I'm sure that most of you have heard about this elsewhere, but in case you haven't, Specialized thinks that it's a good idea to sue a small veteran-owned business because they arrogantly, doosh-baggedly, and jag-offedly think that they should own the rights to the name of a town in France and one of the most famous races in the world:




"A Canadian veteran of the Afghanistan war who operates a tiny bicycle shop in Cochrane is being forced to change his store’s name after being threatened with a lawsuit by one of the giants of the U.S. bike industry.

Dan Richter, owner of Cafe Roubaix Bicycle Studio, located above the famous Mackay’s Ice Cream in Cochrane, says he received a letter from the lawyers of big bicycle maker Specialized several months ago, demanding he change the store’s name because the company owns the trademark on the word Roubaix, which they use to market a brand of road bike.

Richter, however, says he didn’t name his store after the company’s bike, rather after a region in France that hosts one of the most famous bike races in the world, the gruelling 117-year-old Paris-Roubaix. Because the name is an icon of bike culture, and graces hundreds of other products from bike tires to a brand of cycling tights sold by MEC (and even other road bikes), Richter says he has a good case to keep the store name, but is capitulating because he can’t afford a legal fight in court.

“It’s been frustrating,” Richter told me. “The response throughout this process (from Specialized) has been arrogant and almost unbelievably dismissive.

“We didn’t want to go public . . . but they’ve made it clear on no uncertain terms, they are going to sue.”

Larry Koury, managing director of Specialized Canada Inc., said the company is simply defending its legally owned trademark.

“A simple trademark search would have prevented this,” Koury wrote in an email, along with a reference to the federal government’s trademark database showing Specialized’s registration of the word Roubaix. “We are required to defend or lose our trademark registration.”

Richter, who says the running the bike shop has helped him deal with the post-traumatic stress disorder that ended his military career, says he did some research and felt comfortable that naming his store after a location like Roubaix wouldn’t contradict Canada’s intellectual property protection laws. He doesn’t think the name confuses anybody shopping for bikes. His store sells high-end bikes and his handmade wheels in an Italian-cycling inspired environment. He does not sell Specialized products.

“I understand the need for the protection of intellectual property, but this is named after a city known worldwide for this race,” Richter said. “For our customer base, there’s an appeal (with the name Roubaix). Our market understands that race, and it reflects what we want to provide for them.”

Richter says his lawyer thinks they have a good case to make, but the fight could cost upwards of $150,000 in legal fees, a price too steep for his small company.

Changing his company’s name isn’t as simple as erecting a new sign, Richter says. He has been selling custom wheels under that name for about a year and has operated the store since March, all of which has helped him build an formidable brand, reputation and online presence. Being forced to adopt a new moniker means he will have to start anew, an expensive and time-consuming prospect.

“I’ve gone through some very intense (post-traumatic stress disorder) therapy in the last year. Forcing myself to get out there into the public and the business world has taken a huge effort,” he says. “I’m just at the point were we think this might fly, so this was a huge hit for me personally.”

https://blogs.calgaryherald.com/2013/...t-specialized/

https://bikesnobnyc.blogspot.com/

I've posted a few nastygrams to their Facebook page. I like Specialized and its products, so this is very disappointing to me. I won't be buying any of their products until they back off.

Yeah, I posted a lot on their FB page as well, and would encourage others to do so as well. I'm all for legally protecting your property, but that's ridiculous. Unbelievably arrogant.

It may be legal to do so, but that doesn't make it right.

I would lean towards his side when it comes to naming the shop Cafe Roubaix Bicycles, but when naming his wheels with the trademarked name I swing more towards Specialized's side. Bringing in PTSD is just an attempt to garner sympathy and has nothing to do with trademark law. It's like trying to justify pirating MP3s because listening to music calms you.

Two words RPK79 - Fuji Roubaix.

