Legal has its role, but PR must have a decision-making voice—here’s why

Before your esteemed attorneys steer top executives toward a particular path, consider this cautionary tale of overzealous trademark protection, derived straight from the backcountry.

Consider the case of one of many companies called Backcountry. 

Before getting to which “backcountry,” let’s ask PR Daily readers if common sense and/or your knowledge of people who love the great outdoors would think kindly of a brand that would try to trademark “backcountry” and prevent others from using it?

Well, that’s what backcountry.com and its lawyers did. Once the sunlight of journalism and social media came into play, the story quickly morphed into a morality tale of what happens when lawyers don’t consider brand and reputation. But first let’s recount the facts and the unfortunate lawyering-up escapade. 

Backcountry.com is a leading e-retailer of outdoor gear. About a year ago, while preparing to launch its first branded apparel, it hired IPLA, the nation’s largest intellectual property law firm to send “cease and desist” letters and to sue multiple companies that were using “backcountry.” 

The allegations, according to IPLA interpretation of trademark law, were that these other companies were financially harming backcountry.com and causing marketplace confusion. Among the alleged infringers were Backcountry Denim (clothing), Backcountry Babes (a women-focused avalanche education company), Marquette Backcountry Ski and Backcountry eBikes. 

IPLA won settlements with several companies who could not afford the legal fees to fight for their use of the term—albeit with different-looking logos. Some companies even changed their names, such as Backcountry Denim rebranding as BDCo.com. Score points for the lawyers. 

Let’s flip to the crisis reputation side of the story. 

On Oct. 31, Jason Blevins, a reporter from The Colorado Sun, wrote about the backcountry.com actions. A Facebook boycott group started up and now has 22,000 members. Several news outlets picked up the Blevins piece. Hashtags sprouted, such as #youdontownthebackcountry and #greedygoats. (A goat is the symbol of backcountry.com.) Backcountry’s own Facebook page received many scathing comments. 

Within a few days, company founder and CEO Jonathan Nielsen succumbed to the outcry and dropped several lawsuits, fired his law firm and wrote a public apology, which read in part: 

In an attempt to protect the brand we have been building, we took certain actions that we now recognize were not consistent with our values, and we truly apologize. … Backcountry has never been interested in owning the word “backcountry” or completely preventing anyone else from using it. But we clearly misjudged the impact of our actions. The hope is that we can ultimately win back your trust, even if it takes time.

The company’s action immediately halted the lawsuits and complaint activity. There was no offer to repay the companies for the legal fees they incurred to defend the actions. It also hasn’t quelled the reputation backlash. The Backcountry Facebook page is still receiving negative posts; the company is responding to each post. It’s a bit early to tell whether sales will be harmed by this dustup.

Backcountry.com was entitled to pursue its legal strategy. Any company or organization is entitled to go to court to protect its intellectual property. Let’s be clear, backcountry is not as unique a name such as Kleenex or Hoover, both famous brand case studies for failing to protect a trademark.

Backcountry.com, however, was clearly misguided or unthinking in its reputation protection. This incident raises key questions: Did anyone at the company think about the reputation issues before embarking on the legal efforts? Was the PR team even in the room when the legal actions were approved? Will they be invited in going forward?

Here are lessons other organizations should take from this incident:

  1. Organizations make better decisions when multiple stakeholders are in the room. 
  2. Reputation should be considered when making legal and business decisions. You might be legally correct, yet end up with customers unwilling to buy your products or services.
  3. When you make a mistake, admit it, apologize and take corrective actions. After a bad set of decisions and actions, to his credit, the company CEO took action and accepted personal responsibility. 
  4. Apologies are just words and should be followed by actions. Let’s see what backcountry.com does to repair its reputation with customers and the communities in which they do business.

Andrew Gilman is CEO of CommCore Consulting Group, a crisis communications firm based in Washington, D.C. 

COMMENT

2 Responses to “Legal has its role, but PR must have a decision-making voice—here’s why”

    Heather Griffith writer/editor for Platform Online Magazone says:

    This was a very interesting read. I think the relationship between legal and PR teams is overlooked, despite being incredibly critical to the success of a business. Legal decisions can definitely have a huge impact on how a company is perceived by the key audiences and therefore, it’s important to keep PR in the loop.

    I think this can also speak to the importance of diversity and inclusion in the workplace — when there are more diverse voices being heard in the conversation, you are able to make better-informed decisions.

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