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Specialized pressures Canadian bike shop to change name

By:
Cycling News
Published:
December 7, 2013, 22:19,
Updated:
December 7, 2013, 22:17
Edition:
First Edition Cycling News, Sunday, December 8, 2013
Roubaix is a line of bicycle in Specialized's line and the company has recently taken legal action to protect its trademark of the word "Roubaix"

Roubaix is a line of bicycle in Specialized's line and the company has recently taken legal action to protect its trademark of the word "Roubaix"

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US bicycle company pursues trademark violation of "Roubaix"

A small bike shop in Cochrane, Alberta, Canada has recently been threatened with legal action by US bicycle manufacturer Specialized regarding a trademark violation concerning the shop's name. The Calgary Herald reported today that Dan Richter, owner of the Cafe Roubaix Bicycle Studio, received a letter from lawyers representing Specialized demanding he change his business's name because the bicycle company owns the trademark of the word "Roubaix", a model of bicycle in the company's line.

Richter, a military veteran medically released from service in 2012 after developing PTSD during deployment in Kandahar, Afghanistan, opened his shop on March 1, 2013 and asserts the shop's name is an homage to Roubaix, France, the city which hosts the finish of the iconic Paris-Roubaix road race.

"I had assumed I could not register Roubaix as a trademark as it is a geographical location well known in cycling, not to mention the wide-spread use of the term Roubaix throughout the industry," said Richter in a press release. "I thought I could freely use Roubaix. To be informed I cannot use the name is devastating. I invested my life savings, military severance pay, as well as all my Veteran's Affairs award for my illness into Café Roubaix."

Specialized claims this is matter of defending a legally owned trademark. Larry Koury, managing director of Specialized Canada Inc. told the Calgary Herald that, "A simple trademark search would have prevented this. We are required to defend or lose our trademark registration." Koury cited Specialized's registration of the word "Roubaix" in Canada's federal government trademark database.

Richter has sought legal assistance in determining whether Roubaix can be registered in Canada. However, he estimates it will take upwards of $150,000 to contest the case in court, a price which may be prohibitive to the small business owner.

"I’m just at the point were we think this [business] might fly, so this was a huge hit for me personally," said Richter.

