Specialized pressures Canadian bike shop to drop Roubaix from its name...

Seweryn

More info here and here.

Some shocking bullying story there. Don't like that practice by Specialized at all .

WillyFXP

This has caused a sh1tstorm for specialized, hopefully they will drop it, it's a tiny LBS ffs.

ednwireland

wondered why you couldnt get roubaix cycling tights anymore ... oh wait

how specialized could actually claim the trademark on anything except a bicycle is beyond me, in fact the town of roubaix should sue specialized for damages.

+1 on thsh1tstorms serves em right, seem to be losing a lot of credibility fast over this

Jeffm587

Their facebook page makes an interesting read lately

gman2k

#Iamnotspecialized is going well on the Twitter machine!

Darkglasses

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.

From their facebook page:pac:

Chartsengrafs

Picking on an Afghan war vet. Wow that's clever PR.

diomed

Seweryn wrote: »

specialized-pressures-canadian-bike-shop-to-drop-roubaix-from-its-name

Perhaps Specialized will try to get Roubaix to drop Roubaix from its name.

fondriest

It will be interesting to see how this pans out , they are getting a huge amount of bad publicity from it . With the bike shop owner being a war vet the mainstream press in the U.S. will have a field day.

Darkglasses

In 2006 Specialized sued Mountain Cycle over its use of the model name "Stumptown" (nickname for Portland), alledging it resembled the Specialized model name Stumpjumper. Mountain Cycle closed doors shortly thereafter.
In 2011 Portland wheel builder Epic Wheel Works was forced to change its name due to potential trademark conflict with Specialized.
In 2012 the company sued two former employees after they started the bicycle brand Volagi. Specialized lost on all accounts except one and was awarded one dollar in damages after spending 2.5 million dollars on the lawsuit.

http://en.wikipedia.org/wiki/Specialized_Bicycle_Components#Litigation

Apparently they've a record of being litigious.

Bunnyhopper

I'd like to see the owners of the original Tarmac trade name threatening Specialized.

TheBlaaMan

Available to buy on eBay already, apparently

WillyFXP

Darkglasses wrote: »

http://en.wikipedia.org/wiki/Specialized_Bicycle_Components#Litigation

Apparently they've a record of being litigious.

The Apple of the cycling industry?

Darkglasses

WillyFXP wrote: »

The Apple of the cycling industry?

Haha by their own admission!!

Volagi attorney Charles Smith argued that Specialized had brought the suit to stifle competition. Smith argued, using a section of the California labor code, that as long as employees are dutiful to their employers, they are free to work on other projects on their own time. In a direct rebuke to Sinyard’s claim on the stand of being the “Apple Computer of bicycles,” Smith completed his statements with the words, “Mike Sinyard, you are no Steve Jobs.”

http://velonews.competitor.com/2012/01/news/an-expensive-dollar-volagi-owes-specialized-1_203443

L'Enfer du Nord

What about the Claude Butler bicycle of the same name:
http://claudbutler.co.uk/cycle-range/range/claud-butler-road-touring/b2847

Incidentally I considered buying a Specialized Roubaix some time ago but decided against it, mostly because it was convient for me to go to a Specialized stockist.

I remember thinking later that calling it the Roubaix was a fairly effective piece of marketing on me, I assumed that a bike with that name would be good for our bumpy roads. But is it really any better than other bikes in its class?

Darkglasses

It's nice to see that Cafe Roubaix's Facebook page is getting popular out of this too - https://www.facebook.com/CafeRoubaix

Lusk_Doyle

Darkglasses wrote: »

It's nice to see that Cafe Roubaix's Facebook page is getting popular out of this too - https://www.facebook.com/CafeRoubaix

Yea. I changed my profile and cover photos to his banners! Fight the power grabbers!

Eamonnator

New race on the Calendar for next year:

PARIS/BLANCO.

There are a few cobbled sections in it.

C3PO

This is really starting to gather momentum .... interesting to see if Specialized back down!

Lusk_Doyle

I bought two t shirts from him to support him. I think I'm going to rebrand my two specialized bikes now also.

fondriest

Lusk_Doyle wrote: »

I bought two t shirts from him to support him. I think I'm going to rebrand my two specialized bikes now also.

Also just ordered a t-shirt , nice to support them . #hatebullys

Seweryn

Jeffm587 wrote: »

Their facebook page makes an interesting read lately

Wow, there is some reading...

The unbelievable for me is their claim to the Roubaix name.

Specialized are going down to the uncool section IMO.

jiffybag

Poor marketing from them . Spesh is the new Trek. ( uncool )
The guy is getting lots of worldwide support . His Facebook page has gone from 500 likes to over 11, 000 in three days !
I have an uncle living in that town in Cochrane , nice ice cream shop next door too !

Seweryn

More news here.

fondriest

It looks like David has beaten Goliath. http://www.bicycleretailer.com/north-america/2013/12/09/asi-says-calgary-bike-shop-can-use-roubaix-name

Lumen

fondriest wrote: »

It looks like David has beaten Goliath. http://www.bicycleretailer.com/north-america/2013/12/09/asi-says-calgary-bike-shop-can-use-roubaix-name

More like Goliath getting beaten up by his wife.

fondriest

Lumen wrote: »

More like Goliath getting beaten up by his wife.

He should have remembered their anniversery.

DaithiMC

fondriest wrote: »

It looks like David has beaten Goliath. http://www.bicycleretailer.com/north-america/2013/12/09/asi-says-calgary-bike-shop-can-use-roubaix-name

Interesting reading - Specialised were very clumsy here. They do have to protect their TM in order to maintain it, otherwise the word becomes part of common language and cannot be Trademarked, but I am sure they could have done this on the QT and given the guy a license to use the word for bike-related stuff.

Seweryn

"Richter told the Calgary Herald this weekend that lawyers representing Specialized told him he had to rename his store and transfer its website’s URL to Specialized."

Now, that is just dictatorship practices .

stecleary

Looks like Specialised are backing down


Café Roubaix Bicycle Studio
22 minutes ago
I had a great conversation with Mike Sinyard today, and I am happy to let everyone know that things will be working out fine.

We thank you for your continued support. You have all been so very awesome to us!

Thank you,
Dan

Darkglasses

stecleary wrote: »

Looks like Specialised are backing down


Café Roubaix Bicycle Studio
22 minutes ago
I had a great conversation with Mike Sinyard today, and I am happy to let everyone know that things will be working out fine.

We thank you for your continued support. You have all been so very awesome to us!

Thank you,
Dan

I had great conversation with Mike Sinyard today, and he's going to give me a fair few bob to never mention Specialized Bicycles ever again.

Completely unofficial transcript.

brownh66

Here's an interesting article about Specialized protecting the company brand.

http://viciouscycleblog.com/2013/12/08/the-bike-giant-that-stole-christmas/

Quite insightful about how big business operates at the grassroots level. I was interested in their products until now.

What do you all think ?

Darkglasses

http://www.boards.ie/vbulletin/showthread.php?t=2057100821

Already a thread

Cee-Jay-Cee

DaithiMC wrote: »

Interesting reading - Specialised were very clumsy here. They do have to protect their TM in order to maintain it, otherwise the word becomes part of common language and cannot be Trademarked, but I am sure they could have done this on the QT and given the guy a license to use the word for bike-related stuff.

Who are they to give anyone a licence for a name of a city in another country. The Roubaix city council or whatever should sue specialized or demand royalties for the use of their name!

I don't honestly believe that a small time LBS in canada (no matter what its name) is going to impinge even remotely on Specialized's sales or martketing potential. They're bullies and i hope this damages their business/sales big time, they might think twice before trying to ruin a small business next time.

Seaneh

This is whole thing is sadly kinda of reminiscent of apples patent trolling practices.

mcgratheoin

CJC999 wrote: »

Who are they to give anyone a licence for a name of a city in another country. The Roubaix city council or whatever should sue specialized or demand royalties for the use of their name!

+1 How about PDO status for Roubaix, like Feta cheese or Champagne - you can only call it a Roubaix bike if it's made in Roubaix!!

Seweryn

More info here.

So when all the cycling world started pointing fingers at Specialized for their silly decision and when their HQ realised they are loosing commercially big time, they now decided to "allow him to continue using the 'Roubaix' name" :rolleyes:.

S., you have done enough damage.

DaithiMC

CJC999 wrote: »

Who are they to give anyone a licence for a name of a city in another country. The Roubaix city council or whatever should sue specialized or demand royalties for the use of their name!

I don't honestly believe that a small time LBS in canada (no matter what its name) is going to impinge even remotely on Specialized's sales or martketing potential. They're bullies and i hope this damages their business/sales big time, they might think twice before trying to ruin a small business next time.

They are the trademark holder (or licence holder from the Trademark owner) for the use of the word "Roubaix" in the context of bikes. If the Canadian shop decided to sell clother tomorrow and kept the name "Roubaix" then they would not be infringing.

You may not like it but that's the way Intellectual Property law works and the Roubaix city council, apart from perhaps having some deal with ASO don't have a say in asserting other people's IP rights.

You'r probably correct about the LBS shop in Canada but if Specialized didn't act then they would risk losing the trademark as the word would become a commonly used word and therefore could not be protected for trade purposes. The way they went about this was particularly stupid and hamfisted, i.e., they could have taken your view and granted a free licence to the shop and everyone would be none the wiser.

DaithiMC

mcgratheoin wrote: »

+1 How about PDO status for Roubaix, like Feta cheese or Champagne - you can only call it a Roubaix bike if it's made in Roubaix!!

Except that Roubaix isn't known for the production of a specific type of bike that has unique features endowed upon it by the region in which it is made. It is know for being a destination in a bike race which has unique features on its course, but is not related to the bikes that use that course.

diomed

CJC999 wrote: »

Who are they to give anyone a licence for a name of a city in another country. The Roubaix city council or whatever should sue specialized or demand royalties for the use of their name!

Let's get our big gun out of its holster.

European Union V Specialized ..... in a cage fight. :pac:

mcgratheoin

DaithiMC wrote: »

Except that Roubaix isn't known for the production of a specific type of bike that has unique features endowed upon it by the region in which it is made. It is know for being a destination in a bike race which has unique features on its course, but is not related to the bikes that use that course.

It was a tongue in cheek suggestion Daithi.

However, the ASO could legitimately be annoyed at the use of Roubaix to sell bikes and associated products. They organise the race each year and the use of the name "Roubaix" is clearly designed to create a link in the mind of the consumer between a product and this race rather than the town itself. It would be like a car company sticking a "Le Mans" badge onto one of its models and then having a go at a specialist vintage car mechanic for calling his shop "Le Mans auto repairs".

The point about Specialized possibly losing the trademark is complete misdirection emanating from them. While they are required to defend their use of the trademark, they are not required to initiate legal proceedings in every instance. For example, they could have written to the LBS to ensure that no bikes or parts bearing the name "Roubaix" could be manufactured and sold, or they could have come to an arrangement with the owner without the threat of legal action - there are many avenues of approach that would be accepted as defending their trademark.

The really interesting thing here now is that Specialized appear to have trademarked Roubaix when they had no right to do so and when they had already paid a licence fee themselves to use it!

boege

Lot of misinformation in this tread and also I suspect in the articles posted. I manage IP in my work and am currently dealing with some trademark infringement issues. As specialised said a quick check is all that is required...it took me all of 20 seconds to see if this trademark was registered in Canada well before the shop was opened.

The Mark can only be enforced in the relevant category for which the mark has been approved and Specialised have registered it for the sale of bicycle related items. Above all else Specialised have followed the law and to have not done so would damage their trademark rights.

We also dont know the full story here as to whether Specialised went through due process with the shop and I think we owe them the benefit of the doubt before we start disowning their bikes. That said I'll take an S-Works off anyone who has one and feels particulalry bad about this issue - small frame size please:)

Whether they should have been able to trademark the name of a town that hosts a very famous bicycle race is a separate arguement and one for which the Canadian intellectual property office is responsible. The fact is they have approval on the registration and they have to maintain it or lose it.

APPLICATION NUMBER:
1331172
REGISTRATION NUMBER:
TMA702027
STATUS:
REGISTERED

FILED:
2007-01-12

FORMALIZED:
2007-01-16

ADVERTISED:
2007-08-08

REGISTERED:
2007-11-29


REGISTRANT:
Specialized Bicycle Components, Inc.
15130 Concord Circle
Morgan Hill, California, 95037
UNITED STATES OF AMERICA

TRADE-MARK (Word):
ROUBAIX


INDEX HEADINGS:
ROUBAIX


WARES:
(1) Bicycles, bicycle frames, and bicycle components, namely bicycle handlebars, bicycle front fork, and bicycle tires.

CLAIMS:
Used in CANADA since at least as early as April 06, 2003.

Lusk_Doyle

boege wrote: »

Lot of misinformation in this tread and also I suspect in the articles posted. I manage IP in my work and am currently dealing with some trademark infringement issues. As specialised said a quick check is all that is required...it took me all of 20 seconds to see if this trademark was registered in Canada well before the shop was opened.

The Mark can only be enforced in the relevant category for which the mark has been approved and Specialised have registered it for the sale of bicycle related items. Above all else Specialised have followed the law and to have not done so would damage their trademark rights.

We also dont know the full story here as to whether Specialised went through due process with the shop and I think we owe them the benefit of the doubt before we start disowning their bikes. That said I'll take an S-Works off anyone who has one and feels particulalry bad about this issue - small frame size please:)

Whether they should have been able to trademark the name of a town that hosts a very famous bicycle race is a separate arguement and one for which the Canadian intellectual property office is responsible. The fact is they have approval on the registration and they have to maintain it or lose it.

APPLICATION NUMBER:
1331172
REGISTRATION NUMBER:
TMA702027
STATUS:
REGISTERED

FILED:
2007-01-12

FORMALIZED:
2007-01-16

ADVERTISED:
2007-08-08

REGISTERED:
2007-11-29


REGISTRANT:
Specialized Bicycle Components, Inc.
15130 Concord Circle
Morgan Hill, California, 95037
UNITED STATES OF AMERICA

TRADE-MARK (Word):
ROUBAIX


INDEX HEADINGS:
ROUBAIX


WARES:
(1) Bicycles, bicycle frames, and bicycle components, namely bicycle handlebars, bicycle front fork, and bicycle tires.

CLAIMS:
Used in CANADA since at least as early as April 06, 2003.

But nothing about handmade carbon wheels or cafes.

inc21

boege wrote: »

Lot of misinformation in this tread and also I suspect in the articles posted. I manage IP in my work and am currently dealing with some trademark infringement issues. As specialised said a quick check is all that is required...it took me all of 20 seconds to see if this trademark was registered in Canada well before the shop was opened.

The Mark can only be enforced in the relevant category for which the mark has been approved and Specialised have registered it for the sale of bicycle related items. Above all else Specialised have followed the law and to have not done so would damage their trademark rights.

We also dont know the full story here as to whether Specialised went through due process with the shop and I think we owe them the benefit of the doubt before we start disowning their bikes. That said I'll take an S-Works off anyone who has one and feels particulalry bad about this issue - small frame size please:)

Whether they should have been able to trademark the name of a town that hosts a very famous bicycle race is a separate arguement and one for which the Canadian intellectual property office is responsible. The fact is they have approval on the registration and they have to maintain it or lose it.

APPLICATION NUMBER:
1331172
REGISTRATION NUMBER:
TMA702027
STATUS:
REGISTERED

FILED:
2007-01-12

FORMALIZED:
2007-01-16

ADVERTISED:
2007-08-08

REGISTERED:
2007-11-29


REGISTRANT:
Specialized Bicycle Components, Inc.
15130 Concord Circle
Morgan Hill, California, 95037
UNITED STATES OF AMERICA

TRADE-MARK (Word):
ROUBAIX


INDEX HEADINGS:
ROUBAIX


WARES:
(1) Bicycles, bicycle frames, and bicycle components, namely bicycle handlebars, bicycle front fork, and bicycle tires.

CLAIMS:
Used in CANADA since at least as early as April 06, 2003.

I have Specialized but it is only alu frame. I would even give you few euro and come collecting myself to rid of you from your S-Works monstrosity.

Seweryn

Specialized is doing the same to Epix now...

petethedrummer

They must have hired a new head of the legal division and this person is looking to make a name for themselves. Head of marketing and head of sales are gonna have to have a word.

ThisRegard

boege wrote: »

Above all else Specialised have followed the law and to have not done so would damage their trademark rights.

I read an article or two from a number of other specialists on this topic and they all said that the above statement is not strictly true, all that had to be done was to licence the store to use the name for a nominal fee, not send off legal threatening letters.