Specialized threaten to sue over Roubaix name!

Good article on bikebiz
With a comment from IP lawyers regarding the ‘we have to defend it’ line.

I remember Orange running a series of ads – black and white photos with just the orange coloured. The phone company orange than ran some ads with the same concept, looked very similar. Lester from Orange even mentioned it in MBR saying how he wasn’t fussed and would never be able to take on a phone company.

In protest, i refused to look at my Stumpy Evo today.

http://redkiteprayer.com/2013/12/the-explainer-because-i-ing-hate-bullies/

From the article that aracer linked:

The beauty is that a small business, while unable to mount a full-on legal fight, can take the issue to the court of public opinion. On that front, Specialized doesn’t stand a chance.

That’s the key point IMO, While specialized might “Win” and force a small business to change their name that Relatively small action will actually backfire.

It won’t do specialized crippling damage, but it does affect the perception of Specialized as a brand by an awful lot of cyclists, it makes them look like bullies, using a rather weak pretext to flex their legal team and inconvenience someone who, presumably, bore the company no ill will, and did not actually impinge on their business activities in Canada…

Fuji on the other hand have a much stronger case against Specialized’s use of the name “Roubaix” for their bike in the US, I assume they came to an arrangement some time ago…

I am tempted to have a T-shirt printed with “Special Eyes, Roobay TM” and see how far I get…

According to something I read (sorry no linky, can’t remember where) Fuji originally owned the “trademark” and sold it to Specialized (presumably with some continuing licensing deal for them included). Such things do make a mockery of the assertion that they had to issue legal action to defend the trademark though.

If anyones considering taking a stand against this and selling off any nice specialized kit I’ll be happy to take it off your hands.

Just considering the legal position for a sec and not the moral/emotional aspect.

If they don’t contest it their trademark registration doesn’t stand therefore anyone can use it. To some extent they are FORCED to contest it otherwise their trademark is worthless.

Having said that, I cant imagine his shop would ever harm their revenue from using the name by even $1.

Seems their fb person/people have started work. Trying to clean up their page.

Mine was removed immediately:
“Taking down all the posts about Dan Richter and Café Roubaix? Gonna be an unending job. We’re going to harness the determination and grit required by the Roubaix (the RACE that pre-dates your bike by a century) and make you guys do the right thing.”

Don’t own any, and never will.
I read about their shenadigans some time ago. They threaten to punish LBS’ (with-holding incentives etc) for stocking Giant bikes and Giro shoes. Then there was the stuff with epic designs, mountain cycle, Volagi etc. This isn’t isolated behaviour, it’s standard Specialized fayre; faceless mega corps bullies.

That isn’t correct poisonspider. They only need to defend their trademark against genuine confusion. The trademark authorities have already made this very clear (I read yesterday).

Added to which I think it highly dubious that they should be allowed to trademark a common usage term in the first place. I think the race and the city should issue a Cease and Desist notice to Special Lies to stop freeloading on their name.

From the BikeBiz article:

Café Roubaix is also selling far more products from its online store than usual

Funny that…..
To be fair, he’s done exactly what I would do. It’s wonderful advertising of his small business.

If they don’t contest it their trademark registration doesn’t stand therefore anyone can use it. To some extent they are FORCED to contest it otherwise their trademark is worthless.

Not quite that simple, as in the bikebiz article above. A TM owner needs to pay attention to its use and negotiate or defend in areas where names used by others are in clear breach of their TM + IP regs, not just send cease and desists to everyone. Cafe Roubaix and the spesh bike aren’t really that close so it’s not necessarily a clear case. His own-brand wheels are probably a bit closer to risky ground.

A sensible outcome would probably be for the wheels to be rebranded (since, while I don’t really think there’s much chance of confusion, I can see that it’s a grey area) but the shop retain it’s name.

Of course Specialized could have achieved that in a very different way with no bad PR. Going in all legal guns blazing may work sometimes but in a market where brand can have a big part to play in consumer choice, it’s a risky move.

Still think the whole trademark is highly dubious.

This guy Dan Richter has named his shop as a tribute to the great race and the spirit embodied therein.

Specialized have merely appropriated all of that for themselves, and are using their weight to bully others into not referencing all those good connotations. If Specialized had created the race they might have some kind of moral claim over it, but they didn’t and haven’t.

glenp – Member
Still think the whole trademark is highly dubious.

Logic agrees. The problem is that the laws there allow for it and do insist that you protect it. The secondary problem is that people misunderstand what proctecting it really requires and go in heavy handed like this when they don’t need to.

Wonder if SpokeShirts could be talked into doing a limited run of their old t-shirt 😉

poisonspider – Member
Just considering the legal position for a sec and not the moral/emotional aspect.

If they don’t contest it their trademark registration doesn’t stand therefore anyone can use it. To some extent they are FORCED to contest it otherwise their trademark is worthless.

Having said that, I cant imagine his shop would ever harm their revenue from using the name by even $1.

