Specialized forces owner to change bike shop’s name

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Re: Specialized forces owner to change bike shop’s name

Postby The 2nd Womble » Sun Dec 08, 2013 5:53 pm

Dan Richter and the lawyer offering to represent him have been informed of this. Expecting it to kick on when the other side of the world wakes up in a few hours time.
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by BNA » Sun Dec 08, 2013 6:15 pm

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Re: Specialized forces owner to change bike shop’s name

Postby thecaptn » Sun Dec 08, 2013 6:15 pm

We're glad to have the opertunity to chip in, thanks.
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Re: Specialized forces owner to change bike shop’s name

Postby Baldy » Sun Dec 08, 2013 7:00 pm

I like Specialized products. Can't say the same thing for their lawyers and bean counters.

I also know absolutely nothing about Canadian copyright law. Or any copyright law.

I think Specialized should crush this guy for having an overtly hipster shop name. It's offensive to Bogans and therefore Tasmanians.
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Re: Specialized forces owner to change bike shop’s name

Postby zero » Sun Dec 08, 2013 7:45 pm

thecaptn wrote:Just because something is legal doesn't automaticaly mean that it's ethical. You'd need to be ethical to understand that though.


Passing off laws exist for a reason. If it was a riders club or something else that was cycling related, but not inherently involved in the selling of bicycles, then I would view it differently.

If I was to think of "unethical", with regards to trademarks it would be apple suing the macpro company in Australia ( a company that had existed before the macintosh was even named).
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Re: Specialized forces owner to change bike shop’s name

Postby warthog1 » Sun Dec 08, 2013 8:08 pm

Specialized sux
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Re: Specialized forces owner to change bike shop’s name

Postby find_bruce » Sun Dec 08, 2013 8:27 pm

warthog1 wrote:Specialized sux

Is that the new name of the shop? Cool :)
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Re: Specialized forces owner to change bike shop’s name

Postby macca33 » Sun Dec 08, 2013 8:31 pm

thecaptn wrote:Yeah the shop logo shirt looks pretty cool. If you get onto them can I grab one too please macca?
Pete
*Edit* Make that two, my Mrs wants one aswell.



I'm awaiting a reply and will get back to you.

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Re: Specialized forces owner to change bike shop’s name

Postby The 2nd Womble » Sun Dec 08, 2013 10:24 pm

"Cyclists arond the world are aiming to pressure Specialized into backing down by changing their twitter names in an 'I am Spartucus' attempt to protect Café Roubaix. There is also a crowd-funding campaign to raise $150,000 to help Café Roubaix defend use of its name."
http://www.bikebiz.com/news/read/specia ... eat/015773
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Re: Specialized forces owner to change bike shop’s name

Postby thecaptn » Mon Dec 09, 2013 7:00 am

zero wrote:
thecaptn wrote:Just because something is legal doesn't automaticaly mean that it's ethical. You'd need to be ethical to understand that though.


Passing off laws exist for a reason. If it was a riders club or something else that was cycling related, but not inherently involved in the selling of bicycles, then I would view it differently.

If I was to think of "unethical", with regards to trademarks it would be apple suing the macpro company in Australia ( a company that had existed before the macintosh was even named).

Roubaix is a place which existed before Specialized or Canada or the US or The Americas.....but what's unethical is a huge Corporation which selects a victim for persecution not for the damage being done to their brand, the obvious theft of intelectual property or even the unique nature of the incidence but simply due to the victims inability to defend themselves. This is why the litigation is unethical and why ethical people are outraged.
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Re: Specialized forces owner to change bike shop’s name

Postby zero » Mon Dec 09, 2013 8:26 am

He is going to lose, its a straight up bad deal to encourage him and feed his lawyer IMO. Trademark law exists for exactly this reason and prohibits exactly this thing.

If we pitched in and got the guy a marketing campaign to raise awareness of his new name, he'd be completely clear of spec and unharmed.
http://www.cipo.ic.gc.ca/app/opic-cipo/ ... exOnPage=1

There isn't a lot of excuse for not checking the Roubaix mark, searching for it is online and free, and spec's mark comes up first.
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Re: Specialized forces owner to change bike shop’s name

Postby barefoot » Mon Dec 09, 2013 8:34 am

thecaptn wrote:
macca33 wrote:I've been in contact with the Cafe Roubaix Bicycle Studio owners and am hoping to purchase a couple of t-shirts as a token of support.

