Specialized and Café Roubaix owner say trademark dispute close to resolution

Dan Richter says "things will be fine" after speaking to Mike Sinyard - but questions remain over Specialized's right to register trademark

by Simon_MacMichael   December 11, 2013  

Cafe Roubaix carbon rim

Specialized and Dan Richter, the owner of the Café Roubaix bike shop in Alberta, Canada that the American bicycle manufacturer accused of infringing its trademark by using the ‘Roubaix’ name, appear to have reached an agreement on the issue – although there remains confusion over whether Specialized had the right to register the trademark in Canada in the first place.

On Tuesday evening, Richter said on the Café Roubaix Facebook page: “I had a great conversation with [Specialized founder and majority shareholder] 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!”

A press statement from Specialized was rather less effusive: “We are working hard with Mr Richter to find a resolution we are both happy with to make this situation right,” it said.

“While we and Mr Richter can’t yet share specifics, we both look forward to sharing an update soon.”

When new broke over the weekend that Specialized had sought to prevent Richter from using ‘Roubaix’ in the name of his shop as well as a range of carbon wheels he sells, the California-based brand came under a huge amount of criticism on social media.

But on Tuesday morning, Advanced Sports International (ASI), owner of the Fuji bikes brand, and which has licensed the ‘Roubaix’ name to Specialized in the United States since 2007, said it believed that Specialized had no right to have registered the ‘Roubaix’ trademark in Canada the same year.

Twitter user @geckobike, who as many others have done has incorporated the trademarked word into his name on the social network – currently, it is Roubaix Stan F – pointed out: “I thought it was beyond the remit of @iamspecialized to broker any deal! And was being handled by ASI.”

But irrespective of any arguments between them, currently it is Specialized that owns the ‘Roubaix’ trademark in Canada, so it's Specialized that will need to permit Richter to use it under a trademark coexistence agreement or similar arrangment.

The issue of whether Specialized actually had the right to register the trademark in Canada in the first place is presumably one that will have to be resolved with ASI, which says that since it was previously selling bikes under that name in the country, it has first-use rights.

4 user comments

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So it took a huge social media storm for Mike Sinyard to do what someone from Specialized's legal department should have done in the first place... pick up the phone and speak to Dan Richter.

Well, that was an expensive lesson in basic PR then.

posted by Grubbythumb [51 posts]
11th December 2013 - 6:56

3 Likes

The word "grudgingly" comes to mind. Bad one for Spez in all aspects - even the "settlement" so far. No more of their products for me...

Advice is a form of nostalgia. Dispensing it is a way of fishing the past from the disposal, wiping it off, painting over the ugly parts and recycling it for more than it's worth.

jmaccelari's picture

posted by jmaccelari [173 posts]
11th December 2013 - 7:31

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My question is; why do either ASI or Specialized feel they have any claim on this name? The historical prestige of the name was not created by either company.

posted by Andrewwd [26 posts]
11th December 2013 - 10:16

3 Likes

I've been lobbying a mate for a few months to consider an Enigma Ti instead of a Spesh Roubaix early next year - this debate has probably helped me.

BTW - the Cafe Roubaix t-shirts look great… everyone should get one… mine's already in the post.

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

posted by Mombee [58 posts]
11th December 2013 - 11:59

2 Likes