Specialized forces owner to change bike shop’s name

[zero]

SPECIALIZED CAVED IN! GO DAN YOU BIG RED FIRE ENGINE!!!
http://bicycleretailer.com/north-americ ... qasR3M_7qC" onclick="window.open(this.href);return false;

Specialized as I read it hasn't caved in, but that ASI which owns the worldwide rights are suggesting Specialized did not have the authority via the terms of their licence agreement to stop Dan using the name Roubaix.

They almost certainly do have the rights to enforce the Canadian mark, but it appears that depending on the drafting of the agreement with ASI they may simultaneously breach a US contract between US entities doing so (which may be meaningless in Canada), and it would appear given spec only holds Roubaix marks in 2 countries of little importance, they'll lose the rights to the mark that matters if ASI decides to get particularly stroppy about the registrations. There may also be considerable argy bargy between them yet, as one imagines the contract in the US probably requires specialized to take all steps to protect the mark too

Unfortunately its a lawyers mess, which results in lawyers getting paid to clean it up.

[The 2nd Womble]

Ah...

[The 2nd Womble]

Yup, got the ASI thing now. I posted it before reading while at work. A win is a win. Specialized not having backed down makes it worse for them as well

[coffeeandwine]

Yup, got the ASI thing now. I posted it before reading while at work. A win is a win. Specialized not having backed down makes it worse for them as well

Agreed, they haven't changed their attitude one bit.

I was just about to post (before I read above comments) that it has been 24 hours and I haven't even had a reply acknowledging my email from the Aus distributor. Perhaps their email is in melt down as well as the FB page, Spec were getting an absolute hammering!

[The 2nd Womble]

"@SafeCyclingOz: @FujiBikes so when are you suing the arse off @iamspecialized? No seriously, when? #onelessspecialized thankyou #ASI"

[NhiTrac]

Makes me angry that I have Specialized shoes, helmet, gloves and drink bottles!

Would be great to see their response to ASI's statement.

[find_bruce]

Unfortunately its a lawyers mess, which results in lawyers getting paid to clean it up.

To which there are probably lawyers going "what do you mean unfortunately ?"

[DavidS]

I just don't understand how a company can trademark the name of a town they have absolutely nothing to do with. No-one should be able to trade mark the name of a town, ludicrous.

DS

[cobba]

I just don't understand how a company can trademark the name of a town they have absolutely nothing to do with. No-one should be able to trade mark the name of a town, ludicrous.

DS

The Roubaix name was originally trademarked in 1992 by Toshoku America Inc, then connected with Fuji bicycles. Fuji still markets Roubaix-branded bicycles.

A trademark attorney wrote at the time: "It is unlikely that a significant number of the American population would know that Roubaix, France is the location of a well-known annual bicycle race."

That was from: http://www.bikebiz.com/news/read/specia ... uit-threat

[GeoffInBrisbane]

I just don't understand how a company can trademark the name of a town they have absolutely nothing to do with. No-one should be able to trade mark the name of a town, ludicrous.

DS

The Roubaix name was originally trademarked in 1992 by Toshoku America Inc, then connected with Fuji bicycles. Fuji still markets Roubaix-branded bicycles.

A trademark attorney wrote at the time: "It is unlikely that a significant number of the American population would know that Roubaix, France is the location of a well-known annual bicycle race."

That was from: http://www.bikebiz.com/news/read/specia ... uit-threat

I love the logic in that. If your potential customers don't know the significance of Roubaix, then what would be the point in using that name in the first place?

[Clydesdale Scot]

from LFGSS thread

In fact, the Canadan IP office says:
The kinds of marks that you may not register include the following:...words that denote a geographical location commonly known to be the place of origin of such goods or services
And then expands that with:
You may not register a word that uses a geographical location commonly known to be the place of origin of the goods or services.
In addition, you may not register a word that misleads the public into thinking that the goods or services come from a certain place when they do not.
So either Specialized don't have a valid trademark on Roubaix because it is too generically connected with cycling goods and services, or they don't have a valid trademark because it falsely claims origin in Roubaix for goods made in China.