Yeah the shop logo shirt looks pretty cool.


Same.

I emailed asking if they could open up shipping to Aus, as it was locked out in their e-shop software.

I tried again this morning and the order went through.

Nice design, a cool back-story, and a token offering of support for the little guy who is being shafted. I like.

Specialized's Facebook page is taking a battering. I like.

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Re: Specialized forces owner to change bike shop’s name

Postby barefoot » Mon Dec 09, 2013 8:46 am

zero wrote:
thecaptn wrote:Just because something is legal doesn't automaticaly mean that it's ethical. You'd need to be ethical to understand that though.


Passing off laws exist for a reason. If it was a riders club or something else that was cycling related, but not inherently involved in the selling of bicycles, then I would view it differently.


Both Specialized and Cafe Roubaix (and Fuji, and Fyxomatosis, and many others) are cashing in on the name and reputation of Roubaix, France.

When I hear "Roubaix", I don't think of Specialized bikes. I think of the race. The fact that Specialized named a bike after the race named after the town is quite tangential.

Specialized can't claim any ownership of the name, other than the fact that their IP-troll lawyers made a spurious copyright registration over it.

IANAL, but I can't imagine any court upholding Specialized's claim... if anybody were to challenge it. But to challenge it requires money. And Specialized knows it. And that's where the whole thing turns to nasty bullying tactics. They "own" the name of a town in France because they're bigger and have more money than anybody who would dare to dispute it.
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Re: Specialized forces owner to change bike shop’s name

Postby familyguy » Mon Dec 09, 2013 8:51 am

zero wrote:He is going to lose, its a straight up bad deal to encourage him and feed his lawyer IMO. Trademark law exists for exactly this reason and prohibits exactly this thing.

If we pitched in and got the guy a marketing campaign to raise awareness of his new name, he'd be completely clear of spec and unharmed.
http://www.cipo.ic.gc.ca/app/opic-cipo/ ... exOnPage=1

There isn't a lot of excuse for not checking the Roubaix mark, searching for it is online and free, and spec's mark comes up first.


I don't have a problem with that approach if you were selling a bicycle with the name Roubaix. But what would Spec do if the Roubaix Tourism Office advertised in Canada? Just out of curiosity, what do Spec call the Roubaix in the US, where Fuji 'owns' the name?

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Re: Specialized forces owner to change bike shop’s name

Postby Xplora » Mon Dec 09, 2013 9:26 am

barefoot wrote:Both Specialized and Cafe Roubaix (and Fuji, and Fyxomatosis, and many others) are cashing in on the name and reputation of Roubaix, France.

This.

In fairness, Spec MUST launch action against him to protect their trademark. IP laws require the owner to do something about it. They've said straight out "we must do this to protect the IP", I'm not sure they are happy about it, and I'm sure their CEO's forehead is getting really sore with all the negative press attention.

If they were smart, they would have done some lameduck "settlement" for a dollar and sealed it up with an NDA, to ensure they have fulfilled their legal obligations. This is causing big collateral damage, just like Trek suffered with the Lance Armstrong saga.

If I was Fuji I'd be SO annoyed about this... they are getting a lot of beady eyes onto their trademarking in another country, because of the poor legal skills of another company. "I woke up and suddenly people were questioning my business' integrity because of something that had nothing to do with me" :shock:
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Re: Specialized forces owner to change bike shop’s name

Postby blkmcs » Mon Dec 09, 2013 9:41 am

familyguy wrote:
zero wrote:He is going to lose, its a straight up bad deal to encourage him and feed his lawyer IMO. Trademark law exists for exactly this reason and prohibits exactly this thing.

If we pitched in and got the guy a marketing campaign to raise awareness of his new name, he'd be completely clear of spec and unharmed.
http://www.cipo.ic.gc.ca/app/opic-cipo/ ... exOnPage=1

There isn't a lot of excuse for not checking the Roubaix mark, searching for it is online and free, and spec's mark comes up first.


I don't have a problem with that approach if you were selling a bicycle with the name Roubaix. But what would Spec do if the Roubaix Tourism Office advertised in Canada? Just out of curiosity, what do Spec call the Roubaix in the US, where Fuji 'owns' the name?

