burnfingers

bringing up PTSD to drum up sympathy isn't the best idea imo, but regardless I don't see the issue here. You can't make a case that somebody is going to confuse a frame or set of rims by the "Cafe Roubaix Bicycle Studio" with a set marked "Specialized Roubaix" any more than they would mix up a 'Cafe Hollywood Bicycle Club' banded bike with one labeled 'Schwinn Hollywood'. Both use the name of a famous town and are TM/IP, but there's no case for infringement unless the other brand tries to specifically label something 'Roubaix' or 'hollywood'. Near as I can tell he used the full name for his products. Blatant case of bored lawyers if I ever saw one. Ask if i'll use their hardware in my next build.

bibliobob

Like I said, it may, or may not, be technically legal to claim an infringement on their trademark claim.

However, it is undeniably ******y. Saying that it's legal doesn't make it right.


Only someone that lacks an appreciation for cycling history would think that the name primarily belongs to Specialized. When I hear the name, "Roubaix," I think of the race first, the tires second, Fuji third, and those crappy plastic frames are somewhere further down the list....

RPK79

I guess when I see cases like this:
https://www.firstpost.com/business/ch...e-1236999.html

I have to come to the realization that trademarks are meaningless (at least here in the US). Anyone want to go in with me on creating Bapple Computers? I want to market MyPhones, MyPads, and MyPods.

prathmann

Even if we were to grant that Specialized has a good case (which I don't think they do considering the long association of the town of Roubaix with cycling and the number of items sold under that name), they have the choice of going about in the heavy-handed way they appear to be doing or to reach a reasonable compromise with the small store owner. For example, they could agree to license (for some nominal amount, say $1) the name to him for his store and specified other items but exclude other things such as bikes or frames if he were to eventually make those. That would protect their trademark rights but wouldn't be trampling over this small store owner who is doing nothing that actually hurts Specialized.

RPK79

I lost all respect for the guy when I read that. Veteran status has nothing to do with trademark law. Period.

eja_ bottecchia

Specialized could have done a number of things to protect its trademark and still not screw this guy over.

It chose, however, to drop the big hammer on the guy.

Reason enough for me, and many like me, to boycott Specialized.

YMMV

orangeology

then could we encourage the ppl of Roubaix to sue either Specialized or Fuji for holding such an IP for their commercial profit?
and if we could, then should we do it? should the ppl of the town sue or threaten the local bike cafe guy or big name sake corporation, in the case?

yes, i did know their precious property was named after the small town, so was some other products in the bike world.

not trying to defend any party here. it's really up to where you take the leverage of the core arguing points.
hypothetically he could win leveraging the origin of the IP casing other similar usage of the specific town's name in the industry.

unfortunately in the game of thron... i mean the lawsuits, you can't even argue if you don't have money. you win or you can't even start.

when gets tricky to decide, i'd go with moral and common sense.
doesn't matter who wins, i am just supporting whom i believe right.
so i nastygrammed the specialized fb page too.

RPK79

Does the town make and sell bikes?

shoota 

OMG here we go again..... the last thread on this got closed. Good luck.

Cougrrcj

Around here there used to be a bar called the Red Fox Inn. Yup, actor Redd Foxx (Fred Sanford from the '70s TV show Sanford & Son) sicced his people on them, said the name Red Fox was trademarked in all of it's spellings, and the bar MUST change the name. Lemme see here, a Red Fox is the name of a North American animal, and was called such before the actor was born - but the bar had to change it's name. Go figure. The side with the deepest pockets (most money) wins. The bar changed its name to the Red Ox Inn.

KonAaron Snake 

It sponsors a race of bikes that pre-dates the IP, which has also inspired Roubaix branded bike parts prior to this IP. Again - I'm no expert, but I know a bit about US IP and this wouldn't have a snow ball's chance here. I don't know how Canada works in terms of case law.

