Specialized forces owner to change bike shop’s name

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

Postby zero » Tue Dec 10, 2013 7:23 pm

dalai47 wrote:
The 2nd Womble wrote:SPECIALIZED CAVED IN! GO DAN YOU BIG RED FIRE ENGINE!!!
http://bicycleretailer.com/north-americ ... qasR3M_7qC


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 :roll:

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

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

Postby The 2nd Womble » Tue Dec 10, 2013 8:12 pm

Ah...
Last edited by The 2nd Womble on Tue Dec 10, 2013 8:14 pm, edited 1 time in total.
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Re: Specialized forces owner to change bike shop’s name

Postby The 2nd Womble » Tue Dec 10, 2013 8:14 pm

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

Postby coffeeandwine » Tue Dec 10, 2013 9:10 pm

The 2nd Womble wrote: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!
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Re: Specialized forces owner to change bike shop’s name

Postby The 2nd Womble » Tue Dec 10, 2013 10:40 pm

"@SafeCyclingOz: @FujiBikes so when are you suing the arse off @iamspecialized? No seriously, when? #onelessspecialized thankyou #ASI"
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Re: Specialized forces owner to change bike shop’s name

Postby NhiTrac » Tue Dec 10, 2013 11:06 pm

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

Would be great to see their response to ASI's statement.
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Re: Specialized forces owner to change bike shop’s name

Postby find_bruce » Tue Dec 10, 2013 11:17 pm

zero wrote: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 ?" :D
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Re: Specialized forces owner to change bike shop’s name

Postby DavidS » Wed Dec 11, 2013 12:37 am

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.

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

Postby cobba » Wed Dec 11, 2013 1:42 am

DavidS wrote: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/specialized-facing-social-media-storm-after-roubaix-lawsuit-threat

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

Postby GeoffInBrisbane » Wed Dec 11, 2013 5:28 am

cobba wrote:
DavidS wrote: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/specialized-facing-social-media-storm-after-roubaix-lawsuit-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?
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Re: Specialized forces owner to change bike shop’s name

Postby Clydesdale Scot » Wed Dec 11, 2013 6:28 am

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

Postby Ross » Wed Dec 11, 2013 8:42 am

DavidS wrote: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.

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

Postby zero » Wed Dec 11, 2013 8:44 am

Clydesdale Scot wrote: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.

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

Postby Wakatuki » Wed Dec 11, 2013 1:21 pm

Ross wrote:
DavidS wrote: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! :shock:

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

Postby jasonc » Wed Dec 11, 2013 1:30 pm

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


I thought the turkey was the one riding it :lol: :oops: :mrgreen:
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Re: Specialized forces owner to change bike shop’s name

Postby Wakatuki » Wed Dec 11, 2013 1:38 pm

jasonc wrote:
Wakatuki wrote:I ride a Scott Foil, I won't be wrapping the turkey in it! :shock:


I thought the turkey was the one riding it :lol: :oops: :mrgreen:


Nice :D

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

Postby burger » Wed Dec 11, 2013 4:21 pm

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

Postby outnabike » Wed Dec 11, 2013 5:25 pm

Can they sue "Specialised Forces" for using their name, this will bring the CIA into it... :)
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Re: Specialized forces owner to change bike shop’s name

Postby Baalzamon » Wed Dec 11, 2013 5:28 pm

http://road.cc/content/news/100528-specialized-and-caf%C3%A9-roubaix-owner-say-trademark-dispute-close-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
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Re: Specialized forces owner to change bike shop’s name

Postby Wakatuki » Wed Dec 11, 2013 6:12 pm

In the words of Neil Young
Ooh, ooh, the damage done

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

Postby Baldy » Wed Dec 11, 2013 7:09 pm

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.

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

Postby skull » Wed Dec 11, 2013 9:13 pm

Not sure if fuji are busy trying to sue people

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

Postby Xplora » Wed Dec 11, 2013 9:23 pm

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.

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

Postby bychosis » Wed Dec 11, 2013 9:35 pm

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

Postby trailgumby » Wed Dec 11, 2013 10:23 pm

Some quite funny mash-ups here:

http://suckitsinyard.tumblr.com/

My favourite:
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