Jim

I don't know about the Canadian trademark but in Australia Specialized's Roubaix trademark covers more than just complete bikes :
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Re: Specialized forces owner to change bike shop’s name

Postby RonK » Mon Dec 09, 2013 9:47 am

Xplora wrote:In fairness, Spec MUST launch action against him to protect their trademark. IP laws require the owner to do something about it. They've said straight out "we must do this to protect the IP", I'm not sure they are happy about it, and I'm sure their CEO's forehead is getting really sore with all the negative press attention.

This is smoke, the US Patents and Trademarks Office have specifically warned against this type of bullying behaviour, as reported in the Bikebiz article.

Attorney Charles Pelkey said: "The US Patent and Trademark Office appears to be annoyed at [bullying] behaviour. In its 2011 report to the Joint Judiciary Committee of Congress on the subject, the agency defines 'trademark bullying' as 'The extent to which small businesses may be harmed by litigation tactics, the purpose of which is to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner.'"

In its report, the Patent and Trademark Office said that many trademark owners "mistakenly believe that to preserve the strength of their mark they must object to every third-party use of the same or similar mark, no matter whether such uses may be fair uses or otherwise non-infringing. They may lose sight of the fact that the effectiveness of enforcement is not measured by how frequently they enforce, but rather by the effect that taking or failing to take action has in the marketplace. ‘The real question is public perception of plaintiff’s mark, not a battle count of how often it has sued others.’”
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Re: Specialized forces owner to change bike shop’s name

Postby Xplora » Mon Dec 09, 2013 10:05 am

But they are in under Canada law, Ron. Yeah?
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Re: Specialized forces owner to change bike shop’s name

Postby zero » Mon Dec 09, 2013 10:20 am

familyguy wrote:
zero wrote:He is going to lose, its a straight up bad deal to encourage him and feed his lawyer IMO. Trademark law exists for exactly this reason and prohibits exactly this thing.

If we pitched in and got the guy a marketing campaign to raise awareness of his new name, he'd be completely clear of spec and unharmed.
http://www.cipo.ic.gc.ca/app/opic-cipo/ ... exOnPage=1

There isn't a lot of excuse for not checking the Roubaix mark, searching for it is online and free, and spec's mark comes up first.


I don't have a problem with that approach if you were selling a bicycle with the name Roubaix. But what would Spec do if the Roubaix Tourism Office advertised in Canada? Just out of curiosity, what do Spec call the Roubaix in the US, where Fuji 'owns' the name?

Jim


Its still called the Roubaix in the USA afaik. Note that Fuji's parent US distributor has owned the Roubaix mark in the USA since 1992. I don't know whether there is an agreement between the companies, or whether Fuji has simply failed to defend the mark, or whether Fuji wasn't actively using the mark for a lengthy period of time.

Unless you do business in the category, your mark doesn't apply. ie "Sydney bicycles" cannot sue "Sydney tractors", for the use of the word Sydney.
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Re: Specialized forces owner to change bike shop’s name

Postby zero » Mon Dec 09, 2013 10:22 am

RonK wrote:
Xplora wrote:In fairness, Spec MUST launch action against him to protect their trademark. IP laws require the owner to do something about it. They've said straight out "we must do this to protect the IP", I'm not sure they are happy about it, and I'm sure their CEO's forehead is getting really sore with all the negative press attention.

This is smoke, the US Patents and Trademarks Office have specifically warned against this type of bullying behaviour, as reported in the Bikebiz article.

Attorney Charles Pelkey said: "The US Patent and Trademark Office appears to be annoyed at [bullying] behaviour. In its 2011 report to the Joint Judiciary Committee of Congress on the subject, the agency defines 'trademark bullying' as 'The extent to which small businesses may be harmed by litigation tactics, the purpose of which is to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner.'"

