BackCountry Trademark Aggression + Domain Names

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Earlier this year, outdoor clothing retailer Backcountry reportedly started to become more aggressive with regards to its Backcountry trademarks. The company, which operates on its brand match descriptive domain name (Backcountry.com), reportedly went after other companies and websites that were also using Backcountry in their branding. This made many people upset, especially when they learned that some of the companies in Backcountry’s crosshairs had been using the “Backcountry” branding for a long, long time:

After reading about this, I started thinking about some of the outdoor brand names I use for my coats, and the majority are descriptive brands. For instance, I have jackets from Patagonia, Marmot, North Face, and Columbia. My primary Winter coat, made by Helly Hansen, is the only jacket brand in my closet that would not be considered generic. Even the outdoor retailers where I typically buy my gear have generic names – REI and Amazon.

One of the main issues with companies that use generic brands like the ones I mentioned is that they are difficult to protect. There are always going to be other companies that use the generic term in branding and domain names. Everyone knows Hotels.com of course, but Hotels.com can’t prevent other companies from using domain names like CheapHotels.com, eHotels.com, or ChicagoHotels.com. Those are free game.

When Backcountry.com went after other companies using Backcountry in their branding and domain names, it made a lot of people angry. People have been protesting the brand for its aggression towards other brands. I think there are two lessons that can be learned from this:

1) When a business decides to use a generic brand name, they need to understand other companies will use their name or part of their name within their own branding. There may be a case to be made if the brand is being used in a brandable sense (like Amazon), but if the brand name is being used in the generic sense like Backcountry or Hotels.com, it is probably free game for others.
2) Being aggressive towards other brands related to mutual brand usage can backfire.

I love buying generic domain names, especially when they can be used as an exact match domain name or a brandable domain name. Companies that use a generic domain name in the generic sense need to also understand the downsides to using them.

5 COMMENTS

  1. I feel like I’ve lost it after the brand names. Patagonia, Marmot, North Face, and Columbia. How is Helly Hansen different? None of these names is descriptive for outdoor products; all of these five (and Rei, and Amazon also) are equally non-descriptive. Marmot would be descriptive for selling marmots. Hence, none of these should be difficult to protect in their class.

    • Patagonia is a place in Argentina. Someone could operate PatagoniaTours.com and be safe from TM infringement. Same thing goes for Amazon, Columbia and North Face since they are generic geographic names. A marmot is an animal. Someone could use that name as a brand beyond the outdoor wear. From a domain POV, someone could register Marmots.com and not get into trouble unless they start selling products that infringe on the outerwear brand. Similarly, someone with the initials REI or an organization with that acronym could operate on REI.net or REI.org without having to deal with the REI brand. Those are all generic brand names.

      Helly Hansen is the only brand that is a unique name. You couldn’t operate an unrelated website on HellyHansenTours.com for example because Helly Hansen isn’t generic.

      TL;DR, there are lots of brands, like Backcountry, that use generic terms. It is hard for them to go after other businesses that use their name within their own unique brands because of the generic nature of the brand. When you do use a generic brand, if you go after others for using the same brand, you run the risk of alienating customers.

      • Thanks for clarification, now I understand what you said. Still, the reference to such broad descriptive names is somewhat confusing within the article about Backcountry.com, whose name is descriptive to the very set of products they sell – backcountry related; and as I’ve managed to conclude from the linked article, they attack other businesses dealing with similar set of products.

        This seems to be very recent, their old TM is “Backcountry.com” and even the company name is Backcountry.com, LLC. Would it create a precedent where company starts with “harmless” domain-inclusive trademark, and then proceeds to claim rights to the 2nd level domain word? Escrow.com must be quite interested in the outcome of this story 🙂

        • “they attack other businesses dealing with similar set of products.”

          I don’t know if that is exclusively true. I believe they went after other companies, unrelated to clothing or outdoor gear. They seemed to want to monopolize the Backcountry trademark beyond clothing and retail. For instance:

          “ven the company Constellation Outdoor Education, which trademarked the name Backcountry Babes for clinics offering women-focused avalanche education courses. ”

          Using Amazon as an example, I think it would be like Amazon going after a company called Amazon Jewelry (possibly understandable) and also going after Amazon River Tours, which definitely did not compete with their offerings.

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