Uncle_Tod 11 months ago
Just change the name and have it over with...Him being a military vet you would think he would put more research into stuff... guess not.
nepetalactone 11 months ago
Seriously? His shop is named after the most iconic one day cycling event in the World, not some 'endurance' road bike. In opening his shop, he tried to honor the history of the sport and Specialized is spitting on it.
Slicky 11 months ago
Agreed. This is just plain stupid. How can they be selfish to the point of owning one of the most known names in Cycling. There's even another Roubaix city, in South Dakota!
TShame 11 months ago
I expected that this would be about the word 'specialized' not a city in France. Ridiculous!
maplethedog 11 months ago
Yeah, Whats next for the bullies at Specialized-are they going to sue over the use of the word bike?
Chris Todgers 11 months ago
Maybe someone should inform Specialized that they are no longer permitted to use the word Tarmac in their Speclialized Tarmac range of bikes. Tarmac Group Limited is a 100+ year old British company which was formed well before Specialized's inception in 1974. Not sure why they think they are entitled to use the name.
boombastic 11 months ago
the problem is that this bicycle shop also produce wheel rims under roubaix name. i believe specialized have right to defend its trademark against cafe roubaix wheels producer.
Alan D 11 months ago
The point is that Specialized are bluffing, with a big stick. ANy trademark can be challenged any time if the word is a) in common usage, and b) has historically been applied severally to other products or functions c) is a geographic or historical general description. You can register Roubaix Bicylces, but you won't successfully defend "Roubaix" per se.. The point is that Specialized will have a war-chest of dollars to take this guy on, and they'll win in the court of wallets. If we all sent him $10 , and also a letter to Specialized and every cycling publication, website, blog and shop that we know of describing our disgust at this bullying and that there is not a snowball's chance in hell of us EVER buying Specialized again... they'll see reason. Bikings' about bike rider's , not corporates owned by Hedging FUnds and Banking groups. I hope you're reading this , Mr Specialized... I am NEVER going to even vaguely entertain riding one of your bikes.
Joe Stephanak 11 months ago
Maybe a kick starter campaign to take on Specialized is in order...
boombastic 11 months ago
really? can you create a garment company called nike cloth shop? i don't think so... the problem is that cafe owner produce bike components. if he would stick to run his shop alone plus bikes servicing he could sleep well, but he was greedy/stupid and decided to start producing wheels under roubaix name. huge mistake. i bet he did it deliberately.
GoatHerd 11 months ago
I agree w/ yr points. Madone, Stelvio, Angliru, Roubaix, Paris are all place names, and bike names. I can think of 1/2 a ton of bike products that have been given the Roubaix name BEFORE Specialized named their bike. I bet that the people who could actually make some kind of a claim - maybe the people who run the Paris-Roubaix, consider that these offerings strengthen the profile of their event, and assume a more progressive and civilized attitude.
RoooBay 11 months ago
Good day sir or madam - In a reply to another post, you stated that "he was greedy/stupid and decided to start producing wheels under roubaix name." If one peruses the Cafe Roubaix site, it clearly says, "Dan had been building custom bicycle wheels but wanted to open a store front in which high quality bicycles and parts would be offered in a boutique setting. The name Café Roubaix was chosen in honour of the much beloved monument of professional bicycle racing - Paris-Roubaix." So, it wasn't as if the owner of Cafe Roubaix had a traditional brick-and-mortar bike shop and then decided (out of greed or stupidity or otherwise) to sell wheels. I realize that what I am saying doesn't change anything vis-a-vis the validity of Specialized's claim of trademark infringement, but I felt that clarity was needed over the order in which things occurred. He was already making and selling wheels. On a personal note, I would add that, after 32 years of working on and around bikes in many capacities and in several countries, I have never encountered a small shop owner who was motivated by greed. I have met some with less than stellar business plans, but I digress. The joke is that if you want to end up with a million dollars in the bike industry, start with 2 million. The point is this - nobody opens a bike shop to get rich, they do it out of passion. I shan't try further to beseech you to show compassion. Besides, your role of devil's advocate just further strengthens the resolve of those who do have compassion for Dan's plight. For what it's worth, I see some of your point. Specialized