Battle of Roubaix treaty announced

by 13

“Things will be working out fine.”

No connection
No connection

Following a provocatively-titled Saturday post on the local Calgary Herald blog, a Canadian bike shop found itself at the centre of an exploding social media storm.  The post, which prompted a widespread outpouring of support, detailed the implications of a recent letter from Specialized Bicycle Component’s Canadian arm.  While the losers, winners, and white knights in this story are quickly becoming clear, its lessons are less so.

Given the similarity between the shop name – Cafe Roubaix – and that of the Specialized Roubaix road bike, several months ago the bicycle company wrote the shop, demanding that the shop stop using the Roubaix name or face legal action.  Heavy-handedness on the part of one of the world’s most dominant bike brands?  Not so fast.  Prior to opening his shop, owner Dan Richter began using the name on his own brand of hand-built wheels.  A quick online trademark search would have indicated that that Specialized had registered in Canada for trademark protection of the use of the term Roubaix when applied to “bicycles, bicycle frames, and bicycle components, namely bicycle handlebars, bicycle front fork, and bicycle tires”  As the wheels could be considered “bicycle components,” such a search might have triggered a pause on Cafe Roubaix’s part.  The decision to proceed without a full understanding of the applicable laws or to contact the trademark holder looked, as of Saturday, to have set the shop up for a name change- or a $150,000 legal bill.

While many commenters were infuriated by a large company’s (quite common) decision to trademark a name inspired by of one of road cycling’s most storied single-day events (the Paris-Roubaix race), it was the perceived bullying on Specialized’s part that raised the most ire.  Reporting that portrayed shop owner Dan Richter as a “war vet” “who says the running the bike shop has helped him deal with the post-traumatic stress disorder that ended his military career” inflamed sympathies and allowed the players to fall neatly into persecutor and persecuted roles.  Little was said about the business owner who did “some research” and decided (knowingly or otherwise) to incorporate a registered trademark into his brand name.  Less still was said about the fact that that business was a component brand first and a bike shop second.

Given minimal response from Specialized, the Internet raged on and it wasn’t until Tuesday that news broke that would move an unfortunate situation forward.  As some had pointed out, bicycle brand Fuji’s use of the Roubaix name predated Specialized’s and it was in fact Fuji’s parent company Advanced Sports International that held the initial Roubaix trademark as it applied to bicycles.  Under the North American Free Trade Agreement, trademark protection granted in the United States is applicable in Canada – and vise-versa – giving ASI first-use trademark rights.  While it may not have been well known in the Canadian office at the time that the Canadian trademark was applied for, Specialized licenses the Roubaix name from ASI.  And, as explained to US trade magazine Bicycle Retailer and Industry News, it was Specialized’s move to protect the Canadian trademark that brought the issue to ASI’s attention:

“ASI only recently learned of Specialized’s registration of the Roubaix trademark in Canada and ASI’s position is that Specialized’s registration of the mark in Canada was inappropriate under the terms of their license agreement. ASI has used the mark in Canada for well over 10 years, giving it first-use trademark rights in Canada.”

In short, the Roubaix name was not Specialized’s to trademark – in Canada or elsewhere – or theirs to defend.  The Bicycle Retailer article goes on to suggest that ASI did not foresee any harm coming from stemming from confusion between a model of road bike, the small bike shop, and the shop’s in-house wheel line:

“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,” Cunnane said in an email to BRAIN. “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.”

Following all-day talks between rightful “Roubaix” trademark holder ASI on Tuesday, would-be trademark defender Specialized, and Cafe Roubaix, Cafe Roubaix owner Dan Richter thanked on the shop’s Facebook page those who had brought attention to his plight.

I had a great conversation with [Specialized founder] Mike Sinyard today, and I am happy to let everyone know that things will be working out fine.

We thank you for your continued support. You have all been so very awesome to us!

In the draft of giants
On the wheels of giants

While trademark holders do have the right – and at times obligation – to defend the names and terms that represent their brands, the outpouring of social media support for Cafe Roubaix in this case is a reminder that the Internet does not react well to perceived bullying.  Still, the trademarking of place names for products is neither unusual nor terrible: Would Marin or Santa Cruz bikes be the same without that explicit tie to the land of their birth?  Would Worcestershire Sauce taste so strongly of Worcester?  The modern trademark system protects symbols and words used to identify a product as coming from a particular business.  It should be remembered that those with the most to lose are those who have invested the most in their products.  Deliberate encroachment on those trademarks detracts from the very real efforts (engineering, manufacturing, and marketing) of the trademark holder, is a disservice to the consumer, and is right to be discouraged.

