There They Go Again

[Arlingtonrider]

Cafe Roubaix has some very nice Tshirts and other clothing available for purchase – a good way to show support. I really hope people will shame Specialized into dropping this. I don’t know Canadian law, but I don’t think anyone should be able to trademark the name of a region of a country.

[PotomacCyclist]

Unfortunately, I don’t think Specialized could drop it completely. Maybe come to some sort of arrangement. If they ignore possible trademark infringement cases, they can lose the right to the trademark completely, for failure to protect it. While the particular damage in this case is minimal, if they were to lose trademark protection in general, they could lose much more. I’m not picking a side here. Just pointing this out.

Whether or not one can trademark the name of a region or country is another matter. There are other brands and product names along these lines, such as the GMC Denali.

[TwoWheelsDC]

@PotomacCyclist 71324 wrote:

Unfortunately, I don’t think Specialized could drop it completely. Maybe come to some sort of arrangement. If they ignore possible trademark infringement cases, they can lose the right to the trademark completely, for failure to protect it. While the particular damage in this case is minimal, if they were to lose trademark protection in general, they could lose much more. I’m not picking a side here. Just pointing this out.

Whether or not one can trademark the name of a region or country is another matter. There are other brands and product names along these lines, such as the GMC Denali.

My understanding is that the trademark applies to naming bike frames/accessories (which would also apply in cases like the Denali, where the trademark covers very specific uses) , so I’m hoping the courts throw this out and order Spesh to pay Cafe Roubaix’s legal fees. Given that Fuji also has a model named Roubaix makes me wonder how Spesh even got the trademark to begin with, but maybe Canada has variations in its trademark/copyright law in that respect.

[peterw_diy]

One commenter suggested that a Specialized could ask the shop to pay $1 to license rights to (continue to) use the word. Any IP lawyers want to comment on that idea?

[vvill]

Yeah I also immediately thought of the Fuji Roubaix (I’ve rented one before… surprisingly *un*comfortable aluminum!) when I saw this news. A $1 settlement would be cool.

[Dirt]

I love and respect all mankind.

[Drewdane]

@PotomacCyclist 71324 wrote:

If they ignore possible trademark infringement cases, they can lose the right to the trademark completely, for failure to protect it.

That’s what Specialized likes to say, but I’m not buying it. This guy explains it better and more authoritatively than I ever could.

Key passage:

Trademark owners are not required to object to each and every use of a name. What they are required to do is to work to avoid confusion. In other words, Specialized might appropriately object to a bicycle carrying the moniker “Roubaix,” since they have trademarked the name of their model, but that authority doesn’t extend to virtually every use of the name … even when it’s related to cycling.

[jabberwocky]

@PotomacCyclist 71324 wrote:

Unfortunately, I don’t think Specialized could drop it completely. Maybe come to some sort of arrangement. If they ignore possible trademark infringement cases, they can lose the right to the trademark completely, for failure to protect it.

FWIW, I know this is a popular conception, but I don’t think its true. Companies have to go to certain lengths to prevent the genericisation of their trademarks, but they aren’t required to police the entire world and go after everyone they find using it to keep from losing it. Especially when its a word thats already a popular term associated with the sport (like Roubaix, which is a city, or the word “Epic” another term they have vigorously sued people over). If there is a reasonable chance people could get confused (if another company called a similar road bike the Roubaix, for example) they would have a case. As it is, its difficult to imagine people confusing the shop name as being associated with specialized in some way, so they are likely just being dicks. Which is par for the course for specialized.

[dkel]

@Dirt 71331 wrote:

I love and respect all mankind.

And corporations are people, too.

So I’m told.

[mstone]

It’s too bad the fight would cost so much, because there’s a good chance specialized would lose. There’s a reason most corporate stuff uses made up names these days, and that Microsoft doesn’t go after anyone selling a window.