should have the right to defend their trademark. None of us would ever want our own intellectual property stolen, tarnished or diminished. The problem, as I see it, is that Specialized has chosen to trademark (and, admittedly, has been granted trademark status to) such names as Roubaix, Tarmac, Ruby, Allez, Secteur, Epic and more... Surely you can see that these names all have fairly common usage. So, from my perspective, Specialized has gone too far. Such be the nature of slopes...they be slippery. But until these matters are resolved, let us not assume that Mr. Richter of Cafe Roubaix is either greedy or stupid. To me, it sounds like he is an ardent supporter of the lifestyle we all love and he dares to do what few bike shop owners are doing anymore... offering us a selection of cycling goodness that extends beyond the standard fare dictated by Trek or Specialized. 'Tis passion that drives that, not greed.
RoooBay 11 months ago
Above reply should have been directed to "Boombastic". My apologies for any confusion.
cmcmc72 11 months ago
Nice post. For whatever is legally right or not, this leaves a bad taste in the mouth. Maybe I'm being manipulated by the media looking to beat up on the evil faceless corporate over the small guy, but it won't be the first or only time. Regardless, that bad taste means when I go into my LBS next, it is most likely I will steer away from Specialized gear. I think Specialized need to find a way out of this corner they have painted themselves into - instanter.
boombastic 11 months ago
direction is clear :) i admit i wrote about his greed/stupidity too harsh. Actually my point is: if he likes to build wheels why not change the name for these wheel sets? it costs him nothing. i doubt that specialized have an issue with name of the cafe.
rastymick 11 months ago
From what I know, geographic names are not subject to trademark protection. And there are dozens of little companies out there that use the name Roubaix for clothes, tools, souvenirs... I don't really see how specialized can get through with this.
ernesto. 11 months ago
I hope you're right! :)
leftbehind 11 months ago
Unfortunately, ernesto, he's not right. It is very permissible to trademark geographic names. However, they have the name trademarked only for Bicycling, not for clothing, not for tools, not for food or anything else. It is very questionable whether the shop name "Cafe Roubaix Bicycle Studio" violates their trademark. If the company were named "Roubaix Bicycles", it would be much more likely to be a violation, but still not a certainty. Still, the use of the word Roubaix next to the word Bicycle is enough to raise the issue of trademark violation.
LemonFriend 11 months ago
It isn't just the shop name. The article fails to mention that this company is producing wheel sets using the Roubaix name branded on the side. It appears to be a very clear violation of trademark law. It would be the same if some small shoemaker decided to call their brand of shoes "Nike". It doesn't matter that Roubaix is a geographic name, What matters is that Specialized already sells bicycle gear under the Roubaix brand and have trademarked the name for that purpose.
Christopher Shelley 11 months ago
Lemon you argument is completely wrong and you know it. They are not called cafe specialized wheels. Your comparison to NIKE would be direct comparison to Specialized , not Roubaix. FAIL!
boombastic 11 months ago
Christopher Shelley: what about nike shore company based in mangolia which would produce "con air jordan" shoes?
LemonFriend 11 months ago
@Christopher, you are right. My comparison was not apples to apples. A more appropriate comparison would be, as bombastic says, a small shoe company (who cares about the name really) who produces shoes with the "Air Jordan" or other recognized brand. Still, you can imagine the confusion that would arise if companies were not allowed to have exclusive trademarks rights within particular geographic regions, for particular types of products. You'd never know if you were buying the product you really wanted or buying a knockoff that someone else was legally selling.
Orvieto 11 months ago
LemonFriend, a more apt analogy would be if the bike store shared a name with a Nike shoe, for example Nike has a running shoe called the Pegasus. If I opened a running store/cafe called Cafe Pegasus and produced custom orthopedic soles with my store name on them, you'd have a similar trademark case, similarly flmsy and trivial.
LemonFriend 11 months ago
@Orvieto, that would be the case if the only issue was the store's name (as incorrectly reported in this article). The store's name is not the infringement that Specialized is concerned about. The store has wheelsets that they make (or have made for them) with the Roubaix brand on them.
leftbehind 11 months ago
I think you completely missed what Orvieto just said, LemonFriend. On the flip side, a trademark violation is a trademark violation. Whether it's attached to a "feel-good story" or not is irrelevant.
