The attorney for a Northern California cycling club that sued a Florida wheel maker and the domestic elite team it sponsored over naming rights told Cyclingnews Wednesday that the club had no intention of harming the company or the team, but rather was trying to protect the rights to a name it has used since the 1990s.
The Alto Velo cycling club of San Jose filed suit against Alto Velo wheel company earlier this year, claiming the company's name infringed on the trademark the club had established after more than two decades of use. The wheel company eventually settled the lawsuit, agreeing to change its name to Alto Cycling, but co-owner Bobby Sweeting said the expense of defending itself against the lawsuit forced the company to scrap the team.
Jeffrey Fillerup, the California cycling club's attorney, told Cyclingnews that the wheel company could have avoided the issue entirely simply by acquiescing to the club's initial requests to honor the usage-based trademark and changing the company's name.
“The wheel company just started to use the Alto Velo name last year,” Fillerup wrote in an email to Cyclingnews. “The wheel company never asked for permission to use the Alto Velo name. They knew about the Alto Velo cycling club before they adopted the Alto Velo name, but they did nothing to obtain permission to use the name.
“When I asked the wheel company to stop using the name last year, they refused,” Fillerup continued. “They told me that they would never change the name. They told me that Alto Velo was their name. Of course, they had no basis for claiming the right to use the Alto Velo name.”
Fuillerup said the club was put in the position of abandoning its Alto Velo trademark and letting the wheel company “steal it,” or taking action to stop the wheel company.
“Alto Velo did not want to abandon the name, so a suit was filed to stop the wheel company from using the name,” Fillerup wrote. “All Alto Velo wanted was for the wheel company to change its name. Even when we told the wheel company that we would need to sue to protect the trademarked name, the wheel company still refused to change its name.”
Sweeting previously told Cyclingnews that he was aware of the Alto Velo club, but he did not believe it would be an issue because he did not believe there was a conflict between his company and the club.
“We obviously went online and Googled it straightaway," Sweeting told Cyclingnews in July. “The club popped up, and we were like, 'Oh, it's a club in Northern California. We're a wheel manufacturer in Florida. No problem.' So we just moved forward.”
Fillerup sent Sweeting a cease-and-desist letter in December of 2014, demanding the company change its name. The issue escalated further when an article on Cyclingnews in January announced that Sweeting's company would take over title sponsorship of Rouleur Sports Group's team, forming the Alto Velo p/b Seasucker squad of US elite criterium champion Daniel Holloway. The club filed the lawsuit three weeks later, Sweeting said.
after this month's settlement required the wheel company to change its name, Sweeting said the new name will be Alto Cycling and the company will operate as Alto. As part of the settlement, Alto Cycling will be allowed to sell its remaining Alto Velo-branded inventory until it is gone or until December 31, 2017, whichever comes first. The company will also be allowed to continue using Alto Velo-branded display materials, manufacturing equipment, tools and vehicles “through the end of their useful life” but not past December 31, 2017.
Sweeting told Cyclingnews on Wednesday that the initial complaint would have required the wheel company to stop using the name immediately, which would have cost more than $100,000 and would have likely led to bankruptcy. The settlement allowing a two-year grace period makes the change manageable financially, he said.
"We didn't refuse to change the name just to be assholes," Sweeting said. "We simply couldn't afford it."
Sweeting also claimed that because of the legal expenses involved in defending itself against the lawsuit, his company can no longer afford to sponsor the domestic elite team, which was forced to disband. But in a phone call with Cyclingnews on Wednesday, Fillerup said the club never had any intention of damaging either the wheel company or the team, rather the club had to act to protect the integrity of the naming rights now and in the future.
“I know Bobby is saying that we caused damage to his business,” Fillerup said. “Well we didn't intend that. We didn't intend to cause that. What we wanted was exactly what we got in the settlement, but we wanted it a year ago. And if we had gotten that then there wouldn't have been any problem.”
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