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

[SoftTail]

Whatever!

 

But Specialized is taking a serious reaming all over the world.

 

http://weightweenies.starbike.com/forum/viewtopic.php?f=14&t=121480

 

http://forum.slowtwitch.com/forum/Slowtwitch_Forums_C1/Triathlon_Forum_F1/Specialized_Suing_over_Roubaix_Name_P4887328/

 

Well deserved"

 

[Caerus]

I am not going to sit and argue here with you or anyone else.

The bottle as I said is one small example.

He tried to piggy back of them and even if he had the money I will guarantee you that he won't walk away too victorious.

I can guarantee you that he would have been approached and spoken to exhaustively to come to an agreement.

No arguing at all, more just want to be enlightened is all. How do you think he has tried to piggy back on them?

[Wyatt Earp]

So what of the fact Fuji use the word Roubaix? Unless there is a vested interest, I'm not sure?

 

They most likely don't have the patent to the word in Taiwan.

I am also prepared to put money on the fact that they would have overlooked it if he didn't go as far as to incorporate the shield and red and white all over the place.

 

Specialized themselves had to do the very same with one of their bikes, they had a bike called the Carve and got approached by the guys who owned the patent to the name, the bike is now called the Crave.

It happens all over the world.

Edited December 8, 2013 by Wyatt Earp

[Wyatt Earp]

No arguing at all, more just want to be enlightened is all. How do you think he has tried to piggy back on them?

 

If you can't see it, I won't be able to explain it

[Caerus]

They most likely don't have the patent to the word in Taiwan.

I am also prepared to put money on the fact that they would have overlooked it if he didn't go as far as to incorporate the shield and red and white all over the place.

 

Specialized themselves had to do the very same with one of their bikes, they had a bike called the Carve and got approached by the guys who owned the patent to the name, the bike is now called the Crave.

It happens all over the world.

Coming from a graphic design background I still do not see the similarities, colours, maybe but red, black & cream, even that is a massive stretch in my humble opinion. I know it happens all over the world, that's a given. To base this purely on a patent in Canada still seems weird and they are doing more harm to brand then anything

 

Not knocking the brand, as I have stated I like the brand and like there products, won't stop me lusting after them, or buying them either.

[Wyatt Earp]

It is simple.

 

Courtesy of GonaSovereign on weightweenies.starbike.com:

This isn't the first time Specialized has used its lawyers to shut down a tiny "competitor." They forced Everti to change its name from Epic several years ago. I can see why they had a case in that instance, but Roubaix was associated with cycling long before Sinyard's marketing people thought to co-opt the famous name. They're certainly within their right to trademark a name, but how they behave afterwards is entirely up to them. Are they going to go after the shops and cycling-related organizations that use the name in France? What about the fabric manufacturer? I like a lot of Specialized’s stuff, but stomping on small businesses means I’ll consider alternatives when I make my purchases.

 

And ttram on forum.slowtwitch.com:

ttram wrote:Endura Roubaix gloves, jackets

Tifosi Roubaix glasses

Castelli Roubaix gloves

Fuji Roubaix bike

Challenge Roubaix tire

Veloflex Roubaix tire

Capo- whole line of Roubaix clothes

DeMarchi Roubaix clothes

MEC Roubaix tights

VCC Roubaix knee warmers...

 

the list is long, so Specialized better lawyer up...or are they just picking on one small guy?

 

I think I feel a snooze coming on, thanks

[SoftTail]

 

 

If you can't see it, I won't be able to explain it

 

It is simple.

 

Courtesy of GonaSovereign on weightweenies.starbike.com:

This isn't the first time Specialized has used its lawyers to shut down a tiny "competitor." They forced Everti to change its name from Epic several years ago. I can see why they had a case in that instance, but Roubaix was associated with cycling long before Sinyard's marketing people thought to co-opt the famous name. They're certainly within their right to trademark a name, but how they behave afterwards is entirely up to them. Are they going to go after the shops and cycling-related organizations that use the name in France? What about the fabric manufacturer? I like a lot of Specialized’s stuff, but stomping on small businesses means I’ll consider alternatives when I make my purchases.

 

And ttram on forum.slowtwitch.com:

ttram wrote:Endura Roubaix gloves, jackets

Tifosi Roubaix glasses

Castelli Roubaix gloves

Fuji Roubaix bike

Challenge Roubaix tire

Veloflex Roubaix tire

Capo- whole line of Roubaix clothes

DeMarchi Roubaix clothes

MEC Roubaix tights

VCC Roubaix knee warmers...

 

the list is long, so Specialized better lawyer up...or are they just picking on one small guy?

[farringdon]

Maybe Specialized is launching 650b and needs some marketing hype before it drops for Christmas.

[farringdon]

What now with all this Enduro business going on? All websites will come to a stand still come Monday.

[No Hare]

I remember a view years back when our okes tried to export rooibos products to the US. Only problem was that someone on that side had already registered Rooibos as a trademark. Can't remember what happened but I know that there are "companies" that register thousands of names as trademarks and immediately start litigation when someone else want to use it. These type of people I deem to be parasites.

