12/10/13 9:32 AM

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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.

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12/10/13 9:39 AM

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I think that Aspirin is still a trademark owned by Bayer in most countries.

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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.

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12/10/13 11:01 AM

Quite right. I was mistaken. Judge Learned Hand did decide that "Aspirin" had become generic in consumer sales. Though WWI did have a part in the matter. The suit in question had originally been filed by Bayer's American subsidiary, but at the end of the war the assets had been seized by the US government and sold to Sterling Products, who continued (and ultimately lost) the trademark suit.

Sterling kept selling "Bayer Aspirin" in the US and elsewhere until 1994, when they sold the rights back to the German Bayer for a billion dollars.

12/10/13 11:29 AM

And this just in.

http://www.bicycleretailer.com/north-america/2013/12/09/asi-says-calgary-bike-shop-can-use-roubaix-name#.UqdJ_X-9KSP

12/10/13 11:37 AM

"And we believe consumers are capable of distinguishing his bike shop and wheel line from our established bikes.”

And also know, unlike specialized apparently, that public relations plays a huge part in successfully navigating both consumer relations and business.


_________________
EDIT:

We need a rash of internet forum fodder like this below. Maybe the public relations dept is actually
coming up with some damage control and looking for
markers on the internet etc.

Dear Specialized,

I regret to inform you that both my Roubaix and Stumpjumper bicycles will be getting sold on Craigslist and I will no longer be a customer of any Specialized product. This includes shoes and bib-shorts among other products it will be practical to remedy me owning. I do not plan to have the cranks removed from our tandem as much as I'd like to, being Specialized brand/manufactured.

Your apparent illegal and poor handling of the Calgary bike shop 'Roubaix' name issue being the cause. Anyone reading this letter which I intend to post on forums can google "Specialized Calgary bike shop action" and/or "ASI AND license to Calgary bike shop" without the quotes for the poop.

Someone on, or your entire legal staff is VERY short sighted on the customer relations side of life,
and apparently also does not even know what legal right Specialized has/hasn't got regarding
the name Roubaix. In this post 2008 public disdain for corporate bullship, nice work folks!

If anyone at Specialized would like to have me feel differently, a publicized 50 percent off program to Afghanistan War Veterans would be about the only thing that will do it.

Best to you Sirs, and try to do something right about this, You can bet I am not the only one that feels this way!! Time to go shopping for a Fuji road and MTN bike to replace the ones I am offing.

Sincerely yours,
1/2 century cycling veteran from USA

Last edited by Sparky on 12/10/13 4:30 PM; edited 2 times in total

12/10/13 12:12 PM

Damage Control??

http://tomdemerly.com/2013/12/08/damage-control/

12/10/13 2:19 PM

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Your apparent illegal and poor handling of the Calgary bike shop 'Roubaix' name issue...

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12/10/13 2:45 PM

I think the reference to illegality is to the fact that, as it turned out, Specialized should not have been able to trademark "Roubaix" for goods and services related to bicycles in Canada.

Here's where things get a little sticky; Fuji has freely admitted that it did not trademark "Roubaix" in Canada. In the US, "Roubaix" was assigned to Fuji by another owner(!) and licensed by Fuji to Specialized. What the consequences are for the Canadian trademark situation are unclear...at least to me.

12/10/13 2:59 PM

I understand the "protect or lose" legal principle. But as has been pointed out by others, protection can take many forms. Considering the potential losses (or not) what idiot thinks suing is the best course, or even a mildly advisable course, of action?

12/10/13 3:13 PM

" What the consequences are for the Canadian trademark situation are unclear...at least to me."

Wild guess really, unless the ASI to Specialized License allows for sub license rights, Specialized can't sub license. Given that ASI already has said it will give license to the Calgary Bike Shop, what Specialized can do about it, or may be foolish enough to attempt given the fallout already...

