The Empire Strikes Back: Specialized Sues A Bike Shop Over Name

[Caerus]

They still make the best bikes and we're a little forum somewhere in Africa

 

It'll blow over without any effect

This is global.

[Cellar]

I'm still waiting for classifieds to become flooded with all these big beck people selling their specialized goodies.Common people, I'm waiting for a bargain.Or is this just all talk as usual.

 

Don't own an specialised kit. Was looking at a bike but like I said, they're not on my list anymore. Went and had a look at a cannondale at the bike shop yesterday instead.

[camelman]

Now why would you want to soil a perfectly good rant with logic, objectivity and common sense. Begone with you!

 

Ok, apologies

 

Especially for you, no more logic, objectivity and common sense till friday . Let the ranting begin.

 

Some more fuel to the fire

 

http://bikeportland.org/2011/03/10/epic-wheel-works-will-change-name-due-to-potential-trademark-conflict-with-specialized-49504

[Cellar]

This is global.

 

Yeah, just look at the twitters. (nevermind the forums and blogs and facepages...)

[I am not SomeBloke]

How should they have done it differently? As far as I have gathered they haven't actually sued the shop, just said they will if the shop doesn't comply.

 

The original one-sided article didn't even bother to ask Spez for a response, and this article is the basis of this emotional social media campaign.

 

I'm still waiting for Spez to make a proper response before judging.

 

They should have had a PR contingency plan in place. Their lack of response on the issue thus far has just fuelled the social media fire. Whether they've threatened to sue or have sued is just semantics, at least as far as the general public is concerned. Given the damage in dollars to the brand this exercise has caused, a better approach would have been to publicly lament the way the trademark laws are structured and announce that they had offered to pay for all rebranding costs for the store.

 

Your last point is their biggest mistake so far, waiting 'til Monday to say something.

[GLuvsMtb]

What often happens in these instances:

- Attorneys are paid to search for possible trademark or brand infringements.

- They send a stock standard letter stating such when they find them requesting a name change / explanation why you are entitled to the use of the TM or similar name.

- You either get your attorney involved or you simply change your name.

I had a similar situation a few years ago. I have a CC in which I own some property. The CC name was Excelpro 144 CC. I was requested by Excel fuel company to change my CC name as it infringed with their IP. I stated that I bought a shelf CC with the name and that they should have objected when Excelpro 1 to 200 were all registered. I said that I have not commercial reason to keep the name either, so if they want it changed, they should pay for the cost of this (about R1000). They obliged and the name was changed.

 

If I had a commercial reason to keep the name or would have benefited from howling about the letter to social media I would definately have done so.

 

I wondered after the whole ordeal what their position is around Microsoft using "their" branded trademark (Excel).

[Cellar]

http://ridingagainstthegrain.com/2013/12/08/an-open-letter-to-mike-sinyard/

 

Interesting take. I like the Jack Daniels bit:

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

[Cellar]

Is it just me or can you also hear the sad violin music tugging the heart strings when reading this article?

 

 

I like this guys response to your question:

 

Let’s talk about Cafe Roubaix. First, the guy that runs it is a war veteran, who can legitimately talk about using his shop to help combat his combat-induced post-traumatic stress disorder. Does his being a veteran play into the technical legal analysis of your claim at all? Nope. Veteran or not, the law is the same. Moreover, if there really was a true violation of your intellectual property rights, being a veteran would not be a defense. But in a questionable situation, you have to know that the public is going to side with the war veteran who is the owner of a small business over a corporate giant (particularly when that corporate giant is having some very public fights over relatively petty trademark issues). Pick your battles, and avoid losses (or pyrrhic victories).

http://ridingagainstthegrain.com/2013/12/08/an-open-letter-to-mike-sinyard/

[Cellar]

Brainstorming @iamspecialized next bike name: Epic Backfire? Epic Miscalculation? Epic Fail?—

haha.

[MTB_Roadie]

so if there was a coffe shop there that said Cafe Roubaix then they can be sued also? Sounds to me like Specialized is trying to open a shop there and need to "Roubaix Bicycle" part...

[I am not SomeBloke]

http://ridingagainst...o-mike-sinyard/

 

Interesting take. I like the Jack Daniels bit:

 

 

And that, folks, is how you do it. Spez could learn a thing or two from JD.

[Shebeen]

http://ridingagainst...o-mike-sinyard/

 

Interesting take. I like the Jack Daniels bit:

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

Great link. thanks.

 

This must be serious moral crisis for an Apple fanboi who hates Specialized bikes.

[scuzzy]

This is global.

 

It is so global that when you search it on Google you only get 1 hit under news. You are also going with the assumption that everybody sees it on Twitter and FB.

 

Wave in a teacup I'd say

[Red Zone]

you better watch out all of you with bike brand related avatars, like Giant, 'Dale, Fox, Scalpel, Look, Mongoose etc.... and variations thereon.

[rock]

I really don't understand how you can register a trademark that is a name of Place - can I go register Cape Town as a TM?

[MuddyMike]

Actually, just the opposite. It would count against them if they ever tried to sue for the name in a different instance since it could be pointed out that they had not legally tried to protect the name on this occasion. The way the trademark and patent laws are structured, not suing someone can act as a precedent. Blame the laws, not the company.

 

I am not a lawyer but have have had some dealings with trademarks.

 

1. Trademarks get registered under very specific categories. I would assume that Spez registered the trademark in a cycling and related category. This would not effect "Roubaix" pizza joint in Canada or US for example. Trademarks are also registered by country, so if Roubaix is not registered by Spez in SA under the cycyling related category, they would have no recourse.

 

2. If a registered trademark is not defended when infringed upon there is a high likelyhood that the trademark could be lost.

 

3. If the registration office approved the "Roubaix" TM for Spez then they own it. Its the law.

 

4. Should they defend their brand and TM? for sure they should.

 

5. Have they done it the right way? Not so sure, but we dont know if they tried to make a behinds the scene deal with the store.

 

6. Would Cannondale, Scott, Ritchey, Pinarello etc defend their brands and TM's? I am pretty sure they would.

 

My last point is would all you Spez haters feel the same way if we were dealing with some chinese fake manufacturer and not some emotional story about a war veterean trying to make a living? Don't be hypocrites.

 

And yes I work in a branded corporate and ride a Spez.