From what I understand the nature of trademark law is that if you don't defend your trademark, you lose it. It's not nice, but what are they supposed to do? Abandon their trademark?
That’s an oft repeated myth, but it’s not quite true, certainly not as broadly as stated.
From an article by the EFF:
> The circumstances under which a company could actually lose a trademark—such as abandonment and genericide—are quite limited. Genericide […] is very rare […]. Courts also set a very high bar to show abandonment (usually years of total non-use). Importantly, failure to enforce a mark against every potential infringer does not show abandonment.
They are supposed to do an existing brands search--which starts with the no-cost-to-the-user registered trademark search provided by the USPTO--before consciously designing a defensible mark.
That means no one in your category or nearby categories is already using it, and it isn't already a one-word generic term.
A term like "backcountry outfitters" is more defensible together than either word alone, but still isn't very good, because it describes a lot of existing business. Selecting just "backcountry"--a dictionary word--as your whole trademark is pure madness. It's analogous to claiming "zymurgy" as your trademark and sending C&D letters to every micro-brewery in the US, ordering them to stop using the plain dictionary term for what they do when describing what they do.
Examples of defensible trademarks would be "Goatsbeard Gear", "Spelunkatorium", "Voyageur's Choice", "Trailhead Traders", "Avalanchador", "Rockspider", "Backwild Country", "The Hinterlandery", "Boondock Swamp Charters".
The point is generating a unique, distinct, memorable, and non-confusing term.
Not to sound troll-y but yes, maybe. What if they had an actual unique name? What if instead of paying lawyers they were serving their customers?
They have trademarked a VERY common word. Now they're distracted by "defending" it. If that one word is all that stands between success and failure they're doing it all wrong.
So why is this not an article angry at the USPTO for granting overly broad trademarks?
Of course companies are going to try to overreach and get as much as they can. The point of having a government is to regulate and turn down unreasonable requests. That's where this needs to be fixed, not by expecting profit driven companies to altruistically leave money on the table. It should be obvious by now that doesn't work.
Is the granting overly broad? Yeah. Probably. However, nothing is granted unless some entity applies for it. Backcountry could / can choose another name. They could serve customers. Instead they're paying lawyers to serve legal threats.
Sure, they can do that. But it's a short sighted growth strategy.
Ethics does not depend on the state. In many "backcountry" areas, the nearest LEO is several hours away. Even so, crime rates are lower than in many urban areas.
Nonsense, clearly David Ollila has provided the example to follow in such a situation.
Depending on a random federal bureaucracy to act as you would prefer rather than how they are set up to act is unlikely to satisfy. Private equity executives are human, if only barely so; they also have ethical duties. This episode is a test of the people who purchase clothing and equipment for outdoor activities. If we pass the test, backcountry.com will either change their unethical policies or go out of business. If we fail, we'll be buying ever-shittier products from an ever-shittier retailer.
Bureaucrats are also human. This is hardly a random federal agency, it is the one specifically devoted to handling this sort of thing. It is not too much to ask that they actually do that.
Not every company who gets sued is going to have the resources to fight it. It's also not reasonable to expect consumers to police the morality of every company they do business with. This is literally the purpose of having a government, to offload the responsibility of policing to people dedicated to it.
They are human, but they are not judges. When they act as judges, people have to spend eight years in federal court. [0] Much better for USPTO to let nearly everything through, trusting that most people are just trying to do business. When exceptions arise, they arise in the courts where they belong, but only after either A) someone infringes a valid trademark in some fashion that the courts can address and the holder decides that the courts should address that infringement or B) as in this case, frivolous dickheads decide to subject the public and the courts to some of their dickheaded frivolity.
You and I may have very different ideas about government. Do you support anti-BDS legislation? [1] Should people only speak the right speech, with the advance permission of the proper authorities? Fuck that, we have 1A for a reason. We have the right to say what we want and do business with whom we want. We also have the right not to speak and not to do business.
The entire concept of trademark is a creation of the state. If it no longer benefits the people, it should be fixed or eliminated. If cases like this were more common, I would support the latter alternative.
But from this point of view, they haven't been defending their trademark. The companies they're going after seem to be established and have been doing business for a while.
No they shouldn't, but in that case the burden is on the USPTO to deny the application in the first place. Once the trademark is granted, of course the company is going to defend it. The party to blame is the one granting it.
Anyone can claim anything as their trademark without registering with the USPTO. Registration is most useful as proof of using the term in commerce first, and also letting other businesses know that the term is already in use as a trademark.
Trademarks aren't examined for validity prior to registration, as patents are. Most are barely even glanced at until a court case brings one into question. All the trademark judges should already know that "backcountry" is not a defensible trademark, but the USPTO is not under any obligation to alert filers that their trademark won't hold up under scrutiny. They can send out as many C&D letters as they please, and maybe secure exclusivity that way, but if anyone had the resources to fight it (as the VC-backed firm they chose not to C&D), they would surely lose. As would the firm that chose to fight, because IP attorneys are expensive, and the court battles are long and protracted, especially if one side is using the process as a weapon.
> Trademarks aren't examined for validity prior to registration, as patents are.
Well, it sounds like that's the problem right there. It seems like it would be a lot more efficient to hire a few people at the USPTO to review applications instead of spending millions of dollars in lawsuits.
Trademark attorney-ing is a lucrative business. Don't go assuming that trademark law is set up entirely for the benefit of business-owners and their customers.
