Specialized slammed over legal threat against Canadian bike shop using Roubaix name

Social media users attack US brand's stance against war vet trading as Café Roubaix - but it says it has to protect trademark or lose it

by Simon_MacMichael   December 8, 2013  

Cafe Roubaix carbon rim

California-based bicycle manufacturer Specialized is facing a wave of criticism on social media after it emerged that the company has threatened a war veteran in Canada who set up a bike shop called Café Roubaix with legal action for using ‘Roubaix’ in the name. But the company insists that under intellectual property law, it has to protect the trademark – or lose it.

The shop, opened in March this year in Cochrane, Alberta, belongs to Dan Richter, who has been battling with post-traumatic stress disorder (PTSD) since returning from a tour of duty with the Canadian armed forces in Afghanistan, reports the Calgary Herald.

Richter, who also produces carbon wheels that beat the Café Roubaix name, says he chose the name of his shop in honour of one of cycling’s most iconic sites. The ‘Queen of the Classics,’ Paris-Roubaix, was first held in 1896 to help publicise the new velodrome in the town in northern France that still hosts the finish of the race.

But since 1992, Roubaix has also been a trademark, initially filed in the United States by Toshoku America, a company that at the time was associated with Fuji bicycles.

According to BikeBiz, when the trademark was registered, a trademark attorney noted: "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."

The trademark, which applies to “Bicycles, bicycle frames, and bicycle components, namely bicycle handlebars, bicycle front fork, and bicycle tires,” has been used under licence in the United States since 2007 by Specialized, which has also filed for trademark protection in its own right elsewhere, including Canada.

Founded in California in 1974 by Mike Sinyard and now 49 per cent owned by Taiwanese bicycle manufacturer Merida, Specialized has an estimated turnover of around half a billion dollars annually.

Reaction to the news of the threats of legal action against the owner of a fledgling business has unsurprisingly led to accusations of bullying being levelled against the company and appeals to it to make an exception in this case, as well as calls for a boycott of its products.

A number of Twitter users have changed their names on the social network to incorporate ‘Roubaix’ and a search on the word reveals the strength of feeling surrounding the issue.

Specialized is also taking a lot of flak on its Facebook page over the issue. One user, Perry Davidson, has attracted more than 400 ‘likes’ for the following comment posted on the bike manufacturer’s page which alludes to its logo:

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.

But on the issue of Café Roubaix, Specialized insist their hands are tied and the way trademark law works means that they have no room for discretion on the issue.

Larry Koury, Specialized Canada’s managing director, explained to the Calgary Herald that since the word ‘Roubaix’ is registered to the brand on the Canadian government’s trademark database, "A simple trademark search would have prevented this.”

He added: “We are required to defend or lose our trademark registration" – in other words, if they do not take steps to protect its trademark, they would no longer have exclusive rights to it.

As BikeBiz notes, it’s possible that the company’s objections are related to the wheels produced by Richter that carry the Café Roubaix name, rather than the name of the shop, which sells high-end bikes and components and aims to have an Italian feel. Specialized is not one of the brands stocked.

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

“We didn’t want to go public… but they’ve made it clear on no uncertain terms, they are going to sue.”

He pointed out that among his target customers, Roubaix would be synonymous with the race that finishes there.

“I understand the need for the protection of intellectual property, but this is named after a city known worldwide for this race,” he explained.

“For our customer base, there’s an appeal [in the name Roubaix]. Our market understands that race, and it reflects what we want to provide for them.”

Richter says his lawyer believes that he has a strong case, but he cannot afford to contest the case, with legal fees to fight Specialized in the courts estimated to be at least C$150,000 (£86,000); as a result, he says he has no option but to acquiesce to Specialized’s demands.

A crowd-funding campaign has been set up on Indiegogo to help raise money to meet the costs of those legal fees, but at the time of writing stands at just $532 – some people who might otherwise have contributed perhaps deterred from doing so by the experience of donors to the Paul Kimmage Defense Fund.

Assuming he cannot fight the threatened action from Specialized, Richter will have to go through the time-consuming process of changing his store’s name and branding.