Ultimately, when there is little liklihood of confusion or threat from a similarly-named product, it is well within the trademark holder’s discretion to come to an agreement allowing others to use part or all of the trademark.  Because it is common policy for large companies not to comment on pending or ongoing litigation, and without being party to the communications between Specialized’s and Cafe Roubaix, it is difficult to assess the reasonableness or even the aggressiveness of their position.  Still, more open communications from the brand might have led to a more balanced public response. Of course, it’s probably best to actually hold the trademarks that one is incurring significant PR damage trying to defend.

Cafe Roubaix’s – and Dan Richter’s – love of the sport of cycling, its history, and its heroes comes through on their website.  As one who retired from a stressful career to start a shop doing what he loves, Richter is living a dream shared by many riders.  For those who are considering doing the same, it could be hoped that his experience serve as a lesson in the importance of due diligence.

And then there’s American Sports International and CEO Pat Cunnane.  Above all of the shouting, the man and the organisation come across as level-headed and reasonable.  They know and make it clear that they have the right to defend their trademarks as necessary- but given the situation have done what many believe to be the right thing and are prepared to come to an agreement allowing Cafe Roubaix continue as-is.  This means that the now-famous Dan Richter will be free to continue to share his passion for cycling and, in particular, the race known as The Hell of the North.

Comments (13)

    I think that as they’d specified the types of component the roubaix name was to be registered for: “bicycle components, namely bicycle handlebars, bicycle front fork, and bicycle tires” they hadn’t registered it for wheels and therefore he would be fine to use it for that anyway

    That’s the best and most well-balanced article on the whole thing I’ve yet seen!

    Sorry for the long post but I think there are some important points regarding this article.

    While not someone who was shouting obscenities on the Specialized FB page, I do think this article is unduly lenient towards ‘the big S’. The cynical part of me suspects that’s because STW don’t want Specialized UK to pull any future advertising and lose revenue. Which is sort of understandable to some extent.

    Despite ‘the big S’ basically being told to wind their necks in by ASI, this article seems to place the blame more on Dan Richter and his perceived lack of research. Turns out if he had done “A quick online trademark search” as mentioned in the article or even if he’d gone to the top and contacted ASI, shows there’d have been little or no grounds for ‘S’ action to stop him using that name for wheels or shop.

    While it was mentioned that ‘S’ had no legal grounds for what they attempted to do, how about mentioning that THEY should be doing “a quick search” themselves on what they can or can’t do legally?? Seeing their legal department will have hundreds of thousands of dollars education between them and that this is supposedly what they do for a living. If a few of keyboard warriors can work out quickly that the Roubaix named belonged to ASI, (and is used by many other companies) then Specialized should have been able to work it out very easily.

    I think most of the people furious about this are angry partly at Specialized and partly at trademark laws etc. in general. I guess people feel; how about any bike related business that has the name ‘Singletrack’ or ‘Velo’ on a product title? Where would it end if a big company can attempt to deny any use of very common cycling vocabulary?

    Given this article has no attribution, can I assume it was written by Specialized’s marketing department – because it sure reads that way. Of course they admit that Specialized did wrong, but only as far as it has to based on the undisputed facts. The general tone is exessively critical of Mr Richter, and overly sympathetic towards Specialized IMHO.

    As already mentioned above, the reference to the actual trademark is rather economical with the truth. If the reporter had bothered to read the results of a quick trademark search properly he would have found that the “bicycle components” covered are actually specified and don’t include wheels.

    It needs pointing out that most of the value of the word “Roubaix” comes from it’s history within the cycling world, not from any efforts on Specialized’s part. In that sense they are freeloading rather than contributing.

    Finally your comparison with Marin, Santa Cruz and Worcestershire Sauce is disingenuous at best. All of those products do actually originate in the location they’re named after. The only connection between Specialized and Roubaix is that they’ve appropriated the name. In fact this goes right to the heart of one of the issues – that deceptive trademarks which imply some non-existent geographical connection are not allowed.

    You might do well to read this article by an actual trademark lawyer: http://redkiteprayer.com/2013/12/the-explainer-because-i-ing-hate-bullies/ – I note you preface bullying with the word “perceived”. Well it’s actual, not just perceived, because as with several other similar actions by Specialized’s legal department, it is unlikely that they would win if it got taken to court. The bit you don’t mention is that they’re simply relying on the small guy backing down rather than face a huge legal bill even if they win. It’s notable that the only small guy who did take them all the way to the court room recently did effectively win. It’s this aspect of the way Specialized operates which is so distasteful and has resulted in this reaction from lots of normal honourable people.

    Plus one on the above comments. This is not some Daily Mail frenzied witch hunt that requires a more deliberately measured response. There are no fine or hidden points not revealed in the many articles published on the whole shitty affair. Its about acting in a decent way and not being a douche. Simple as.