[Dickie]

A few years back I collaborated with another company to design and build a product from scratch. They paid for my R&D and my intellectual property and I provided them a working product. We agreed that the product would remain my companies property but our contract forbids me from building it for anyone else, and they are forbidden from using any other manufacturer/designer. This has been a great relationship so far although we started getting concerned when we spotted copy cats popping up. We looked into trademarking the design but after massive hours researching and consult costs we abandoned the idea as it was far too costly and time prohibitive… the process would have nearly bankrupted us both. A few years later a large NY company built a product based on ours and served us with a cease and desist letter…. crazy. We were lucky and had an ace up our sleeve but it could have become ugly. My point to all of this is that trademark registration is an incredibly difficult and expensive process filled with so much convoluted bureaucracy that lawyers are required…. thus it becomes a game for larger companies. Even those small companies that have established a trademark have very little success defending it in court. The threat of a suit is similar to going “all in” during a poker game…. whoever has the largest stack of chips has a massive advantage…. just owning a trademark does little for you, you also need the funds to defend it. Suggesting this business owner should have trademarked the name “Roubaix” himself or that a “simple” search would have prevented the issue is just naive.

[Dirt]

I’ve been through this with Specialized a few times already and I really don’t like the way they handle this sort of thing. It is a little different for me this time, though. I work for a shop that sells Specialized bikes, clothing and accessories. I also have friends who work for the company as well as friends who are athletes sponsored by Specialized. My view is a bit more complex.

The way things like this have been handled in the past make me extremely angry and make me seriously want to go off on them. Specialized has squashed more than one “little guy” in the process of “protecting their trademarks”. One of them is a guy I know.

Before I started working for Freshbikes, I did some research. I had to see if I could stomach selling Specialized bikes and merchandize. I found a TON of good that the company does… Some of which is somewhat self-serving… they do good things so that they can sell more product. But a lot of the good that they do is above and beyond that… and it is stuff that doesn’t always get seen by the public. Here are a few things that I really like in both of those categories:

Specialized has a local grant program that encourages and funds their dealers to do charitable work. It is not easy to make money in the bike business. Doing stuff behind the scenes to make it easier for dealers to give back to their community really helps.

It is difficult for professional cyclists to transition into life after racing… either due to retirement or injury. There are very few companies that stick with their athletes and work extremely hard to help in that process. Specialized is one of the best.

From a product standpoint, Specialized does a lot to try and design things to be less disposable. In a world where so many companies take shortcuts to almost insure that people will buy a new widget when a small part for said widget breaks, Specialized does a better job than almost any company I know at NOT doing that. They are taking this philosophy deeper into their product lines than they have in the past. They make it easy and cheap for dealers to stock the small parts that are needed to fix things like shoes and helmets. As a cyclist newly of modest means, I really appreciate that.

Are they perfect? Hell no. Do they still do stuff that pisses me off? YUP! Does it really suck? YES! I really wanted to post up a comment about how they’re going to go after a town in France and one of the spring classic races for using the Roubaix name. I’m glad I didn’t though.

I guess that I’m able to take the good with the bad.

[UrbanEngineer]

Somebody posted a pretty funny comment on Specialized’s Facebook page.

https://www.facebook.com/specializedbicycles/posts/10152037568222579?comment_id=28765156&offset=0&total_comments=647

“Dear Specialized, I represent the letter “S” and as such I am alerting you of the need for you to immediately cease and desist using that letter “S”. A simple search of the alphabet would have prevented this, but you have used the letter with impunity and the letter “S” is certain that, if it does not defend its right to ownership, everyone will feel some right to use what many people feel is just a letter of the alphabet. Thank you.”

[TwoWheelsDC]

@UrbanEngineer 71414 wrote:

Somebody posted a pretty funny comment on Specialized’s Facebook page.

https://www.facebook.com/specializedbicycles/posts/10152037568222579?comment_id=28765156&offset=0&total_comments=647

“Dear Specialized, I represent the letter “S” and as such I am alerting you of the need for you to immediately cease and desist using that letter “S”. A simple search of the alphabet would have prevented this, but you have used the letter with impunity and the letter “S” is certain that, if it does not defend its right to ownership, everyone will feel some right to use what many people feel is just a letter of the alphabet. Thank you.”

Also looks like every posting they’ve put up has a link to the article in the comments. Love it.

[PeteD]

Um… Oops?

http://www.bicycleretailer.com/north-america/2013/12/09/asi-says-calgary-bike-shop-can-use-roubaix-name

Seems that Specialized didn’t actually own the trademark, but was licensing it from the company that makes Fuji / Kestrel.

–Pete

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