>They're not required to choose a word already ubiquitous in their industry and trademark it.
That has nothing whatsoever to do with the comment you replied to.
>They're taking "defense" to a ridiculous, douchy extreme.
Unless they did not send letters prior to filing their cases (of which I am unaware and the article did not mention), then everything mentioned is neither ridiculous nor douchey except as far as trademark law in business always is. If the term actually does not indicate to consumers what company manufactured it due to its common usage, all that needs to happen is one of the challenged companies put up a defense claiming genericization or lack of validity of the original trademark (that one is probably more suitable in this case) and a court will decide if that's so. With trademark, as a company you do not get a choice.
If they choose not to fight a small business using the name, that is a 100% legitimate defense for Walmart to use when they release Walmart Backcountry Skis that have nothing whatsoever to do with Backcountry.com.
The EFF article provided by another commenter does not 'debunk' anything. We're not talking about a company suing people for talking about the company. We're talking about a company suing other companies for promoting products in the exact same space with the trademarked name. This is what trademark law was kind of created for in the first place. If you can convince a court that if you walked into a Walmart and saw Walmart Backcountry Skis on sale that it would never cross the mind of either you or any other consumers that the Backcountry company might have been involved in their production, that is your defense and the trademark will be nullified and the lawsuit will be won.
Except that Backcountry.com is suing companies far outside their space, like coffee producers.
And Walmart should be able to sell “Walmart Backcountry Skis” because backcountry skis are a subtype of skis like alpine skis or cross country skis. Backcountry.com did not create the friggin product space or popularize the term “backcountry.” It’s a generic blanket term that refers to an entire range of activities.
I'm gonna go ahead and just disagree with every premise in your comment. "Backcountry skis" are a thing, independent of any brand. This is like if I started a knife company and called it Pocket(TM). I wouldn't want WalMart to start selling "pocket knives", or else I might lose my trademark, huh.
I was not aware of this at all. How did Backcountry get the trademark in the first place? It should definitely fail on the first challenge if backcountry is literally a subtype of ski and pre-existed. I know nothing about skis, and all the comments here and in the article made it sound like the furor was all over the generic adjective of 'backcountry' which I took to just be a synonym for 'rustic'.
The reason it doesn't fail on the first challenge is in the article and it's the same as patent trolls: most of the companies they've gone after can't afford the legal fees, so they simply roll over a lot faster than Philips did. By the time they get to Philips they have years of success getting other companies to, on paper at least, agree with them. Don't know if that strengthens their case in reality, but the fact is Philips sounds the first one to have put up a real fight. It's still a bullshit judicial decision, though.
The argument that they have to do this to defend their trademark also falls apart when you remember why they haven't sued Kohlberg & Co: their trademark was already in use. And by a supplier, no less.
Correct. This article reads like someone who has no knowledge of, or familiarity with, trademark law. Trademarks have to be defended or they are lost, and additionally almost all trademarks are applied to a very broad list of things just as standard practice. Even if your company is only making T-shirts, for instance, it would be very common to also have your trademarks cover toys, dishes, tools, and all kinds of other products just in case you might want to plaster your trademark on those in the future.
That being said, the fundamental purpose of trademarks is to eliminate consumer confusion. In order to defend against a challenge, you would need to present to the court strong evidence that there is very little chance a consumer might be confused as to the maker or origin of the goods due to the name. For instance, if you made a line of frozen pizzas and called them 'backcountry style' pizzas, is there a chance that some consumers might think those pizzas were made by Backcountry.com? You've got to be able to show that this is not a likely scenario even if Backcountry.com starts manufacturing frozen foods (assuming the trademark covers frozen foods, I have no idea if it does, but it wouldn't surprise me if it did).
I developed a website for reserving parking near airports and seaports years ago and the site launched under the name BookParkFly.com. Shortly thereafter, the business (I was just a contracted web developer) received a letter from a lawyer representing the people who owned a sorta-similar trademark in the same space for a company called, if I remember correctly, Park 'N Fly. I personally thought we might have been able to win a challenge in court, but the company didn't want to fight it so changed the name and rebranded everything. (It's Book2Park now if you're curious, but I severed ties with them years ago. Before they were featured on Krebs after getting someone else to slap in an insecure Wordpress blog after I told them if Wordpress was going to be used it had to be watched closely for security concerns...)
Trademark challenges aren't "bullying" or "aggressive". They're basic law 101 and really shouldn't surprise anyone in business. That's why you pay an attorney to do a trademark search if you really want to use a certain name.
Also the accuracy of your claim has already been debunked fairly well elsewhere in the thread.