It also means much of his effort that has gone into building his business to date will have gone wasted – although paradoxically, whichever name the shop bears in future, it could certainly be argued that since the story went viral, Richter is benefiting from an undreamt of level of publicity for his business.

“I’ve gone through some very intense therapy in the last year,” said Richter, referring to his treatment for PTSD.

“Forcing myself to get out there into the public and the business world has taken a huge effort,” he added.

“I’m just at the point were we think this might fly, so this was a huge hit for me personally.”

In a forum thread on road.cc that links to the Calgary Herald article, the widespread feeling among those posting is that Specialized is being far too heavy-handed on the issue and could display some flexibility, one pointing out that the parties could draw up a trademark coexistence agreement, allowing both to use the word ‘Roubaix’ in specific areas.

Specialized has faced accusations of bullying in the past, including in relation to a legal action launched in 2010 against former employees Robert Choi and Barley Forsman, which it accused of stealing its designs when founding their new company, Volagi.

Earlier this year, a court in California dismissed most of Specialized’s claim, including that of intellectual property theft over Volagi's LongBow Flex frame design, which the new company had patented.

The case for breach of contract against Forsman was also dismissed, although Choi was found to have breached his with the court establishing that he had started planning the competing company while still working at Specialized.

A jury awarded Specialized a token one dollar in damages; the combined legal fees of both sides were estimated at nearly $2 million (£1.2 million).

Besides– for the time being at least – a bike shop in Canada, there is also a Romania-based website, caferoubaix.com, that shares the name.

55 user comments

Latest 30 commentsNewest firstBest ratedAll

If it’s unlikely that a significant number of the American population (which must include those who ride bikes) don’t know Roubaix, France is the location of a well-known annual bicycle race." Then a significant number of the American population must be thick or insular, the same population who thought Lance Armstrong was a hero!!

Polly

posted by watercrook [54 posts]
9th December 2013 - 8:57

24 Likes

Hi sells Italian stuff - why would he wish to use a French name? (Though not surprised that the USA fail to recognise the resonance of French locations in the Canadian consciousness.)
Cafe Milan San Remo might have had more relevence to his stock.
No, you can't put components on a bicycle and call them 'Roubaix' unless you're Specialised.

posted by BertYardbrush [28 posts]
9th December 2013 - 8:57

34 Likes

I couldn't help but giggle at the Hargroves Cycles banner advert at the top of the page advertising a sale on all Specialized products. Glad that someone above has linked to the BikeBiz article by the Lawyer called "The Explainer". Important point that Specialized's claim that they must "use it or lose it" is spurious in US law.

posted by Mikeduff [24 posts]
9th December 2013 - 9:00

27 Likes

Sorry - I meant redkiteprayer, not BikeBiz!

posted by Mikeduff [24 posts]
9th December 2013 - 9:02

32 Likes

The issue here isn't whether or not they can breach copyright laws; it's that they trademarked, and were allowed to do so, the term 'Roubaix'.

posted by alexholt3 [52 posts]
9th December 2013 - 9:16

30 Likes

Even if their choices were to defend it or lose it, it would have been cheaper to lose it because there are a lot of people who will not buy specialized again now.

posted by a.jumper [723 posts]
9th December 2013 - 10:02

28 Likes

watercrook wrote:
If it’s unlikely that a significant number of the American population (which must include those who ride bikes) don’t know Roubaix, France is the location of a well-known annual bicycle race." Then a significant number of the American population must be thick or insular, the same population who thought Lance Armstrong was a hero!!

I very much doubt that the vast majority of the population of the UK would know that either.

posted by dp24 [195 posts]
9th December 2013 - 10:05

32 Likes

Quote:
What about the various fleecy jerseys made of 'Roubaix' fabric? These are just 'fleece' to the rest of the world.
Do they not sell as Roubaix in the US?

Trademarks have to be specified - you can't just say "I own this word and no-one else can use it" cos that'd be stupid.
So Specialized have trademarked use of the term "Roubaix" is as much as it applies to bicycles or components. Not clothing, not cafes. I suspect the "infringement" comes as a result of the shop selling wheels with "Roubaix" written on them.

