Specialized drops new trademark case against clothing firm Epix Gear

Specialized founder Mike Sinyard has moved quickly to stop a threatened legal action against North Carolina cycling and triathlon clothing brand Epix Gear for trademark infringement, and says the company is reviewing how it deals with such cases in future. Epix had appealed to social media users for support after receiving a letter from lawyers acting for Specialized – which earlier this week dropped claims of trademark infringement against Alberta, Canada-based bike shop, Café Roubaix.

In a post on Specialized’s Facebook page, Sinyard outlined why the company sought to protect its trademarks, including protecting bothe itself and the public against counterfeiters, but acknowledged that it had at times been too aggressive in doing so.

He said: “We’re going to take a much closer look at all pending and future intellectual property and trademark issues, making sure to only pursue those that present a clear and obvious danger.”

Referring to the Café Roubaix episode, a post on Epix Gear’s Facebook page yesterday said:

Sadly, Specialized is doing the same to Epix now. I received a letter today from their lawyers - Our logo is in their eyes too similar to their "Epic" MTB frames logo. The text is DIFFERENT. The logo stylization is DIFFERENT. We are not competing for the same clients (apparel vs frames). They are over-reaching, as they did with the Roubaix bike shop. They withdrew that case thanks to social media pressure, and we would be very grateful if everyone could support us in our efforts to fight this!

It should be pointed out that the letter Epix Gear received from Specialized’s law firm, Michael Best & Friedrich LLP, is dated 4 December 2013, several days before news about its dispute with Café Roubaix became public.

The letter, which states it was sent by mail and email and is addressed to a California-based patent attorney, Raj Abhjanker, who acts for the trading company behind Epix Gear, JC (Asia) Limited.

Epix Gear posted a copy of the letter to its Facebook page. It is signed by Lori S Meddings, an intellectual property partner at Michael Best & Friedrich, and points out that “Specialized has used the trademark EPIC since at least as early as 1987 in connection with bicycles and owns registrations throughout the world for its mark.”

It goes on to say that the firm has become aware of two trademark applications “for EPIX and the EPIX logo… for sports apparel, namely, ‘shirts, jerseys, singlets, arm warmers, leg warmers, jackets, vests, pants, shorts, hats, gloves, bodysuits’ that were filed by your client, JC (Asia).”

The letter demands that JC (Asia) “cease all use of EPIX and any other colorable imitation of Specialized’s EPIC trademark in connection with cycling and triathlon products,” and sets a date of 10 December 2013 (ie, last Tuesday) for compliance.

The date stipulated passed without Epix Gear meeting the law firm’s demands.

On its Facebook page, in response to messages of support, Epix Gear says: “Thanks everyone for your support and honestly I feel uncomfortable taking this public, but I strongly feel that Specialized is being unreasonable. I don't want to drag them through the mud, but we are a small company - we simply cannot fight this alone. And the Roubaix case makes it look like a pattern with them.”

But in that subsequent message posted by Specialized, Sinyard said: “The letter on Epix Gear was issued before the Café Roubaix story broke and has since been pulled.”

Sinyard's full post published on Specialized's Facebook page is as follows:

I Screwed up, and I own it

I would like to apologize and let everyone know I realize I handled this situation wrong from the start and I’m very sorry for that. As many of you have probably already seen by now, I went up to Café Roubaix to meet with Dan in person to apologize and make good with him. Café Roubaix will continue on with its name. The video is up on Café Roubaix's Facebook page. Dan is the real deal, after meeting him I realize this and am embarrassed by how ridiculous this is. What happened was wrong. There are no excuses but I do feel like I owe it to you all to explain how we found ourselves in this situation, the lessons we've learned from it and, most importantly, how it will change the way we do things moving forward.

Over the past few years we’ve seen a massive spike in counterfeit products, and most of the riders have no idea these products are fake, which is extremely dangerous because the risk of failure on these untested products is extremely high. In one instance, the entire head tube and fork sheared off a counterfeit Tarmac, causing the rider who had no idea he was not on a genuine Specialized product to faceplant and destroy his shoulder. To give you an idea of how much this issue has blown up, 10 Specialized employees hunt fake products across 30 major ecommerce platforms, we've identified over 5,000 listings, worth $11,000,000 USD in counterfeit goods since January 1st of this year alone. This is about double what it was last year. Due to this we have recently gone after IP and trademark issues more aggressively in the interest of protecting the safety of riders and the livelihood of our dealers and their hard-working employees. See the attached picture to understand how dangerous fake goods are.

In the deal with Café Roubaix, the wheels were the red flag that got the attention of our outside attorney’s who were already sort of on red alert for anything that pops up, although Café Roubaix wasn’t in the same camp as the counterfeiters, they still got caught in the crossfire. There is so much activity with infringers that it’s overwhelming and I don’t see them all. The first I heard of it was Saturday morning and by Monday the thing went huge. But still, that was my fault, which is why I’m so embarrassed. I should have called Dan immediately.

I heard you and you can rest assured I took it to heart. I realize now that we went too far with this aggressive approach and as a result and in some cases we hurt the local bikes shops and small businesses we wanted to protect. As a result we’re going to take a much closer look at all pending and future intellectual property and trademark issues, making sure to only pursue those that present a clear and obvious danger. The letter on Epix Gear was issued before the Café Roubaix story broke and has since been pulled.

I handled this very poorly and I own full responsibility. Dan at Café Roubaix and I have become friends and he’s happy with the solution. I hope you too accept my sincere apology. Like you all, I’m passionate about cycling and want to do everything possible to grow the activity we all love.

Sincerely,

-Mike Sinyard
Founder