Lightening Toke 11 months ago
Specialized can get through with this because he doesn't have the money to defend himself in court. This sort of legal bullying goes on everywhere in the US. What catches me out is that the law, somewhere or another, allows Specialized to trademark the name of French city and/or a race they have nothing to do with. It's astonishing, ugly corporate arrogance. I will never buy anything from Specialized.
ernesto. 11 months ago
I wonder what happens if he just ignores the letter? He gets sued and then what? He spends his money in lawyer fees defending himself? Well, if this is just bullying, couldn't he get lawyer that would work for him on a contingency level? Meaning he only has to pay the lawyer if he gets a settlement? My dad has worked as a lawyer for some of his clients with this kind of an arrangement, just not in trademark law cases... I wish somebody could enlighten use about the trademark laws in Canada to see if this is a 'fair use' case or not...
DavidConnell 11 months ago
Lawsuits in Canada are a bit different than in the US, which usually helps discourage legal bullying. IIRC, I believe that if this guy fought it and won, Specialized could be liable for his legal fees, but if he loses his bill could include Specialized's costs. Anyway, there are still considerable time and up-front costs involved to get through it.
Anonymous 11 months ago
Hope you know you are a T O T A L A S S H O L E
TheHouseOfH 11 months ago
Yup.
Bruce Davey 11 months ago
Uncle_Tod how naive......Its named after a town, are you going to close all bakeries that reference Paris, or $WD that bear the nam Dakar....or etc etc. Don't be a fool Tod.
DavidConnell 11 months ago
As the defendant points out, "Roubaix" is a generic term in the cycling industry, typically applied to products for use in cold and wet conditions (Try googling "roubaix tights"). Specialized either needs to up the ante and sue thousands of companies or back off this one.
jack48 11 months ago
well, that's put a stop to me ever buying any "specialised" stuff hasn't someone sued them for pinching a word which has other meanings as their company name another case of big company = corporate greed
redrover 11 months ago
Specialized: your actions are just plain sad:
wrinklyvet 11 months ago
Specialized is misguided. Everyone else is right and there is a world-wide social media storm over this. I think The name Roubaix in relation to Specialized products is now permanently associated with bullying by the company. Best wishes from England to Dan Richter and good luck to him!
Alan D 11 months ago
"Sad" is far too light a word. Disgraceful. Immoral, and Shameful is more descriptive. This whole issue illustrates the complete spineless immorality of the US civil law system.
clashb02 11 months ago
except this is happening in Canada
Alan D 11 months ago
You see, immorality IS contagious ! LOL... good point. :-)
David LaPorte 11 months ago
If Specialized really feels that this is a threat to their trademark rights, they could license the shop to use the name for $1. The shop owner shouldn't have to pay even $1, but that's a lot cheaper than fighting it in court. And Specialized would have protected their dubious trademark rights while looking a lot less bullies.
MavicMoto 11 months ago
That is genius! Excellent way out for Specialized's over-reaching. They save face and our Canadian vet carries on. While protecting a trademark might be prudent, this was a stupid battle from the P-R perspective, (public relations not Paris Roubaix) ! If I twittered, I would introduce the #onedollarlicense hash tag.
GrilledFish 11 months ago
Are they going after the French race promoters too? Might be a sign they need to make money with lawsuits rather than cycling hardware.
Sam Evans 11 months ago
Uncle_Tod if I ever see you on the street I am going to grit my teeth and keep walking whilst I privately fantasise that I just clocked you one in the nose.
wrinklyvet 11 months ago
The whole point is that you would not recognise him. It's easy to be flippant, unthinking (or worse) here. Not so easy in the real word. So he's safe from all that gritting but not very popular for his opinion here! I do hope that in the near future Specialized finds a civilised way out of the public relations nightmare they have created for themselves, but only for the sake of Dan Richter and proportionality.
Jeff Kehler 11 months ago
I ride a Fuji Roubaix RC. Specialized is not the only bike company to name a model Roubaix. It's not like he named the shop "Specialized cycles" or something.
timcupery 11 months ago
for the record, Specialized does not own the trademark to "Roubaix" in the U.S. The owner of Fuji does, and Specialized paid them in order to legally call their bike the Roubaix.
DirtyWorks 11 months ago
