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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...

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.

Born in Scotland, Simon moved to London aged seven and now lives in the Oxfordshire Cotswolds with his miniature schnauzer, Elodie. He fell in love with cycling one Saturday morning in 1994 while living in Italy when Milan-San Remo went past his front door. A daily cycle commuter in London back before riding to work started to boom, he's been news editor at road.cc since 2009. Handily for work, he speaks French and Italian. He doesn't get to ride his Colnago as often as he'd like, and freely admits he's much more adept at cooking than fettling with bikes.

55 comments

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jmaccelari [240 posts] 2 years ago
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This is not surprising given Specialized's dubious past. A brand best avoided...

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Will Steed [48 posts] 2 years ago
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Its a place name, how can anyone have the name rights? Spec are just using size to bully. Bouycot until dropped I say. I regret buying a set of spec gloves last week now. Money which is going straight into this pointless lawsuit.

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jarredscycling [456 posts] 2 years ago
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Specialized is correct that they must fight trademark infringement or it could be lost but it is not as specific as they are making it sound. Band-Aide has to fight trademark infringement diligently because band-aide has become a part of our lexicon synonymous for all bandages not just a brand although in reality it is a brand.

However, I don't think there is any serious confusion about Roubaix slipping into the common vernacular for whole categories of products and therefore losing trademarkable status

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gareth2510 [167 posts] 2 years ago
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greedy twats. Use it or lose it my arse..as said above...its a PLACE name!!

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jmaccelari [240 posts] 2 years ago
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A name? How about the colour 'red' they claimed to own in this lawsuit against another small start up (and famously lost!) http://velonews.competitor.com/2012/01/news/an-expensive-dollar-volagi-o...
I love the Apple quote. Both companies seem to share a love of litigation.

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BarefootBrian [18 posts] 2 years ago
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Maybe he could change the name of the shop, and wheels, to Roubais. It sounds the same, everybody will know what he means, but it doesn't use the name of that town which we are not now allowed to say or write for fear of litigation.
Serously, how silly is this? A company can make a town name a trademark and nobody else is allowed to use it. This is total madness - big business gone wrong.

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peakingintwomonths [23 posts] 2 years ago
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"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."

Next minute the bloody French will be trying to use the word Allez  24

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numbercruncher [28 posts] 2 years ago
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What about Tarmac. I wonder if they got agreement to use what is presumably a registered trademark or trade name! Of course, they would probably argue that this is clearly not a competitve product to the black stuff, but then why let logic creep in to the argument. In light of recent events, Tarmac may feel that they don't want to be associated with a company that behaves in this way.
Anyone know a lawyer who works for Tarmac?

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allez neg [497 posts] 2 years ago
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I was told of another meaning to 'tarmacing' which, if nothing else, would significantly increase your laundry bill.

Specialized are quite welcome to it.

Oh, and I hear there's a class action suit against them on behalf of the world's population of rockhopper penguins.

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allez neg [497 posts] 2 years ago
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Hard rock cafe, anyone?

The Stones album Hot Rocks?

Sequoia? I think the trees got there first.......

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Simon_MacMichael [2450 posts] 2 years ago
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numbercruncher wrote:

What about Tarmac. I wonder if they got agreement to use what is presumably a registered trademark or trade name!

From experience, if you use Tarmac (or Portakabin, among other names) as a generic term in an article, you swiftly get an email from the relevant company's legal department pointing out it's a trademark and can't be used unless specifically referring to their product.

Clearly I can't be sure, but I imagine that there may be a trademark coexistence agreement (such as we refer to in the article) in place over that.

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Carlton Reid [132 posts] 2 years ago
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The BikeBiz article now has stuff from two US lawyers. The "defend it or lose it" thing is said to be spurious and US patent office has previously called out "bullying" companies for using that as an excuse.

http://www.bikebiz.com/news/read/specialized-facing-social-media-storm-a...

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edster99 [336 posts] 2 years ago
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Ok - Assos Roubaix shorts?