    Lostboy and Aracer ,

    Thank you both for taking the time to voice your concerns with my piece. First and foremost, this was written without concern for Specialized or ASI/Fuji retribution or reward. I hope that as Singletrack readers you know for what we stand for and that – while we don’t always take ourselves seriously – we don’t take that sort of thing lightly.

    As far as going lightly on Specialized in general, beyond basing a legal (if unpopular) attempt to defend their trademark on an improperly tradmarked term, there’s little objective criticism that could add value to the discussion. Of course, they should not have registered a licensed trademark- and as much is said. Yes, their actions may have been heavy-handed, but the defense of trademark vs. public perception calculation – and the results – are the company’s to make and to live with.

    There was no intent to mislead by removing the product examples from the trademark coverage- it was a conscious decision to clean up the sentence and to clarify thought. The entire list is and has always been in my initial post. Because it has caused confusion, I have added them back in to this story, but the list is not exhaustive: the Roubaix name has also been applied to bar tape, but I can’t imagine that Lizard Skins’ lawyers would advise them to go ahead and produce a competing Roubaix tape because it wasn’t listed as a component type (were the Canadian trademark valid etc. etc.).

    As far as Charles Pelkey’s piece in Red Kite Prayer, it is one what I had previously read and appreciated. However, what Pelkey fails to mention even once is the fact that, as a wheel brand first and shop second, Cafe Roubaix was producing bicycle components under the disputed name. This makes the case for bullying as defined by the cited 2011 report less cut and dry. Given this omission, I have to respectfully disagree with Aracer’s assertion “it is unlikely that they would win if it got taken to court” (again, had the Canadian trademark been valid). Not a trademark lawyer, I would have to agree with conventional knowledge that the shop name would be reasonably unlikely to cause confusion.

    Please note ASI’s assertion that “ASI does have the authority to object to Mr. Richter’s use of the name.” This goes back to the root of the issue: the trademark holder has a right to challenge those who encroach on their marks. It is important to note that neither marks nor the products be identical. According to the US Patent and Trademark Office (where “Roubaix” is registered) “When marks sound alike when spoken, are visually similar, and/or create the same general commercial impression in the consuming public’s mind, the marks may be considered confusingly similar.” The same is true of products: “To find relatedness between goods and/or services, the goods and/or services do not have to be identical. It is sufficient that they are related in such a manner that consumers are likely to assume (mistakenly) that they come from a common source.” Is it reasonable for a consumer to expect that “Roubaix” bicycles and “Cafe Roubaix” wheels came from the same source? Perhaps.

    As far as being unfair to Cafe Roubaix and Dan Richter (who I have never met), I do not think that expecting a business owner to do their homework prior to investing their life savings is unreasonable. Lawyers are expensive, yes, and it is well within his right to take risks or make mistakes (something we have all done). But as a small business owner, I know that taking responsibility for those oversights is part of the deal.

    As far as trademarking general or cycling-inspired terms, “Singletrack” is indeed registered in the UK by our publisher, protecting its use selling publications (online and off), printed matter, and clothing. There is no attempt to “deny any use of very common cycling vocabulary”- only to protect the hard work that has been invested in creating the Singletrack brand.

    Marc

    Just because something is legal – “a legal (if unpopular) attempt to defend their trademark” – doesn’t make it right, or stop people getting uptight about it.
    Amazon et al are legally not paying tax in the UK – it’s still a shitty thing to do.
    This sort of ‘well, the law says its OK’ attitude is precisely why these large corporations keep on getting larger and more powerful and pretty much doing what they like.

    Sorry, but I tend to agree with thelostboy and aracer and think the article does come across as a bit biased – for example, using terms like “inflamed sympathies”

    Just wanted to add, for Lostboy.
    Although the Legal dept at Specialized may have thousands of dollars of education – the Fuji (or ASI) link would only be known to people that have spent a long while geeking it up in the bike industry. I’m pretty sure Specialized’s legal team, although probably enthusiastic about bikes, knew bugger all about the history of the name they were defending…..
    Saying that, if they’d Googled it first they’d have probably got something, maybe they were just being self important.
    I wouldn’t at all be surprised if the responsible “team” were given their P45’s on Monday morning

    Hmm… “it could be hoped that his experience serve as a lesson in the importance of due diligence” in the article refers to Dan Richter and other people starting up a new business, but let’s face it, it’s advice that established companies with reputations to protect could do well heeding as well, before leaving brand management to the lawyers.

    it could be hoped that the experience of finding out that you don’t have the right to defend a trademark serve as a lesson in the importance of due diligence

    Thanks for the reply and for taking our comments on board, marc – I’ll take back my allegations about it being written by Specialized!

    You make some good points – his wheels came before the shop, which is a point some have missed and does make a difference. You also clearly understand things better than a lot of those making noise. However I still take issue with some of your points.