Typical Sinyard move. It's why the bosses at Merida like him so much. The right thing to do is have the Roubaix trademark voided on the grounds it is not unique. Because it's not unique. If this isn't the perfect example of how broken intellectual property law is, then I don't know what is. Thanks WIPO!
Anonymous 11 months ago
What about the Fuji Roubaix? How did Fuji get away with that?
ernesto. 11 months ago
Wow. I wish we had an intellectual property lawyer on board to answer that one! :)
David King 11 months ago
Fuji was using the Roubaix name first and has copyrights to it. When Specialized started using it, Fuji asked Specialized to either stop using it or they could share if it Specialized allowed Fuji to use a rear-shock design. At least that's how I remember the article I read a few years ago.
ernesto. 11 months ago
Well, if you're right, then maybe this guy should offer to put up Specialized posters and flyers in his cafe...
FreeCafeRoubaix 11 months ago
Will never consider purchasing Specialized again.
sleepwell 11 months ago
This is at the top of a long list of reasons not to buy a Specialized.
Bike Lover At 62 11 months ago
Agreed. Done with Specialized; I hate corporate bullies. There are plenty of equal or superior alternatives to their stuff.
tunguska75 11 months ago
Everyone should not buy any of their bikes till they drop the legal action. What next sue a little town in northern France
ridein 11 months ago
Specialized just bought some good publicity for the new shop, bad publicity for themselves.
Willy_Voet 11 months ago
Everyone who has a Facebook account needs to get on over to Specialized's page and comment or 'like' negative comments.
socalvelo 11 months ago
Specialized b.s. Why should a small biz owner incur additional expenses in legal fees and signage and advertising? Roubaix it trademarked?? That is utter hogwash. Let me guess: Dan Richter is not a Specialized dealer. Bully tactics from a bully. I have my fill of reading about bullies with Armstrong's press parade. Just like LA, I choose to ignore and vote with my dollars by going elsewhere. btw, good point about FUJI ROUBAIX. What about VELOFLEX ROUBAIX, GIORDANA ROUBAIX, TIFOSI ROUBAIX, CAPO ROUBAIX, ENDURA ROUBAIX, LOUIS GARNEAU ROUBAIX There are a lot of fundraiser, non-profits and sportif events using the name ROUBAIX, selling shirts and gear. Sue them too? Specialized can go pound sand.
carbonfodder 11 months ago
I live 35km from the shop in question and NO, it is not a Specialized dealer. It is a boutique shop, focusing on custom-builds for those who want to make a choice in what they ride. It really is sad that this shop is being hounded by the machine also known as Meridia North America. Thankfully I have none of their stuff in my stable. And now, I never will. Mr. Sinyard, et. al, if you read this, be aware that the publicity cost you the sale of 2 FatBoy fatbikes today. The Borealis's I ended up with look like they are going to be more fun anyway (and my wife didn't freak out at the price after reading the article!). I got a silver lining, hopefully the Café Roubaix owner gets one too.
sharper 11 months ago
I'm way off in Montreal, but the first thing I did was look up the shop's site to confirm that he's not selling anything Specialized. This will cost Specialized a bike sale at my end as well. Heck, I've had my eye on TWO different Specialized bikes in the last year or so... but there are other options out there and I'll investigate those instead.
Éric Zion 11 months ago
Might be Trademarked in Canada and not everywhere else. Which would explain why they're taking action in Alberta and not against every other named mentionned
Bike Lover At 62 11 months ago
Specialized, the Monsanto of the cycling world.
Arkansawyer 11 months ago
Is there a hotline I can use to alert Specialized when folks are violating their copyrights? I heard a guy shout "Allez!" at a race once. Clearly an infringement. And don't get me started on all the red and black bikes I see around town.
Christopher Shelley 11 months ago
Don't laugh, the big S one time time tried to copyright any bike painted in the red color.
sbuschlen 11 months ago
Wow, talk about petty, a common cycling use name. I hope they don`t issue a threat to the city in France, or a race that takes place every spring finishing in that same city, I wonder if they know its there...guess the issuing trademark people never did any kind of search to see if the entire bike industry had not been using this name for the last 100 years! Watch out Flanders.
Jancouver 11 months ago
This only confirms that it was a correct decision I have made several years back that I will never buy or even walk in to any store selling Specialized bikes. This firm is a cancer of bike industry.
ianfra 11 months ago
I agree. I will never purchase a Specialized item again. End of story. This is taking trademark protection too far. I urge everyone to email Specialized about this gross piece of malpractice.