opposed the application and the applicant lost the opposition or chose not to fight.
• 4 of them actually made it to registration, only to be cancelled soon after by someone else with stronger rights and/or a bigger purse.

There are lots of things that can happen to an application once it’s filed. The best way to avoid a bad outcome is to file an application for a trademark that has a low likelihood of running into problems.

 

Thanks to Max F. for the suggestion that led to this blog.

[1] I picked that date because it’s relatively recent but far enough in the past to have allowed most things that can happen to happen.

[2] December 17, 2019.

[3] Many of those office actions refused registration because the trademark was “confusingly similar” to another trademark or because it was “merely descriptive” or “generic.”

What’s most interesting to me is how few of the applicants even tried to move ahead after the Trademark Office refused to register their trademark. Of the 221 applications that were refused and are now dead, only a few responded to the Trademark Office with arguments as to why they should be registered. I’m sure many of those had no chance even if they did respond but I suspect that a good size chunk could have made it with a fairly simple response.