Same thing elsewhere: over here Orange (the mountain bike company based in Halifax) have a trademark on the use of the word "orange" as it applies to bicycle branding. Obviously not applicable to the fruit and the trademark doesn't extend to the telecomms industry either (hence Orange, the phone company is fine). But if you tried selling bike parts called Orange MTB Components, you'd be getting a letter off them telling you to stop! Happens all the time in industry, big business, the corporate world etc.

I've never seen it backfire quite this spectacularly though! I'd love to be a fly on the wall at Specialized HQ this morning. Smile

posted by crazy-legs [566 posts]
9th December 2013 - 10:13

31 Likes

Just ordered one of the Cafe Roubaix t-shirts… hoping that it doesn't become a collector's item… also wondered whether the cafe could offer to rename itself as "The Special Bike Cafe".

www.mombee.com - Muddy bikes, Road bikes and Family rides in Malmesbury and the South West

posted by Mombee [57 posts]
9th December 2013 - 10:21

23 Likes

Thanks for the link Bez, RKP hits the nail on the head. Shameful behaviour.

Simon E's picture

posted by Simon E [2051 posts]
9th December 2013 - 10:32

21 Likes

I think changing the letter on his products to an S would deal with the trademark issue, and sending out a press release saying so would continue his boost in sales following this exposure. It is corporate bullying and I've seen similar over the years. A Specialized Hardrock is one of the bikes in the family fleet and there is talk of a new bike being needed, but Specialized wasn't on the radar for the potential purchase anyway.

OldRidgeback

posted by OldRidgeback [2308 posts]
9th December 2013 - 10:35

24 Likes

The bullies.
I'm definitely not treating myself to a new Specialized S-works Venge Di2 now... I wish.

gazpacho's picture

posted by gazpacho [88 posts]
9th December 2013 - 12:49

20 Likes

Specialized ought to be ashamed of themselves. In any case case the name Specialized is a misrepresentation in an of itself.

Specialized should really be called Generalized.

Cycling is like a church - many attend, but few understand.

posted by oozaveared [745 posts]
9th December 2013 - 12:55

25 Likes

crazy-legs wrote:
I'd love to be a fly on the wall at Specialized HQ this morning. Smile

Their Twitter and Facebook pages have remained silent this weekend, given that it's only just coming up to 5 in the morning in Morgan Hill I'd imagine we are 3/4 hours from a response from an exasperated Specialised worker who is in over their heads and having the worst Monday ever.

posted by farrell [1579 posts]
9th December 2013 - 13:14

24 Likes

gazpacho wrote:
The bullies.
I'm definitely not treating myself to a new Specialized S-works Venge Di2 now... I wish.

If you're quick to the tip you can have the MacLaren S Works Venge I've just thrown away in protest.

posted by allez neg [4 posts]
9th December 2013 - 13:45

21 Likes

I'd be more concerned that his shop appears to be AN other 'brand' that's badging up gigantex rims and generic hubs making the unwise pay over the odds for a bog standard product that costs but a 1/4 of its RRP if you source direct yourself.

posted by rothbags [7 posts]
9th December 2013 - 14:08

17 Likes

rothbags wrote:
I'd be more concerned that his shop appears to be AN other 'brand' that's badging up gigantex rims and generic hubs making the unwise pay over the odds for a bog standard product that costs but a 1/4 of its RRP if you source direct yourself.

Yeah, like those awful car dealers bleeding you dry for a job you can do yourself with a jack, a multimeter and some spanners from Lidl.

Only you can't, so you pay.

Simon E's picture

posted by Simon E [2051 posts]
9th December 2013 - 16:10

19 Likes

farrell wrote:
crazy-legs wrote:
I'd love to be a fly on the wall at Specialized HQ this morning. Smile

Their Twitter and Facebook pages have remained silent this weekend, given that it's only just coming up to 5 in the morning in Morgan Hill I'd imagine we are 3/4 hours from a response from an exasperated Specialised worker who is in over their heads and having the worst Monday ever.

I bet their 'social media manager' has either phoned in sick or is having a shit-fit at some lawyers as we speak.