With under 2 minutes of google, I identified 12 brands selling bicycle industry products with the name Roubaix. Saying that there would be confusion for consumers strikes me as an insane stretch when there are 4 well known tires with that branding, and which more closely resemble the cafe's product.

michael k

Have a brother named mark who makes his own holiday greeting cards. He signs them 'AllMark cards'.

RPK79

I wonder if they don't have an agreement with Specialized to sell those items under that name though...

RPK79

https://en.wikipedia.org/wiki/Microsoft_vs._MikeRoweSoft

mikemowbz

To be precise, Specialized does not hold the trademark in the US, Advanced Sports does (Fuji) - and licenses it to Specialized.

Specialized holds the trademark in Canada.

Regardless, I think Aaron makes a good case...and strongly suspect that any decent LLB with skill at trial would too.

It is, of course, not the case that Specialized is in some way obligated to sue, or threaten to sue, Dan Richter. They could protect their trademark (however weak or dubious in the first place, despite its having been approved in 2007) by coming to a cordial agreement with him...say, asking him to promise not to make carbon bicycle frames or to brand complete bicycles with the name, perhaps even asking for a nominal 'licensing' fee.

I, for one, since the power of my boycott is minimal (an old second-hand Specialized-branded Nitto stem being the only evidence of my having supported the company in the past), will gladly contribute to crowdfunding Richter's legal fight. The possibility that they might win not because they're right but because they're big is abhorrent.

In any case, I do support a boycott until such time as Specialized demonstrates sufficient business acumen to feign decency.

orangeology

Aaron answered it for me above, but that was my next question if someone said yes or no to my question.
does the name of town DO OR MEAN ANY with bicycle business? friggin' YES.

RPK79

Doesn't matter. The town is not known for the manufacture of bicycles.

kunsunoke 

https://www.cipo.ic.gc.ca/app/opic-ci...tIndexOnPage=1

This is posted for the convenience of those who find the Canadian Federal websites confusing. It's because they are. I can understand totally how someone would miss it.

Perhaps our intrepid veteran friend could re-name his shop the "Broken Carbon Fiber Cafe". Canada's IP trademarks database shows it hasn't been taken as of yet, and he could probably get some quick artwork from here:

https://www.google.com/search?q=Spec...w=1920&bih=930

KonAaron Snake 

I'm VERY curious about that as well. Either way (and I'm using US standards), the word has become ubiquitous...and Aspirin lost its patent because the phrase became ubiquitous and the interests of the consumer are often paramount in IP.

RPK79

Well if he uses that artwork he better get the permission of the photographers first. *cough*

busdriver1959

I don't know trademark law but if I was king, nobody would be allowed to trademark place names and certainly place names that have as much meaning to the general population(or just cyclists). From what I've read so far, specialized didn't have to use such strongarm tactics with this shop. I think they are relying on the high cost of defending himself to force the shop owner to cave. Same with their other famous trademark cases. That stinks and that's why I'm not buying any more of their products regardless of how this one turns out.

RPK79

For all we know they've just sent him cease and desist form letters. I don't recall them calling out their specific tactics and a quick scan of the article a second time doesn't show me any specifics.

Also, what does a french town/race have to do with an "Italian-cycling inspired environment"?

orangeology

you are right. defining clearly(=more precisely) then can bear another room here, tho.
the canadian guy isn't manufacturing a bicycle. he manufactures a bicycle component.

what S is doing seems nothing but marking the territory by peeing as large as possible, at least to me.
and they do that knowing the local guy has no monetary power to properly defend whatever he believes right—regardless he's right or not.
whether a common sense or moral sympathy can be effective when it comes to a lawsuit on an IP, it's two different things.

i will stop here as i have no intention of giving an impression of arguing over something with someone who has a different POV.

RPK79

The trademark registration specifically calls out "bicycle components" see link in post number 43.

If we all had the same POV arguing would be pointless.

jiangshi

SOP. Colnago did the same thing in 1975:
https://groups.yahoo.com/neo/groups/b...ons/topics/237