Deciding whether to take legal action against infringers is sometimes difficult for intellectual property owners in California and around the country. Choosing to allow branding elements or copyrighted material to be used without consent makes future infringement more likely, but aggressive litigation can sometimes prompt a disapproving media response and an angry public backlash.
For example, the bicycle manufacturer Specialized was criticized when it sued several businesses because their names were similar to the names of some of its products, and the online retailer Backcountry.com provoked a fierce public reaction when it launched lawsuits against dozens of companies with names that include the word ‘backcountry.” In addition to filing lawsuits in federal courts, Backcountry.com has made petitions to the U.S. Patent and Trademark Office. In 2018, the company was preparing a range of branded clothing and accessories, and it applied for trademarks to protect the word ‘backcountry.”
The outdoor community is close-knit, and it was not long before Backcountry.com’s litigation was being mentioned disparagingly on social media. Businesses that the company took legal action against include a coffee brand, an avalanche safety group and an electric bicycle maker. Media outlets soon picked up on the story, and the social media reaction developed into a call for a boycott of Backcountry.com products and a flood of angry online reviews. The private equity firm that owns Backcountry.com has remained silent during the online storm and seems committed to its legal strategy.
Attorneys with experience in this area may seek to avoid negative public and media reactions to trademark infringement litigation by working to resolve disputes at the negotiating table. Attorneys may also caution their clients against pursuing lawsuits against companies that are not competitors because their names contain generic words. In these situations, it may be difficult to convince a court that the alleged infringement would damage a brand or confuse consumers.