I don’t think they were “FORCED” into issuing the C+D notice, Specialized’s TM is applied as the name of a couple of their products, it does not apply as Specialized owning the word in connection with all cycling…

As for the name “Causing confusion” amongst consumers, that does kind of suggest Specialized think the people who buy their products are pretty thick TBH… If it went to court Specialized would need to demonstrate this supposed “confusion” amongst consumers, I think they might struggle, put ’em on the stand and ask how many sales they think they’ve actually lost…

Specialized are basically saying that they believe some Canadian cyclists will associate the word Roubaix with their plastic bike rather than with the world famous classic race. Pretty much a definition of arrogance.

http://blogs.calgaryherald.com/2013/12/09/bike-shop-owner-humbled-by-outpouring-of-support-in-fight-with-bike-giant-specialized/

It seems Dan did offer to drop the name from the wheels – which is to be honest the only bit where Specialized may have a case. Forcing him to change the name of the shop is surely not something which would stand up in a court if they took it that far.

There is a beautiful example on ridingagainstthegrain of how this can be handled

http://ridingagainstthegrain.files.wordpress.com/2013/12/jd-letter-entire-big1.jpg

Obviously the examples are a little different but the difference in approach is dramatic and in one case you end up loving the brand rather than hating it

@kazafaza – 😀 Nice one!

Sure, big business doesn’t often like to set a precedent for being sniped at, but Specialized could possibly come out of this quite well with a climb-down, done very publicly of course. It may be the best form of damage limitation, at least.

First Aaron Gwin, then the rest of the industry shafts them on MTB wheel size and now this.

Not been a good year for the big S.

I’ve just ordered one of his rather nice t-shirts.

leffeboy- a good example of how to do it right there. JD, smooth as fark.

As I understand it, Specialized don’t need to sue, they just need to engage with café Roubaix. So the aggression isn’t needed to protect their TM.

If the big boss man had gone over there and suggested he sell the Roubaix bikes, (could probably even offer him a bit of a discount over other the normal wholesale price) buy a coffee and then ask nicely if he wouldn’t mind re-branding the wheels, all this could have been avoided. Specialized would even have come out of it smelling of roses, instead of s***.

edit – is the swear filter broken? I assume it should have picked up my last word!

It doesn’t work if you star the word out. If you originally wrote shit, then that isn’t in the swear filter.

It’s past mid-day on Monday in California and the Specialized Twitter feed and FB page are still eerily silent (at least from the company themselves – plenty of activity from everybody else still).

So, what do we reckon?

1 They don’t back down but try to confuse the matter so that the less critical accept it. Eg continuing the “we had to do it” line. The Armstrong method.

2 They back off completely. Very unlikely I reckon.

3 They don’t apologise but agree that they were a little excessive and come to a deal with the shop, probably agreeing to rename the wheels but not the shop. No details of it released though.

4 other

I’m going for 3

So out of curiosity, boycotter folks, who else do you boycott? Being a dick about trademarks isn’t the most severe of crimes, so I imagine you’ll all have a massive list of companies that have done worse and that you avoid?

But other situations are different. In the cycling market there are numerous alternatives to Specialized when buying a bike or some other kit. If you’re trying to decide between several options it’s an easy way to shorten the list.

Who else do you suggest we should be boycotting, and what are the alternatives?

aracer – Member

But other situations are different. In the cycling market there are numerous alternatives to Specialized when buying a bike or some other kit.

You think that’s different?

I’m not suggesting a list of boycotts! But I am suggesting that people get a sense of perspective, since they almost certainly do buy from companies that do far worse. Specialized don’t as far as I’m aware support any oppressive governments, occupy Tibet, or sell baby milk powder to mothers of newborns, nor did they cause the collapse of the finance system of the western world, or put thousands of book shops/coffee shops (delete as appropriate) out of business while evading tax. There’s many dick moves to be incensed about so why this one?

In support of the Roubaix Cafe, I have strung my wife’s Myka from the garage rafters and kicked away the stool.

so why this one?

Because no matter how much some people refuse or don’t want to believe it, there is a cycling community and it doesn’t like to see bike companies behaving like big bully boys, particularly when it involves trying to take ownership of something that most people feel they have no legitimate right to regardless of what the law says.

So do you boycott Trek (or Pivot, pick either)? Shimano? Cane Creek? Or moving away from trademarks, how about Chris King?

There’s many dick moves to be incensed about so why this one?

Perhaps it’s because it’s bike related and that makes it a subject close to some cyclists hearts? Perhaps some folk just don’t extend their view to wider stuff or perhaps some people can give a toss about more than one issue at once? Perhaps as it’s quite a small area of life they think their input may make a difference? To simply ignore one dick move just because there are many other dick moves seems pretty pathetic. Akin to saying ‘ah fek, it’s only like i’ve punched one girlfriend, there are plenty of dicks that have punched all their girlfriends, i’m a real catch!’.