Velotastic !

Too many hills, but too little time.

badback's picture

posted by badback [276 posts]
9th December 2013 - 16:54

15 Likes

gazpacho wrote:
The bullies.
I'm definitely not treating myself to a new Specialized S-works Venge Di2 now... I wish.

You can mock but I bet there's going to be fewer Specialized tyres, tubes and small accessories being sold now. It may well have an impact on full bike sales too: my partner was just contemplating a Specialized road bike on Saturday and after this, the history of similar offenses and the use of body-painted girls in their Melbourne shop, I'll be amazed if the chosen bike is a Specialized.

posted by a.jumper [723 posts]
9th December 2013 - 17:18

21 Likes

No lawyer am I, but in the light of the 2003 Dastar judgement, precedent may well have been established that Specialized may not have a case in claiming ownership of something public domain - i.e. the name of the town of Roubaix - as a trademark.

posted by Lord Fishface [24 posts]
9th December 2013 - 18:19

12 Likes

Might be an urban myth, but didn't mcDonalds try suing fish'n'chips shops in Glasgow once as they held the trademark for the name in association with fast-food outlets? It was rejected on the basis that the McDonalds family in question had owned the chippy since the 1930s or whenever...

dafyddp's picture

posted by dafyddp [179 posts]
9th December 2013 - 19:40

10 Likes

Speshitalised.. what a bunch of cocks.

posted by Hector Ch [52 posts]
9th December 2013 - 19:53

17 Likes

NOT BUYING SWORKS...NOT BUYING SWORKS...NOT BUYING SWORKS...SWORKS=F**ING TOOLS

CJStevens

posted by CJSTEVENS1955 [74 posts]
9th December 2013 - 21:15

10 Likes

CJSTEVENS1955 wrote:
NOT BUYING SWORKS...NOT BUYING SWORKS...NOT BUYING SWORKS...SWORKS=F**ING TOOLS

Isn't there a "Mini Cooper S Works" I wonder who will sue who about that?

posted by alun [44 posts]
9th December 2013 - 21:22

14 Likes

Dear Specialized - this is not cool, it does not make me feel good about your brand or products.

Brand value is being eroded and its not good for your business or by the look of it, for customers with Specialized bikes / products… Thinking

evo111's picture

posted by evo111 [20 posts]
9th December 2013 - 22:06

15 Likes

As I said on Twitter, one way for the big S to redeem themselves is to drop this, then reclaim some old glory by funding Graeme Obrees kick starter movie.

He used their kit in his hour record.

Stupid, stupid behaviour from them, the guy has named his wee shop after the most famous spring classic, not a mass produced Asian built plastic frame!

All Campag

posted by Flying Scot [670 posts]
9th December 2013 - 22:14

12 Likes

dafyddp wrote:
Might be an urban myth, but didn't mcDonalds try suing fish'n'chips shops in Glasgow once as they held the trademark for the name in association with fast-food outlets? It was rejected on the basis that the McDonalds family in question had owned the chippy since the 1930s or whenever...

I know in Oz all the Burger Kings are call Hungry Jacks because a small Aussie business was trading under the BK name before t'other lot arrived.

Velotastic !

Too many hills, but too little time.

badback's picture

posted by badback [276 posts]
9th December 2013 - 22:17

13 Likes

dafyddp wrote:
Might be an urban myth, but didn't mcDonalds try suing fish'n'chips shops in Glasgow once as they held the trademark for the name in association with fast-food outlets? It was rejected on the basis that the McDonalds family in question had owned the chippy since the 1930s or whenever...

There was a guy with a farm, I think he had to change the way it was spelled.

I think the new spelling is E, I, E, I, O.....

posted by farrell [1579 posts]
10th December 2013 - 13:20

9 Likes

posted by rothbags [7 posts]
10th December 2013 - 16:36

9 Likes

This letter from Jack Daniels is how you protect your brand - take note spesh
http://brokenpianoforpresident.files.wordpress.com/2012/07/jd-letter-ent...

posted by arfa [542 posts]
12th December 2013 - 15:05

6 Likes