It's a city and a race...this would be like Kraft threatening someone for using the word Philadelphia...since it own's Philadelphia Cream Cheese. No way in hell this would pass muster at trial either....it's just harassment and abusive. They have a right to send obnoxious letters - and I have a right not to buy their products until they stop.

Yes and no. The town I grew up in was Red Wing, MN. There is a company there called Red Wing Shoes (which makes shoes). There is also a Red Wing Brewery there. There is no trademark infringement in that case because no one is going to confuse a brewery and a shoe manufacturer. However, if someone opened up a Red Wing Shoe Lace company there would be. This guy is branding wheels under a name that Specialized has trademarked. That is a clear violation of trademark law.

A better example is there is also a famous Red Wing Pottery there. If I started making Red Wing Ceramics I would probably not be safe from getting sued.

Shared on FB, commented to specialized.. disgusted inside. They only went after him because they assume he doesn't have the finances/support to fight back.. as was said before Fuji makes a Roubaix.. I'd like to see that court battle instead.

It's a name that's already used by other brands...Fuji, FMB and Challenger just off the top of my head (and I can find others). One of the requirements of intellectual property is that it be enforced with other competitors...unless they gave permission to those companies, they have some 'splaining to do. They can file/request any IP they want - Roubaix is a city and a word/name used extensively in cycling (before Specialized's IP) and this is clearly not a bicycle model. It's a generic term that pre-dates their IP...it's not something they'd be able to enforce absent blatant theft of their logo/design/font.

Like I said...no way this passes muster...it's just threatening, abusive behavior. I can send cease and desist letters to who ever I want...and I can sue whoever I want. The object here isn't to win at trial (they wouldn't), it's to bully and intimidate.

As discussed in one of the other 3 or 4 threads on this topic, Fuji and Specialized have worked out agreements to allow both of their products to exist.

Fuji sold Specialized the trademark...

^^^^beat me to it

Agreed. From what I've read abut other trademark cases he'd probably win if it was just his shop being named, 'Roubaix'.

My understanding is that Fuji sued Specialized and won. Fuji is allowing Specialized to use the name under license in the U.S. Fuji's trademark doesnt apply to Canada but Specialized's does.

And Challenge and FMB?

Thanks for the info - I wasn't aware of that - but this isn't a bicycle frame (and even then I think there would have to be more than just use of the word Roubaix...Specialized and Fuji use the term on similar frames, so there is more overlap).

The fact that the wheels are bicycle components is enough. If I started making Madone bicycle seats how do you think that would fly with Trek? I mean Madone is a region in Italy so it's cool, right? https://en.wikipedia.org/wiki/Madone

I mean it's not like folks would think my seats were in any way related to the good name of Trek Madone bikes. That wouldn't in any way improve my sales, right?

There's a lot of bad information going around about trademarks and intellectual property in general. One thing that's being missed is trademark owners bust take immediate steps to protect their IP or risk losing it. Regardless of what people think about Specialized, they are almost obligated to take the steps they did or if they let it go, the next person infringing on their trademark may be able to get away.

Also this small business owner should do a better job with his homework. You don't start a new business, name it after a well known brand, and not expect anything more to come of it?

This is under Canadian law, not US - I am not an expert on US IP, though I do have basic familiarity. Canadian is not in my repertoire. I am, in essence, talking a bit out of my butt and will stop doing so.

I did find an interesting link which essentially says Specialized has a case, but whether it's winnable is anyone's guess:

https://velonews.competitor.com/2013/...dium=whats-hot

To answer your question regarding Madone...if there were numerous parts using the name Madone prior to Trek, and a race named the Madone, and it was a common phrase throughout cycling dating back decades, I would think that would be very difficult to enforce.

+1

You have to do your due diligence.

"Richter, who says the running the bike shop has helped him deal with the post-traumatic stress disorder that ended his military career, says he did some research and felt comfortable that naming his store after a location like Roubaix wouldn’t contradict Canada’s intellectual property protection laws. He doesn’t think the name confuses anybody shopping for bikes. His store sells high-end bikes and his handmade wheels in an Italian-cycling inspired environment. He does not sell Specialized products."

