Park City Based Backcountry.com Announces A Pull Back On Trademark Litigation

Nov 7, 2019

 

Credit Sophie Frankenburg
Credit Carolyn Murray / KPCW Radio
  It was reported last week that the Park City based on-line retailer, Backcountry.com was embroiled in lawsuits with organizations that use the word backcountry in their brand.  As of Wednesday, reports indicate the CEO of Backcountry.com has rolled back at least one of the lawsuits filed against a ski manufacturer in Michigan.
Social media lit up when it was reported last week that the on-line retailer was suing small business owners using the word backcountry in their brand name. A report in the Colorado Sun Times states more than 12,000 Facebook users joined a boycott of the retailer.

Backcountry.com CEO, Jonathan Nielsen remained quiet until Wednesday when he issued a public statement of apology which can be found on their website. His statement, in part says the company tried to resolve the trademark situations amicably and pursued lawsuits only as a last resort. He specifically states Backcountry is withdrawing a lawsuit against the ski maker Marquette Backcountry. He does not clarify in the article if lawsuits will be dropped against Backcountry Babes, an avalanche education company, Utah’s Backcountry e-bikes and Backcountry Denim, all lawsuits filed this year.  KPCW has called Nielsen for comment about past and pending lawsuits and settlements. He has not responded.

Nielsen told snews.net, an outdoor trade publication, that he understands why people are unhappy with the actions his legal team has taken over the past year, suing dozens of companies for using the word backcountry. The report in the Sun claims Backcountry filed dozens of petitions for cancellation of previously registered trademarks held by businesses across the country. He is quoted in the article saying they now recognize the past legal actions are not consistent with the company’s values.

Peter Metcalf, founder and CEO Emeritus of Black Diamond, a Utah based outdoor gear retailer, is skeptical that trademarking a common name like backcountry can be sustained. He sits on the boards of the American Alpine Club, the outdoor industry’s Conservation Alliance and the Outdoor Alliance which represents climbing, biking, boating and hiking NGO’s of America.

“If you look in Park City, I’m sure you’re familiar with Black Diamond Gymnastics, the Black Diamond Ski Lodge at the base of Deer Valley, Black Diamond Window Washing. You know we just looked at it and early on realized that those are different categories that we have not played in. Even the word ‘black diamond’, have been ubiquitous in skiing. It’s expert so it was not worth trying to pursue trademark rights in those categories especially where we didn’t compete.”

He is sympathetic to the needs of an organization protecting the brand they’ve worked to build. He says the word backcountry goes beyond skiing because it represents an area beyond the road for hiking, mountaineering and canyoneering. It also is a descriptive term.

“Conversely, I do understand and appreciate for Backcountry.com when there are players in the same space, i.e. the backcountry space using that name. But, the real challenge is that if it’s a ski guide or the name of a ski, and many companies have used backcountry to describe a ski and you can give such a name to describe a ski, I think they’re in a difficult position.”

Metcalf says trademark and patent law is expensive. He’s had experience for many years protecting the Black Diamond brand world-wide.

“Both in patent law and trademark law, one of the calculations you take is my baseball bat big enough and the other side only has a twig or no baseball bat. Where they just capitulate and realize we just can’t spend this kind of money and capitulate. And that is one of the calculations.”

Metcalf says he has great respect for the Backcountry.com organization but believes their position would be expensive to defend.

“I have a lot of respect for Backcountry.com, their management, their leadership, their employees. They are a great corporate citizen of Park City.  A great retail distributor. High integrity people. So, what I’m sharing with you is by no means an attack on the leadership or management of the company.

A link to Backcountry.com CEO Jonathan Nielsen’s letter of apology. 
https://www.backcountry.com/sc/a-letter-to-our-community