 

Regarding this Specialized story (are we allowed to use the name in the fred without permission from the company?) I will take the "moral high ground" and state that I will never buy a S-product. Not because they are bullies but because I can't afford their products

[SwissVan]

 

Ja-nee, when you are involved in some way with Spaz, or own some of their stuff, then you believe there's nothing else out there.... But it's very easy to become anti-Spaz once the blindfold is removed and you actually see what tossers they are.

 

 

Oh my gosh, this ranks as the silliest post of this thread, wtf boet according to you if i own a Spaz then i dont believe in any other brand of bike...thats like me saying if you believe what you said then you must wear coke bottle bottoms for glasses

 

 

The right thing for Spez to do would be for them to give this bike shop an agency to sell there bikes

 

 

Somehow I dont see him selling any of their products in the future.

 

Spez are going to have to do something to clean up the media nightmare this is generating....right or wrong they are going to loose (from a publicity point of view) if they carry on in this vein.

[Caerus]

Oh my gosh, this ranks as the silliest post of this thread, wtf boet according to you if i own a Spaz then i dont believe in any other brand of bike...thats like me saying if you believe what you said then you must wear coke bottle bottoms for glasses

 

 

 

Somehow I dont see him selling any of their products in the future.

 

Spez are going to have to do something to clean up the media nightmare this is generating....right or wrong they are going to loose (from a publicity point of view) if they carry on in this vein.

Nothings impossible, why not turn bad publicity into good publicity, then it becomes a win win for everyone

[SoftTail]

http://www.bikebiz.com/index.php/news/read/specialized-facing-social-media-storm-after-roubaix-lawsuit-threat/015773

 

Cyclists leap to defence of Café Roubaix, a Canadian bike shop threatened with legal action by Specialized for use of Roubaix.

 

Specialized is facing a global social media backlash after news broke it is threatening a lawsuit against a two year Canadian bike-shop called Café Roubaix. Specialized owns the trademark for the use of Roubaix on certain cycling products. Café Roubaix produces a carbon wheelset emblazoned with Café Roubaix. Roubaix is a town in France famous in cycling for being the destination of the classic Paris-Roubaix road race.

 

Cyclists around the world are changing their twitter names in an 'I'm Spartacus' attempt to protect Café Roubaix. There is also a crowd-funding campaign to raise $150,000 to help Café Roubaix defend use of its name.

 

Bill Buffalo has changed his Twitter name to Bill Roubaix: "If you're wondering why my twitter name has changed, it's because @iamspecialized are suing a small bike shop."

 

Journalist Mike Davis is now Mike Roubaix Davis and there are many others changing their names in order to offer moral support. Many of those who have changed their twitter names say they will be boycotting Specialized until it backs down.

 

The social media frenzy kicked off when the Calgary Herald reported on the case of Dan Richter, a Canadian veteran of the war in Afghanistan who opened his Café Roubaix shop in 2012. The newspaper story has had 26,000 Facebook likes and 5906 retweets.

 

Richter told the newspaper he had received a letter from the lawyers of Specialized several months ago, demanding he change the store’s name because the company owns the trademark on the word Roubaix.

 

Richter claims he didn’t name his store after Specialized's Roubaix road bike but for the French town.

 

“It’s been frustrating,” Richter said. “The response throughout this process [from Specialized] has been arrogant and almost unbelievably dismissive."

 

Larry Koury, managing director of Specialized Canada Inc., said the company was defending its legally-owned trademark: “We are required to defend or lose our trademark registration.”

 

This is a reference to US "defend it or lose it" law which states that trademark owners are in breach of their trademark agreements if they don't defend their marks. (Defend doesn't mean launch lawsuits, it could mean a friendly agreement between parties to prevent "confusion"). US and Canada share trademark treaties.

 

Attorney Charles Pelkey on Redkiteprayer said: "The US Patent and Trademark Office appears to be annoyed at [bullying] behaviour. In its 2011 report to the Joint Judiciary Committee of Congress on the subject, the agency defines 'trademark bullying' as 'The extent to which small businesses may be harmed by litigation tactics, the purpose of which is to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner.'"

 

In its report, the Patent and Trademark Office said that many trademark owners "mistakenly believe that to preserve the strength of their mark they must object to every third-party use of the same or similar mark, no matter whether such uses may be fair uses or otherwise non-infringing. They may lose sight of the fact that the effectiveness of enforcement is not measured by how frequently they enforce, but rather by the effect that taking or failing to take action has in the marketplace. ‘The real question is public perception of plaintiff’s mark, not a battle count of how often it has sued others.’”

 

Specialized's Facebook page is attracting a great many negative comments, with many of the company's recent postings being used by Facebook members to attack Specialized for its stance over the name of a small Canadian bike shop.

 

The Roubaix name was originally trademarked in 1992 by Toshoku America Inc, then connected with Fuji bicycles. Fuji still markets Roubaix-branded bicycles.

 

A trademark attorney wrote at the time: "It is unlikely that a significant number of the American population would know that Roubaix, France is the location of a well-known annual bicycle race."