He clearly researched and knew that there was a trademark. He should have consulted an attorney instead of using his gut.

Agreed and understood. As others have said, if it was just his store I could see him winning a lawsuit, but when he has products named 'Roubaix'

I do not believe this would have a snowball's chance in US Court...even in the most friendly venue. I don't know Canadian precedent, case law, etc.

To me, it sounds like non-sense to try and enforce IP over a name used throughout cycling prior to your IP when it's being used on a product that isn't your product, only the same industry. I also do not think a consumer of high end bikes/parts would be confused. I disagree with both of you on principle...however I'm no expert on Canadian approach to IP.

Here is what the Canadian government has to say about trademarks.

https://laws-lois.justice.gc.ca/eng/acts/T-13/section-6.html

[h=6]When mark or name confusing[/h]

• 6. (1) For the purposes of this Act, a trade-mark or trade-name is confusing with another trade-mark or trade-name if the use of the first mentioned trade-mark or trade-name would cause confusion with the last mentioned trade-mark or trade-name in the manner and circumstances described in this section.
  
• [h=6]Marginal note:Idem[/h](2) The use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the wares or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class.
  
• [h=6]Marginal note:Idem[/h](3) The use of a trade-mark causes confusion with a trade-name if the use of both the trade-mark and trade-name in the same area would be likely to lead to the inference that the wares or services associated with the trade-mark and those associated with the business carried on under the trade-name are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class.
  
• [h=6]Marginal note:Idem[/h](4) The use of a trade-name causes confusion with a trade-mark if the use of both the trade-name and trade-mark in the same area would be likely to lead to the inference that the wares or services associated with the business carried on under the trade-name and those associated with the trade-mark are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class.
  
• [h=6]Marginal note:What to be considered[/h](5) In determining whether trade-marks or trade-names are confusing, the court or the Registrar, as the case may be, shall have regard to all the surrounding circumstances including
  
  • (a) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known;
    
  • (b) the length of time the trade-marks or trade-names have been in use;
    
  • (c) the nature of the wares, services or business;
    
  • (d) the nature of the trade; and
    
  • (e) the degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by them.

did they name the town after a Specialized bike or a Fuji bike, in France?

No, but Specialized and Fuji do hold the trademark.

FYI - Challenge, Veloflex, FMB and Vittoria all sell a Roubaix model tire (which I assume are not licensed). That has more in common with wheels than a bicycle frame. There is a bottle cage model called the roubaix. There are Roubaix cycling clothing models. There is a Roubaix shoe cover.

Holding a trademark and having it enforced in a courtroom are different. I acknowledge I'm no expert on Canadian law, but this is hardly clear on either side.

Specialized has a history of strong-arm tactics (see BellSports vs. Specialized, Specialized vs. Volagi, Specialized vs. Mountain Cycle, etc.). As a consumer, I've stopped buying Specialized products.

Unverified anecdote: One of the larger local bike stores, Mike's Bikes, which sells a good deal of Specialized bikes, used to display their share of Giro helmets. Now it's almost all the latest model of Specialized helmets on display. They told me they can still order other helmets like Giro, but that they are not displaying them any longer. Based on the Bell Sports vs. Specialized case, I have to think Specialized pressure played a part. I don't like large manufacturer's dictating to local business owners how they go about their business.

In cases such as Specialized vs. Cafe Roubaix Bicycles, the courts rarely get to decide who's right and who's wrong. Specialized is aware that most of it's adversaries will be unwilling to stick out their necks by amassing huge legal fees--even if it is a winnable case.

I bet the lawyers at Specialized are feeling confident that their TDF "corporate clout" will see them through such lawsuits in France with no problems.....
I think I like Specialized better during those 80's Turbo S days when they don't seem to be so ginormously high and mighty......
Maybe next time I should give one of their saddle fitting planks a good fart when I see one in a bike shop....