by Marc Basiliere
December 11, 2013
“Things will be working out fine.”
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!
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.