Also, ASO might want to have a word with Specialized about passing off, since any use of Roubaix in cycling probably infringes ASO's IP in the name Paris-Roubaix

and

US law is essentially the same:
Under U.S. trademark law, geographic terms or signs are not registrable as trademarks if they are geographically descriptive or geographically misdescriptive of where the goods/services originate

and Dan from CafeRoubaix
writes on his Facebook page CafeRoubaix

I had a great conversation with 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!
Thank you,
Dan

[Ross]

I just don't understand how a company can trademark the name of a town they have absolutely nothing to do with. No-one should be able to trade mark the name of a town, ludicrous.

DS

I'm sure there are lots of products on the market that happen to share the name of a town or city (or state).
There are Colarado shoes, there is a Colarado ute made by Holden and Colarado is a state in America.
Pinarello make a bike called a Paris, the capital of France is Paris.
I'm sure these manufacturers have the names trademarked.

[zero]

from LFGSS thread

In fact, the Canadan IP office says:
The kinds of marks that you may not register include the following:...words that denote a geographical location commonly known to be the place of origin of such goods or services

Roubaix doesn't make bicycles. If there was a bicycle style originally made in Roubaix, known as a Roubaix bicycle, then it would be impossible to trademark the name.

and Dan from CafeRoubaix
writes on his Facebook page CafeRoubaix

I had a great conversation with 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!
Thank you,
Dan

Yes one imagines he's going to be adding a line of fuji bicycles at some point.

[Wakatuki]

I just don't understand how a company can trademark the name of a town they have absolutely nothing to do with. No-one should be able to trade mark the name of a town, ludicrous.

DS

I'm sure there are lots of products on the market that happen to share the name of a town or city (or state).
There are Colarado shoes, there is a Colarado ute made by Holden and Colarado is a state in America.
Pinarello make a bike called a Paris, the capital of France is Paris.
I'm sure these manufacturers have the names trademarked.

I ride a Scott Foil, I won't be wrapping the turkey in it!

[jasonc]

I ride a Scott Foil, I won't be wrapping the turkey in it!

I thought the turkey was the one riding it

[Wakatuki]

I ride a Scott Foil, I won't be wrapping the turkey in it!

I thought the turkey was the one riding it

Nice

[burger]

I'm sure there are lots of products on the market that happen to share the name of a town or city (or state).
There are Colarado shoes, there is a Colarado ute made by Holden and Colarado is a state in America.
Pinarello make a bike called a Paris, the capital of France is Paris.
I'm sure these manufacturers have the names trademarked.

Maybe that Pinarello is named after a Hilton . . .
*sorry*

[outnabike]

Can they sue "Specialised Forces" for using their name, this will bring the CIA into it...

[Baalzamon]

http://road.cc/content/news/100528-spec ... resolution

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.

So looks like something has been nutted out. Still not going to buy specialized bikes however

[Wakatuki]

In the words of Neil Young

Ooh, ooh, the damage done

[Baldy]

I'm waiting for the howling protests about ASI/Fuji owning the patent to the name of a place in France.

Oh that's right Fuji are not the cool kid and there is no point bashing them.

Yes I have a Specialized bike, I won it in a raffle. It's a nice bike. They make nice shoes and helmets too.

I also own 3 Trek's starting with a 08' MTB and watched my first tour in 2009.

Its nice to be popular

[skull]

Not sure if fuji are busy trying to sue people

Sent from my GT-I9505 using Tapatalk

[Xplora]

Yep, skull +1. People don't mind copyright holders existing. They mind draconian thuggery when there is no interest in dialogue when there is potential conflict.

[bychosis]

Yep, skull +1. People don't mind copyright holders existing. They mind draconian thuggery when there is no interest in dialogue when there is potential conflict.

Yeah, I don't mind if someone wants to protect their product/business by stopping others from using their intellectual property, but when itis misused and the lawyers from big business get involved in hurting the little guy it's time to go all australian on them. Stick up for the little guy, tell those lawyers to go and ....

Anyone remember the US company trying to hold the trademark for ugg boots?

[trailgumby]

Some quite funny mash-ups here:

http://suckitsinyard.tumblr.com/" onclick="window.open(this.href);return false;

My favourite: