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Specialized Bicycles “overstepped its bounds;” forced to back pedal over trademark attack on Canadian bike shop

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Specialized Bicycles is on the hot seat with bicyclists — many of whom say they’re boycotting the company — after trademark attorneys for the US-based bike maker threatened to sue a war veteran in Canada.

Just one example of social media reaction to Specialized...

Just one example of social media reaction to Specialized…

It looks like the company is backing down, however, after it initially alleged that Dan Richter’s Cafe Roubaix Bicycle Studio near Calgary violates the trademark that Specialized holds on the model name of one of its road bikes — Roubaix.

The issue went viral on Saturday after a blog posting by Tom Babin at the Calgary Herald: “War vet forced to change bike shop’s name after threat for U.S. bike giant Specialized.”

Specialized backing down

The news unleashed a firestorm on the social media over the weekend, and by Monday night it looked like Specialized was rethinking its stance.

Richter posted on his Facebook page Monday night:

“We can announce that your voices have been heard. We are now back in discussions with the other party. We are aware of recent announcements by third parties within the industry.

“We thank you for your continued support….

“Over the weekend, we have received over 3500 emails, hundreds of phone calls and messages, how many #s and @s? Tweets? Do numbers go that high? Our little studio is just barely 900 sqft and cycling fans, cyclists, Velomintus, industry leaders & big shots, pro riders, and icons have all made their voice heard.”

Third parties

The “third parties” that Richter refers to is Advanced Sport International (ASI), which owns the Roubaix trademark and licensed it to Specialized in the United States in 2003.

ASI told Bicycle Retailer Monday night that Specialized “overstepped its bounds when it registered the Roubaix trademark in Canada and then tried to prevent a Calgary retailer from using the name.”

ASI’s CEO Pat Cunnane told Bicycle Retailer:

“We are in the process of notifying Specialized that they did not have the authority, as part of our license agreement, to stop Daniel Richter … from using the Roubaix name. While ASI does have the authority to object to Mr. Richter’s use of the name and while we at ASI understand the importance of protecting our bicycle model names, we believe that Mr. Richter did not intend for consumers to confuse his brick-and-mortar establishment or his wheel line with our Roubaix road bike. And we believe consumers are capable of distinguishing his bike shop and wheel line from our established bikes.”


Bike shop

Last weekend, Richter, who doesn’t have the money to fight Specialized, said he didn’t intend to boost his business by stealing the Roubaix name from Specialized. Instead, he named it after “a region in France that hosts one of the most famous bike races in the world, the gruelling 117-year-old Paris-Roubaix.”

Richter, who served with Canadian forces in Afghanistan, told Babin:

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

Bullying

The story about the giant US company going after a small Canadian bike shop incensed readers, and the issue went viral on Twitter and Facebook over the weekend. Hundreds of Tweets supported Cafe Roubaix and attacked Specialized for being a bully.

It also brought up the sore subject of Specialized going after the tiny Epic wheel works company in Portland a few years ago, as Epic also is the trademark of bike model. More bizarre is Specialized’s action against a Portland-based bike builder for using the name “Stumptown” on its cyclocross bike. Specialized claimed it violated the trademark on its “Stumpjumper” bicycle.

I understand that a company has to protect its trademarks or lose them. What I don’t understand is how a company can get a trademark on the name of a town in France, then hunt down bike outfits that use that name. Shouldn’t place names be in the public domain?

Support

Since the story broke, support for Richter has rolled in. Attorneys have contacted him about taking his case pro bono, and a website, “Save Cafe Roubaix!”, is raising money for legal action.

The only word from Specialized has been from the managing director of Specialized Canada Inc., who said on Friday that the company is protecting its trademark, which is registered in Canada but not the US.

The Bicycle Retailer website said a statement from the company was forthcoming on Monday, but nothing had been issued as of Monday night.

This whole trademark business can become ridiculous. Consider:

If you’re like me, you CRAVE (TM Specialized) more news about the STATUS (TM Specialized) of the bike shop owner’s FATE (TM Specialized). Specialized is kind of stuck between a CRUX (TM Specialized) and a HARDROCK (TM Specialized), but the shop owner might have to choose an ALIAS (TM Specialized) to continue his business.

Here are a list of Specialized bike models. I would think that the company’s trademark attorneys must keep themselves fairly busy protecting some of these names.

Permanent link to this article: http://www.bikingbis.com/2013/12/09/specialized-bicycles-overstepped-its-bounds-forced-to-back-pedal-over-trademark-attack-on-canadian-bike-shop/

2 comments

  1. Nelson

    Hey, I was just browsing the names of the specialized bikes and I noticed a bike named fatboy, that happens to be the name of a popular Harley Davidson motorcycle, did specialized lease the name from H.D????

  2. new era baseball caps apparel 59fifty caps

    Great blog here! Also your website quite a bit up fast! What web host are you the use of? Can I am getting your associate link in your host? I want my website loaded up as fast as yours lol

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