12/8/13 1:13 PM

Looks like the Big S is at it again, perhaps being a bit overzealous in the protection of their "trademarks". This time, they are trying to force a shop in Canada to change their name, as it violates Specialized's trademark of "Roubaix."

http://www.cyclingnews.com/news/specialized-pressures-canadian-bike-shop-to-change-name

http://velonews.competitor.com/2013/12/news/must-read-specialized-muscles-vet-over-shops-name_310755

Of course, let's not forget their earlier row with Mountain Cycle over their Stumptown cross frame being too close to Stumpjumper
http://bikeportland.org/cats/news/stumptown-saga

I don't understand how it is defensible? Plenty of other companies have used "Roubaix" for tires, clothing, and even bikes (Fuji has a model called the Roubaix that dates back to 2001). And what of all the smaller "Roubaix" races out there (Rouge Roubaix, Battenkill Roubaix, etc.)?

Is the bad press they are getting worth the perceived "damage" that their trademarks receive from a small shop?

12/8/13 1:47 PM

Corp Bully BS. With the $$ behind them and in house Lawyers ir at least budget for out sourcing, Mom and Pop don't stand much of a chance.

12/8/13 2:19 PM

Specialized is working their way up to the hall of shame list of companies like ATT and BofA imo, and should be shunned imo.
I don't care who they have as riders or how many races their riders win, when they go around like that and have all their advertising/promotion dollars keeping the mainstream cycling press outlets in line.
Kinda figures that their bikes are so overpriced though.

12/8/13 4:59 PM

Unfortunately in our modern legal climate, if they don't defend their trademarks vigorously against all and any misuse, the courts will not support them against true threats. I suppose they could grant a specific license to the shop owner but they have to be aggressive.

Try calling your local high school band parents association "Band Aid" and see what happens.

12/8/13 7:00 PM

From what I've read on this, Specialized owns the "Roubaix" naming rights in Canada, but not in the US, thus there are numerous uses in the cycling industry in the USA of products using that name, including Fuji's use on a bike.

They (Specialized) are correct - legally, that they have to defend the name, else lose it. That said, they could have taken the ethical high road and simply licensed the use of the name in this case for a dollar, publicizing that as required. As it stands now, they look like idiots and there's a HUGE amount of buzz on this on other forums, pretty much all negative against Specialized. It also brings into question the "legality" of claiming trade rights to a well known geographical name.

12/8/13 7:17 PM

Yes, that would have been the right way to go, IMO.

Specialized is experiencing collateral damage--what happens when you try to solve a small problem with a nuke. The result is that you hurt yourself badly.

And in this case, they deserve all of the damage they have done to themselves.

12/8/13 7:27 PM

Instead of looking like hero's giving license they look like what they are. They loose not doing it pretty much the way I see it. But perhaps that is short term and they know it. Did they sent the letter out at the end of the peak of the season by chance.

12/8/13 7:51 PM

Picking on a vet with PTSD is going to come back to bite them in the a$$ and they absolutely deserve it! Is Mike Sinyard actually such a complete douche that he sanctions this type of behavior or is he clueless as to what his legal staff is doing? I would love to see the town of Roubaix, France sue Specialized for infringing on it's trademarked name.

Specialized makes some really nice products, but this is the last straw for me and I won't be buying any of their stuff. Hopefully there will be a boycott campaign that hits them where it hurts.

They owe Richter a major apology and I hope he doesn't cave to their bullying. Call their bluff and make them sue, which will really create a major debacle for Specialized.

12/8/13 7:55 PM

I was already selling my Roubaix... ;)

12/8/13 8:58 PM

Many, many years ago, a friend of mine ran a BBS system (FIDO- based, for those who remember that sort of thing). The board was called "Electric Avenue," after the song. Montgomery Wards at that time was trying to set up "Electric Avenue" appliance stores within their department stores.

All went well until my friend decided to add internet mail for his subscribers, and a year or so later, his ownership of the domain "electricavenue.com" attracted the attention of Monkey Wards. After significant legal expenses, he shut down a 20-line board and surrendered the name to Wards.

Wards was belly-up within a year or two.

So, what goes around comes around...

12/8/13 9:22 PM

"Many, many years ago, a friend of mine ran a BBS system (FIDO- based, for those who remember that sort of thing). "


107/534 here. [and a few others]

12/9/13 10:04 AM

Reminds me of the time some years ago when Bank of America went after the Bar of America in Truckee, California. The bank lost; the Bar of America is still there and still uses the name.

12/9/13 11:08 AM

Here is an old NPR report on the WSJ's attempt to intimidate the Small Street Journal of Newburgh, Maine. IIRC, the attempt failed with the WSJ trying to cut its losses...