Hypocrisy, basically - Specialized are happy to piggy back off the history of Paris - Roubaix, but then want to sue a small shop that does the same thing, because they can.

I dont accept that there is an trademark issue. A frame = a Roubaix? I dont f*ing think so.

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Carlton Reid [132 posts] 2 years ago
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All depends on territories. Tarmac is very UK specific term (which makes Specialized's use of it quite odd; in American English tarmac is airport-specific).

Specialized Canada owns the Canadian trademark rights.

Fuji America seems to own US rights to Roubaix and looks to have shared those rights with Specialized USA (probably due to a product dispute). Fuji still sells Roubaix bicycles in USA.

Roubaix fleecy fabric from Italy has nothing to worry about.

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hamishmct [13 posts] 2 years ago
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Bad vibes and shame on you, Specialized....

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David Portland [83 posts] 2 years ago
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"Tarmac" is registered as a trademark by Tarmac Limited as relating to a bituminous building material and various goods and services related to construction and civil engineering. They have no power to prevent anyone applying the name to bicycles. You have to file trademarks in specific categories. The Specialized Canadian one could (not very convincingly because of the way it's worded) be argued to apply to wheels (although even then, the phrase "Cafe Roubaix" is not the same as the word "Roubaix") but there's no way at all it applies to a retail business regardless of what trade that business happens to be in.

(Disclaimer: I'm not a trademark (or indeed any other kind of) lawyer)

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bradtipp [11 posts] 2 years ago
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This seems to be a classic case of letting lawyers run a company...

Trademarks do have to be protected, but that can be done quite easily by mutual agreement. If Specialized had started with an offer to let this small company sign an agreement to only their trademark under certain conditions then all might have been OK. However I suspect that the first action was a cease and desist letter as this is the "standard" response.

Most of this work is outsourced to legal firms working on behalf of big companies and the first Specialized would have know was when the article hit the press.

I ride a Specialized bike and love it, but it would be nice if they could make an offer to fix this issue. I suspect that the infringement here is the wheel name, not the Cafe, since they do not hold a trademark for Cafe's  1

I also agree that you should not be able to trademark dictionary words or names of places under any circumstances....Though that would throw a huge spanner in the wrench for almost any company in the World.

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JohnnyO [38 posts] 2 years ago
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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?

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davidtcycle [62 posts] 2 years ago
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As Mayor of Roubaix I think it quite disgusting the way everyone is fighting over our town name.
As for the trademark? at the end of the day the rights belong to us.
You have been warned  21

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CJSTEVENS1955 [86 posts] 2 years ago
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Corporate bullies. Tradmarking the name of a town in a different country...money...bullies...money...bullies!!! Put me off purchasing anymore Sworks products.

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Some Fella [890 posts] 2 years ago
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I am well qualified trademark lawyer and in my legal opinion Specialized are being utter dicksplashes.

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Bez [592 posts] 2 years ago
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caaad10 [184 posts] 2 years ago
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This sort of thing certainly makes me think twice about buying a Specialized branded product - I'm pleased I'm not riding one of their bikes as I would feel seriously embarrassed... this is such bad publicity for the company you have to wonder who on earth decided to take action.

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kitkat [348 posts] 2 years ago
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Ah, for those innocent days when Cannondale stamped the word 'freeride' with their corporate lawyers trademark and got a whipping from the rest of the mountain bike world

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Grizzerly [294 posts] 2 years ago
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The villains of this piece, surely, are the American & Canadian authorities who allowed Specialised to trademark 'Roubaix' in the first place. Would they allow 'Washington D. C.' as a protected trademark?

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watercrook [59 posts] 2 years ago
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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!!

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BertYardbrush [54 posts] 2 years ago
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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.

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Mikeduff [24 posts] 2 years ago
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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.

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Mikeduff [24 posts] 2 years ago
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Sorry - I meant redkiteprayer, not BikeBiz!

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alexholt3 [53 posts] 2 years ago
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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'.

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