    The mention of specific products is actually really important, and not just a minor point, nor do I believe that the list is “not exhaustive” as you claim. The word used is “namely”, not “for example”, making it clear that the trademark is limited to those specific items. Sure there might be Roubaix bar tape, but whilst it would probably be unwise for another company to try and sell Roubaix bar tape, it’s not actually covered by the trademark. Specialized never have (and most likely never will) sell Roubaix wheels though, hence the idea that wheels branded “Cafe Roubaix” with nothing which looks like a Specialized logo could confuse people is unlikely – we come back here to the point that Roubaix is an
    iconic term in the cycling world, one which customers of high end wheels would know of in its original context. It’s quite funny the conflict between the lawyers (who claim no association) and the marketing department who are doing their best to make the most of the association.

    Regarding the most important issue of bullying, I stand by my claim that the expectation of Specialized’s lawyers was that the small guy would back down due to the cost of mounting a defence, not that they were expecting to win in court. They have history on their side here – pretty much all the small guys have done so, some when faced with even more spurious challenges. I note that you even agree with me that it is unlikely the shop name does actually infringe, hence pursuing him for the shop name is exactly what the 2011 Trademark Office comments were referring to (in the original article Mr Richter claims to have offered to drop the name from the wheels, hence they were only left with a challenge on the shop name). What’s more we come back again to the common usage of the term “Roubaix” – Mr Pelkey’s invocation of the 2011 report actually relies upon that and not at all on whether the shop or the wheels came first – that is an irrelevance. To quote him again: ‘Honestly, a “reasonable” person probably doesn’t think of Specialized when someone utters the word “Roubaix.”’

    Of course ASI assert their authority to protect the trademark – they could hardly do otherwise, as to comment in this situation without making such a claim would weaken the trademark due to non-enforcement. Whether they actually have the right to do so and whether the original patent is valid remains untested – I’d certainly take issue with some of the claims of their lawyers when it was originally taken out. The registration was initially refused by the Trademark Office on the grounds that it was geographically misdescriptive, part of the reasoning being: “Roubaix, France is the location of a well known annual bicycle race”. To which the response was: “There is no such evidence that Roubaix is recognised, by the average bicycle purchaser, as the termination of a famous bicycle race”. In which case the question has to be why name your bicycle product after an obscure French town in the first place? Though I’m not inclined to kick ASI too hard given their exemplary handling of the situation.

    You still complain about Dan not doing his homework, whilst ignoring the failure of Specialized to do their homework – to paraphrase the advice given to me recently by a truly excellent lawyer, they are big boys and should have known better.

    I think what’s missing, or being understated, in this discussion is the thing that is at the root of the public’s disquiet over Specialized’s (or Specialized’s Canadian team’s lawyers) behaviour, which is the perceived morality of trademarking an iconic cycling name. I know it’s an area than many fear to tread when they can hide behind the “They were legally within their rights” argument, but many don’t like the idea that a brand can essentially hijack the history and prestige of an event such as Paris-Roubaix to further their commercial ends, and then compound the matter by preventing others doing the same (no matter how legal it is).

    Specialized had made no contribution to the history of the race prior to naming a bike (and presumably trademarking) “Roubaix” in 2004 (I think?). In the following years they spent what I can only guess was a very significant amount of money to get a Roubaix win on a Roubaix. It must have been a priority in the deal to supply Quick Step from 2007, but I guess they saw it as money well spent as it returned two wins for Boonen aboard a Specialized in 2008 and 2009. They then got distracted by Bertie, for a few years, but Tom did it again for them in 2012.

    Undoubtedly many now closely associate the bike Roubaix with the race Roubaix. American lawyers might argue that the association is weak in the mind of most Americans, but that’s fairly disingenuous when the naming of the bike and the sponsoring of European pro teams is more to do with establishing brand and sales in Europe, not North America. Here the awareness of the race and its history is much stronger and it is the perceived hijacking of that (or perhaps piggybacking is a better term) which draws ire and scepticism from cycling fans.

    I know Marc’s piece is just one perspective from the US, and is certainly not the only perspective from the US, but it is a very North American perspective and one which perhaps misses some of the European context of the debate. It is the European context that is important here. Specialized named a bike Roubaix to give it a European flavour that would appeal to US buyers. They paid for it to be ridden to victory to sell it to European buyers, which in turns helps reinforce it’s cachet across the Atlantic. Arguments that it has little association with the place or the race are nonsensical as the entire marketing strategy is clearly tied to that idea. Once you’ve firmly co-opted the location, the event and the history into your marketing strategy I think people feel you have a moral responsibility to handle it carefully.

    Obviously lawyers won’t see it like that.

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