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Are a truck tyre company stopping Specialized from launching a new bike? Trademark application refused due to naming similarities

A trademark application from Specialized for a possible new product named 'Aethos' has surfaced amid rumours of a new bike model, with the application currently refused due to "potential confusion" with an existing mark named Athos

As we reported last week, rumours of a new bike from Specialized flew around the internet when Bora-Hansgrohe rider Daniel Oss shared photos of a previously unseen model on social media... and at the same time, it appears the brand are embroiled in a trademark dispute over "the likelihood of confusion with a registered mark", having been refused a trademark registration on 20th August for a product named "Aethos". 

Review: Specialized S-Works Tarmac SL7

Oss' post, shared by Peter Sagan and with words that look they they've come straight from a marketing department, reads like a sneak preview of a new bike, which fired up the rumour mill late last week. Since our original article, the latest UCI list updated on the 21st September now features a product from Specialized named 'Aethos'; confirming that the brand have had a frame or fork with this name approved by the UCI. 

Coincidentally (to our knowledge so far, anyway) the trademark application that Specialized had refused on 20th August was also for a product named Aethos. The latest update on the USPTO report says: "A final Office action refusing registration has been sent (issued) because the applicant neither satisfied nor overcame all requ[ests]". 

A quick Google search reveals that the top-ranking results for Aethos are a consultancy firm, and the name of a high-end amplifier from the British audio equipment manufacturer Rega; but the detailed USPTO report document reveals that the dispute stems from an existing mark named 'Athos'. 

While a web search of that will direct you to a character from The Three Musketeers first and foremost, the report reveals that Athos is also the name of a German company that sell truck tyres

Even though the report says 'Aethos' was applied for under the 'Bicycle frames; Bicycles' class and Athos is registered under 'Rims for vehicle wheels; tyres for vehicle wheels', the trademark examining attorney said there is 'likelihood of confusion' between the two marks for a number of reasons. The first is the similarity in the naming, with the report saying: "As previously discussed, the marks create a substantially similar commercial impression because the applied-for mark, AETHOS, differs from the registered mark, ATHOS, by only one letter. Applicant has merely added the letter “E” after the letter “A” in the term. Thus, the marks are highly similar in terms of appearance."

Specialized dispute this, arguing: "The “AE” combination of letters is uncommon in the English language, therefore the applied-for mark distinctively is dissimilar from the registered mark."

The other issue, according to the trademark examining attorney, is that a number of bike brands also sell tyres, which could lead to confusion. Links to tyres from brands such as State Bicycle Co., Trek, Schwinn and Surly are included as evidence; curiously there is no mention of Specialized, even though the brand themselves also sell tyres. 

The examining attorney summarises: "As previously discussed, applicant’s bicycles and bicycle frames are highly related to registrant’s tyres for vehicles. The previously attached definition from the Merriam Webster Dictionary shows that a “vehicle” is “a means of carrying or transporting something.” Thus, a bicycle is a type of vehicle."

Specialized once again dispute the likelihood of confusion, saying that their goods "are different and are used for different purposes" to those of Athos, who we think are the German truck tyre company. Specialized also argue that their goods travel in different channels, and they are sufficiently "sophisticated" and "expensive" enough for consumers to likely recognise and differentiate the marks. 

Specialized have form on the other side of the fence when it comes to trademark battles, the most notable being a threat of legal action against a Canadian bike shop named Café Roubaix back in 2013. Specialized argued they had trademarked the name 'Roubaix' for the Specialized Roubaix bike model; but after the legal battle hit headlines worldwide and customers threatened a boycott of their products, Specialized' founder Mike Sinyard called Café Roubaix's owner Dan Richter to agree that he could continue to use the name.

When road.cc asked Specialized about this latest dispute, they wouldn't confirm if the trademark application had anything to do with the launch of a new product. When will this saga end? The USPTO say they must receive the applicant's response to their refusal letter within six months, or the 'Aethos' application will be abandoned... so by February 2021 at the latest, it seems! 

Arriving at road.cc in 2017 via 220 Triathlon Magazine, Jack dipped his toe in most jobs on the site and over at eBikeTips before being named the new editor of road.cc in 2020, much to his surprise. His cycling life began during his students days, when he cobbled together a few hundred quid off the back of a hard winter selling hats (long story) and bought his first road bike - a Trek 1.1 that was quickly relegated to winter steed, before it was sadly pinched a few years later. Creatively replacing it with a Trek 1.2, Jack mostly rides this bike around local cycle paths nowadays, but when he wants to get the racer out and be competitive his preferred events are time trials, sportives, triathlons and pogo sticking - the latter being another long story.  

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17 comments

Avatar
fixit | 3 years ago
1 like

"IS a track tyre company" and not "ARE a truck tyre company" ?