 

Specialized has owned the trademark in Canada since 2007. The protection applies to "Bicycles, bicycle frames, and bicycle components, namely bicycle handlebars, bicycle front fork, and bicycle tires." But not specifically wheels or shops although it could be argued that linked products count.

 

Roubaix is also the brand name for a fleecy stretch fabric by MITI of Italy, long used by cycling companies such as Endura and many others.

 

According to lawyer James Moss of Recreation Law, one potential get-out for Specialized might be to allow Café Roubaix to licence the use of the name for cycling products and for the licence fee to be a nominal low amount per year.

[sharkysa]

So will that MTB race next March be called the Specialized Epic? Quick Kevin lawyer up!

 

 

[Caerus]

http://www.bikebiz.c...t-threat/015773

 

Cyclists leap to defence of Café Roubaix, a Canadian bike shop threatened with legal action by Specialized for use of Roubaix.

 

Specialized is facing a global social media backlash after news broke it is threatening a lawsuit against a two year Canadian bike-shop called Café Roubaix. Specialized owns the trademark for the use of Roubaix on certain cycling products. Café Roubaix produces a carbon wheelset emblazoned with Café Roubaix. Roubaix is a town in France famous in cycling for being the destination of the classic Paris-Roubaix road race.

 

Cyclists around the world are changing their twitter names in an 'I'm Spartacus' attempt to protect Café Roubaix. There is also a crowd-funding campaign to raise $150,000 to help Café Roubaix defend use of its name.

 

Bill Buffalo has changed his Twitter name to Bill Roubaix: "If you're wondering why my twitter name has changed, it's because @iamspecialized are suing a small bike shop."

 

Journalist Mike Davis is now Mike Roubaix Davis and there are many others changing their names in order to offer moral support. Many of those who have changed their twitter names say they will be boycotting Specialized until it backs down.

 

The social media frenzy kicked off when the Calgary Herald reported on the case of Dan Richter, a Canadian veteran of the war in Afghanistan who opened his Café Roubaix shop in 2012. The newspaper story has had 26,000 Facebook likes and 5906 retweets.

 

Richter told the newspaper he had received a letter from the lawyers of Specialized several months ago, demanding he change the store’s name because the company owns the trademark on the word Roubaix.

 

Richter claims he didn’t name his store after Specialized's Roubaix road bike but for the French town.

 

“It’s been frustrating,” Richter said. “The response throughout this process [from Specialized] has been arrogant and almost unbelievably dismissive."

 

Larry Koury, managing director of Specialized Canada Inc., said the company was defending its legally-owned trademark: “We are required to defend or lose our trademark registration.”

 

This is a reference to US "defend it or lose it" law which states that trademark owners are in breach of their trademark agreements if they don't defend their marks. (Defend doesn't mean launch lawsuits, it could mean a friendly agreement between parties to prevent "confusion"). US and Canada share trademark treaties.

 

Attorney Charles Pelkey on Redkiteprayer said: "The US Patent and Trademark Office appears to be annoyed at [bullying] behaviour. In its 2011 report to the Joint Judiciary Committee of Congress on the subject, the agency defines 'trademark bullying' as 'The extent to which small businesses may be harmed by litigation tactics, the purpose of which is to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner.'"

 

In its report, the Patent and Trademark Office said that many trademark owners "mistakenly believe that to preserve the strength of their mark they must object to every third-party use of the same or similar mark, no matter whether such uses may be fair uses or otherwise non-infringing. They may lose sight of the fact that the effectiveness of enforcement is not measured by how frequently they enforce, but rather by the effect that taking or failing to take action has in the marketplace. ‘The real question is public perception of plaintiff’s mark, not a battle count of how often it has sued others.’”

 

Specialized's Facebook page is attracting a great many negative comments, with many of the company's recent postings being used by Facebook members to attack Specialized for its stance over the name of a small Canadian bike shop.

 

The Roubaix name was originally trademarked in 1992 by Toshoku America Inc, then connected with Fuji bicycles. Fuji still markets Roubaix-branded bicycles.

 

A trademark attorney wrote at the time: "It is unlikely that a significant number of the American population would know that Roubaix, France is the location of a well-known annual bicycle race."

 

Specialized has owned the trademark in Canada since 2007. The protection applies to "Bicycles, bicycle frames, and bicycle components, namely bicycle handlebars, bicycle front fork, and bicycle tires." But not specifically wheels or shops although it could be argued that linked products count.

 

Roubaix is also the brand name for a fleecy stretch fabric by MITI of Italy, long used by cycling companies such as Endura and many others.

 

According to lawyer James Moss of Recreation Law, one potential get-out for Specialized might be to allow Café Roubaix to licence the use of the name for cycling products and for the licence fee to be a nominal low amount per year.

Seems to me like this will be a major case of eggs on the face of Spez, with the power of social media, not only has this bike shop got a lot of new customers, he may get the money to fight this.

[SwissVan]

Nothings impossible, why not turn bad publicity into good publicity, then it becomes a win win for everyone

 

I'm hearing a tune in my brain...."Its to late now...."