Total conjecture of course. But this IS going to hurt Specialized already, just google and see how it is exponential accelerating. Specialized has to get on top of this fast and with benevolence, or pay the price in my estimation. If they are traded publicly the #s will show it or not regardless of my opinion.

Again, my conjecture.. Which does not mean it is not
on target to some degree at a minimum.


EDIT: ASI not ACI, corrected

Last edited by Sparky on 12/10/13 4:28 PM; edited 1 time in total

12/10/13 3:18 PM

ASI, owner of the Fuji brand has indicated they own worldwide naming rights to the Roubaix trademark. That pretty much covers Canada I would think.

ACI "We are in the process of notifying Specialized that they did not have the authority, as part of our license agreement, to stop Daniel Richter … from using the Roubaix name"

Possibly this will become a legal pissing match between ASI and Specialized.

12/10/13 6:06 PM

...Specialized will lose. If it was so inclined, ASI has the resources to buy Specialized and kick Sinyard and his legal staff to the curb. Specialized's patent on Horst-link suspension is probably due to expire soon, at which point ASI would have no need to license the Roubaix name to them. There really is no upside for Specialized to keep pushing this matter.

Of course, that doesn't mean that common sense will prevail.

12/10/13 6:40 PM

I have heard the S backed off.

12/11/13 6:25 PM

Indeed.

http://blogs.calgaryherald.com/2013/12/10/cochrane-war-vet-to-keep-bike-shop-name-after-agreement-with-specializeds-founder/

Know any fresh-out-of-law school lawyers ?, there will be openings shortly.

12/12/13 6:39 AM

...for doing the right thing. However, it remains to be seen whether this is just for PR or if it results in a change of policy at Specialized. I'm skeptical, to say the least...

12/12/13 7:36 AM

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Know any fresh-out-of-law school lawyers ?, there will be openings shortly.......

However, it remains to be seen whether this is just for PR or if it results in a change of policy at Specialized. I'm skeptical, to say the least...

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12/12/13 8:38 AM

Sinyard indicated in an interview that they've become very aggressive about t-mark protection due to counterfeiting and injuries from some of those products. The outside firm saw the "roubaix" wheels, and went ballistic.

Damage control? Sure. But otoh, there are a ridiculous number of products coming out of China with a fake S-carbon saddles, bars, complete Venge knockoffs, and even helmets. Fake Giro's too.

12/12/13 9:44 AM

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From this morning's Bike Rumor web site report, apparently the lawsuit threat was made by Specialized's outside law firm, not their own in-house guys.

I assume the outside firm is chartered with, among other things, intellectual property protection and didn't realize how it would affect their clients reputation and image. I expect the in-house staff would have handled it better.

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12/12/13 9:48 AM

http://www.npr.org/blogs/alltechconsidered/2013/09/27/226834651/record-label-picks-a-fight-over-copyright-with-the-wrong-guy

12/12/13 10:45 AM

I don't have John's level of experience by any means, but lawyers are a lot like plumbers. We can tell you we think there's a problem, and we can tell you we think we can fix it for you, but generally, the client gives the go code. For most organizations, that's inside counsel. I cannot conceive of this happening without somebody at Specialized having thought it was a good idea.

12/12/13 11:04 AM

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....we can tell you we think we can fix it for you, but generally, the client gives the go code.

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12/12/13 3:53 PM

But I don't do that with plumbers, auto repair, or bike repair places (well, OK, the last one, but largely because I trust them). And attorneys are (can be) considerably more costly than plumbers, and this sort of thing can be costly (as we have seen). It's possible, but unlikely.

12/13/13 7:12 AM

http://ridingagainstthegrain.com/2013/12/12/specialized-threatens-another-small-business-epix-gear/

12/13/13 9:11 AM

Apparently that's old news and precedes the Roubaix Café story. Specialized has reached an accommodation with both companies.

12/13/13 9:50 AM

...so it predates the Cafe Roubaix debacle, but it's not exactly old news. Where did you hear that Specialized had come to an accommodation with them?