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Sriracha replied to fixit | 3 years ago
2 likes
fixit wrote:

"IS a track tyre company" and not "ARE a truck tyre company" ?

Um...
And, in case you are still learning English:
https://learnenglish.britishcouncil.org/english-grammar-reference/group-...

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andystow replied to Sriracha | 3 years ago
2 likes

It's treated as a plural group noun in British English, singular in American English.

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mdavidford replied to andystow | 3 years ago
2 likes

It's not even that simple. There are is no 'correct' usage. It basically comes down to whether the speaker / writer conceives of it / them, in that context, as a single entity or a group of individuals.

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Gkam84 | 3 years ago
0 likes
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slappop | 3 years ago
3 likes

They missed a trick: should have called it the Aeþos. Same pronounciation but definitely no 'likelihood of confusion' and it would certainly get talked about.

(If you're confused, it's the Old English 'thorn' letter which is similar to 'th'.)

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OnTheRopes | 3 years ago
6 likes

Nice to see Specialised getting a bit of their own medicine.

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WDG | 3 years ago
1 like

I believe Specialized have form at things like this.  I seem to remember an interesting story Charlie Kelly I think it was told about them ending up using the Hardpack name for their tyres, which started out as something else...

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wycombewheeler | 3 years ago
2 likes

didn't specialized take action against someone for trademark infringement on the word 'Roubaix' ?  which was quite shocking as it is the name of a town with cycling connections. "I went out to buy a bike, but accidently picked up coffee and a cake, if only I had not been confused by similar trade names" Said no-one ever. 

*edit* oh yes it's in the article.

Perhaps the tyre people are getting in first to prevent specialized taking action against them in future.

reap what you sow

Avatar
brooksby replied to wycombewheeler | 3 years ago
1 like
wycombewheeler wrote:

didn't specialized take action against someone for trademark infringement on the word 'Roubaix' ?  which was quite shocking as it is the name of a town with cycling connections. "I went out to buy a bike, but accidently picked up coffee and a cake, if only I had not been confused by similar trade names" Said no-one ever. 

*edit* oh yes it's in the article.

Perhaps the tyre people are getting in first to prevent specialized taking action against them in future.

reap what you sow

Yup - it is quite funny to see them at the pointy end of a trademark dispute  4

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Jetmans Dad replied to brooksby | 3 years ago
0 likes

It is one of the problems with how trademarks work. Once you have one, you have to be seen to take action to protect it, otherwise you lose it. A lot of the time that protective action makes the company seem like a bit of a d**k. 

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quiff replied to wycombewheeler | 3 years ago
2 likes

Yeah, live by the sword die by the sword. IIRC, after Specialized told the guy to stop using "Roubaix", a bigger fish pointed out that actually they owned the TM, Specialized only use it under licence from them, and Spesh had no right to take infringement action. 

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Simon E replied to quiff | 3 years ago
1 like
quiff wrote:

Yeah, live by the sword die by the sword. IIRC, after Specialized told the guy to stop using "Roubaix", a bigger fish pointed out that actually they owned the TM, Specialized only use it under licence from them, and Spesh had no right to take infringement action. 

It was Fuji. They owned the trademark in America and had licensed it to Specialized for bikes and components. The small Toronto bike shop was named Café Roubaix bicycle studio. Fuji 'pulled rank' and told him he could continue to use it. This was in 2013 (story). After they took so much flak Mike Sinyard visited him personally to make amends as part of a damage limitation exercise. It wasn't the only inappropriate legal action they took.

I still wear the t-shirt I bought to support CR after reading about it on road.cc and the only Spesh products I've bought since that time are a couple of inner tubes and a helmet for one of my kids (since he preferred it).

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zedbedboy replied to wycombewheeler | 3 years ago
0 likes

Yup. Actually this! LMAO!!!!!

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andystow | 3 years ago
6 likes

I know that I, as a consumer, would be very upset if I went to get new tyres for my truck and ended up with four bicycle frames bolted to the hubs. They certainly wouldn't be fit for purpose, so this is clearly the right ruling.

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Awavey | 3 years ago
4 likes

I thought AE was a common English language combination, it maybe Latin originally but it pops up all over
older Norse words and down into Scandinavian & English (anglo saxon) and even a bit of cyrillic,I'd have thought theyd have hit issues all across Europe trying to claim AE was their unique construct. Maybe they could rename the bike Porthos,Aramis or even Dogtanian instead.

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jh2727 replied to Awavey | 3 years ago
0 likes

æthos would be pronounced - ethos.

Ethos and Athos are two complete different words - in English and the original Greek. What next? Are Nike going to sue Specialized for selling bikes?

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