In its report, the Patent and Trademark Office said that many trademark owners "mistakenly believe that to preserve the strength of their mark they must object to every third-party use of the same or similar mark, no matter whether such uses may be fair uses or otherwise non-infringing. They may lose sight of the fact that the effectiveness of enforcement is not measured by how frequently they enforce, but rather by the effect that taking or failing to take action has in the marketplace. ‘The real question is public perception of plaintiff’s mark, not a battle count of how often it has sued others.’”


its in Canada, and there is a big difference between something like a bicycle tours company with a similar name, and a cinelli dealer.
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Re: Specialized forces owner to change bike shop’s name

Postby RonK » Mon Dec 09, 2013 1:08 pm

Xplora wrote:But they are in under Canada law, Ron. Yeah?

Yes, and Canadian trademark law requires very specific nomination of the items to which the trademark applies.

Specialized has owned the trademark in Canada since 2007. The protection applies to "Bicycles, bicycle frames, and bicycle components, namely bicycle handlebars, bicycle front fork, and bicycle tires."


Clearly a shop, even a bike shop, is none of these. Specialized know they would loose in court - they are using their financial power to bully the shop.
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Re: Specialized forces owner to change bike shop’s name

Postby 3DKiwi » Mon Dec 09, 2013 1:36 pm

So if Specialized are so concerned about protecting the word "Roubaix" how come they haven't bothered to aquire the roubaix.com domain name? The domain is for sale and I made enquiries today about buying it. Unfortunately I don't have a spare US $16,000. I have a trademark here in New Zealand on "3DKiwi" the name I use around the internet and for my website. I have the main domain names e.g. 3dkiwi.com and 3dkiwi.co.nz. I'm a little bit surprised Specialized haven't got this domain name if protecting the word is so important.

Here's the email reply from my enquiry:

Hello Nigel,

Thank you for your interest in roubaix.com. This premium domain name is priced at $16,000.00 USD.

Take advantage of this unique opportunity to acquire a memorable and professional looking domain name. Secure it now while still available. Offer valid for 7 days.

If you have any questions or need further assistance, please let me know.

Best regards,
Thierry

******************************************************************************
PLEASE READ: SALES TERMS AND CONDITIONS

All sales are subject to the following terms and conditions:

- Payment to be processed through Escrow.com, a trusted third party.
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Re: Specialized forces owner to change bike shop’s name

Postby Xplora » Mon Dec 09, 2013 2:12 pm

RonK wrote:
Xplora wrote:But they are in under Canada law, Ron. Yeah?

Yes, and Canadian trademark law requires very specific nomination of the items to which the trademark applies.

Specialized has owned the trademark in Canada since 2007. The protection applies to "Bicycles, bicycle frames, and bicycle components, namely bicycle handlebars, bicycle front fork, and bicycle tires."


Clearly a shop, even a bike shop, is none of these. Specialized know they would loose in court - they are using their financial power to bully the shop.

I don't agree with their actions, and they just made "the list" with this legal action LOL but I'm happy for natural law to apply in the first instance, and then allow them to figure out an equitable solution once the butt covering is done. If IP law requires an active pursuit to defend it, then they have to pursue. Once they have launched the defence, they can play the lame duck to keep the peace. But lawyers deal with the law, and the law is an ass.

I think the wheels would be a bigger issue, but I struggle to see how he is passing off anything as Spec product. Spec should surely be banging on his door to get changes.
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Re: Specialized forces owner to change bike shop’s name

Postby Scarfy96 » Mon Dec 09, 2013 2:39 pm

zero wrote:He is going to lose, its a straight up bad deal to encourage him and feed his lawyer IMO.


He will lose if he goes to court but he may win via social media and that may be the gambit. Hungry Jacks backed off for this reason, although the shop had the name prior to HJ come to Australia which gave them a stronger case BUT it never went to court:

http://www.theherald.com.au/story/18962 ... e-whopper/
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Re: Specialized forces owner to change bike shop’s name

Postby mitzikatzi » Mon Dec 09, 2013 2:57 pm

I always like reading forum posts about the Law and what Courts will do.

The only group that know what a Court will or won't do is the Court. Even then a Higher court may over turn it and an even higher court might reverse the decision.
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Re: Specialized forces owner to change bike shop’s name

Postby RonK » Mon Dec 09, 2013 3:15 pm

Xplora wrote:I think the wheels would be a bigger issue, but I struggle to see how he is passing off anything as Spec product. Spec should surely be banging on his door to get changes.

Yes, but even so, changing the name of the wheels is a different proposition than changing the name of the business.
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