I know nothing of trademark law, but someone would have to convince me that Specialized can effectively trademark "Roubaix," that being a place name, part of an iconic bicycle event, part of many product names over at least 40 years, and having nothing to do with any unique Specialized expertise. Could I trademark "New York"?

12/9/13 11:23 AM

quote:

---

....someone would have to convince me that Specialized can effectively trademark "Roubaix," that being a place name...

---

12/9/13 2:20 PM

Having done a (very) little trademark work, I think Dave's got it.

I note that in the USofA, "Roubaix" is registered to Toshoku America, Inc., in International Code 12 for goods and services: bicycles. Toshuku is apparently a food importer, and has assigned the trademark to ADVANCED SPORTS, INC., which appears to be Fuji.

My guess (and that's all it is) is that Specialized licensed the non-exclusive right to use "Roubaix" from Fuji in the US.

In Canada, however, Specialized apparently does have a trademark on Roubaix, and that's where this action is going on. I'm quite sure that Specialized could license the use of "Roubaix" to the shop for a nominal fee. But they don't want to.

12/9/13 3:01 PM

Well after a little googling maybe you can trademark a name in relation to a product, though I don't know the finer points of a number of issues that may be present here. OTOH, do you know any potential buyers of expensive bicycles who would confuse this small Canadian shop with Specialized?

12/9/13 3:44 PM

I don't think that there's any real possibility of confusion here. And I think that Specialized's legal staff should have told it so, and suggested to their client that it grant the Roubaix Cafe a limited license for a nominal fee.

12/9/13 10:36 PM

Just when you thought that Specialized couldn't look any worse...

http://bicycleretailer.com/north-america/2013/12/09/asi-says-calgary-bike-shop-can-use-roubaix-name

Now they not only look like complete dirtbags, but incompetent complete dirtbags who were trying to enforce a trademark that they never had the right to register.

Bravo to ASI for bitch-slapping Specialized and doing the right thing by Cafe Roubaix! It's nice to see the bully get taken down by the real big dog on the block.

12/9/13 10:54 PM

I will say that I was totally on the little guys side, until I read the line about him having a line of wheels with the Roubaix name on them, to me it seems that by actually marketing a line of products with that name he could be stepping on Specialized's toes.

12/9/13 11:36 PM

Someone at specialized need to get fired it sounds like...

12/10/13 6:29 AM

...have the shop name "Cafe Roubaix" on them. There are multiple examples on the following page:

http://www.caferoubaix.ca/the-studio.php#

Read ASI's interpretation of the situation for a reasonable approach to the situation:

“While ASI does have the authority to object to Mr. Richter’s use of the name and while we at ASI understand the importance of protecting our bicycle model names, we believe that Mr. Richter did not intend for consumers to confuse his brick-and-mortar establishment or his wheel line with our Roubaix road bike. And we believe consumers are capable of distinguishing his bike shop and wheel line from our established bikes.”

It's a triumph of common sense, something that is apparently lacking at Specialized.

12/10/13 7:19 AM

I'm forced to wonder what the size of the market is of people wishing to buy a Specialized Roubaix, who would not buy it if it was named the Specialized Claim-Jumper, or who would buy a Huffy from a shop named Roubaix instead.

Exactly how many sales, and how much profit did Specialized believe it was going to lose due to the name confusion? I would estimate, using some common sense, exactly zero, but I could be wrong.

12/10/13 8:28 AM

Patent and Trademark law requires patent or trademark holders to defend their property from encroachment and misuse. If you aren't diligent you lose your exclusive rights to the property. I expect that requirement extends even to small, apparently non-threatening misuse.

The most notable example of loss of trademark protection was Bayer's loss of the name "Aspirin". That was their trademark name for acetyl salicylic acid but their lack of diligence in protecting the trademark caused them to lose it's exclusivity and the name became a generic.

Maybe Specialized over reacted but doing nothing could have had long term consequences too.

12/10/13 9:20 AM

Specialized could have been diligent and still permitted Cafe Roubaix to use the name. All they would have to do is to set up a license, for which they could charge a one-time fee of (say) a Looney.

Diligence doesn't mean shutting people down. It means protecting your rights, and a license does that.

12/10/13 9:24 AM

It is true that a trademark can lose protection if its owner doesn't enforce its rights, but that doesn't require it to forbid potentially infringing uses; licensing, even for a nominal sum or non-monetary consideration, is an acknowledgement of the trademark holder's legal rights. So Spec could have protected itself in a less opressive way.

There are instances of trademarks being lost for lack of diligence, but I don't think the aspirin story is correct. I think that Aspirin is still a trademark owned by Bayer in most countries. In the US, UK, France and maybe some other countries, the right was taken away as part of the war reparations exacted in the Treaty of Versailles after WWI, which essentially gave the Allies the right to appropriate all property within their territories which was owned by German nationals.