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.
[1] https://www.eff.org/deeplinks/2013/11/trademark-law-does-not...
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.
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.
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.
Sure, they can do that. But it's a short sighted growth strategy.
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.
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.
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.
[0] https://www.ipwatchdog.com/2017/06/26/supreme-court-rocks-tr...
[1] https://www.bloomberg.com/opinion/articles/2019-02-06/anti-b...
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.
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.