Bob Dopolina 

I just ordered his T-Shirt.

Bacciagalupe

Pinarello hasn't trademarked "Dogma." However, they have trademarked "Opera" in Canada, and "Most" in the US. If they heard about a guy selling "Opera Wheels" or "Most Mudguards," their response would be the same.

I have no doubt that companies -- including ones you like -- send out letters on a routine basis to protect their trademarks, we just don't know about it.

I'm also fairly confident that if someone in the next town opened their own "Cafe Roubaix Bike Studio," the owner would have hit the ceiling.


Again, he's also building and selling wheels using the word "Roubaix." If they don't defend it, then "Roubaix" could be classified as a generic term, and they will lose the mark.


According to Trek's trademark filing: "The wording 'DOMANE' has no meaning in a foreign language."

Anyway.... It's legal to use place names in trademarks. Cities like Avignon, Tokyo, Dublin are all trademarked for specific uses. There are roughly 35 live trademarks that include the word "Belgium" (or "Belgique"), and 75 live trademarks that include the name "Provence."


Erm... That's a merchandising deal, which Lucas has done from the start. Lego didn't start making Star Wars kits and assume it would be OK because "Stars" and "Wars" are terms in general use. They put together a deal before manufacturing the sets... and Lucas is certainly getting paid more than $1.

In this case, you have a bike shop that is making and selling wheels using a trademark, without asking first. The shop owner didn't understand trademark law (surprise!), and made a mistake.

Besides, there's already a merchandising deal in place. Fuji licenses "Roubaix" to Specialized in the US, and vice versa for Canada. Licensing it to every vet who wants to run a bike shop will erode the trademark.


I suspect most of the people who are objecting so strenuously have already decided to "never buy Specialized" already. I don't think they're going to lose any sales here.

brian416

It seems like the problem is that they were allowed to trademark the name of a town in the first place. It doesn't make sense to allow companies to trademark the name of a city.

gregf83 

My guess is this publicity will end up being a net positive for the shop owner. He just needs to find a way to keep the wool jerseys in stock

As for those complaining about trademarking a city name, we don't have any problem giving out trademarks for fruit so I don't see why cities aren't fair game. Try marketing a wireless service in Canada with Blackberry in the name and see if you don't get a visit from a nasty corporate lawyer.

Bacciagalupe

There are no court proceedings.


The "little bike builder" is buying components from Shimano ($2.6 billion in revenues in 2012) or SRAM (roughly $500 million in annual revenues), and the likes of Mavic (Amer Sports, roughly $1.4 billion in annual revenues).

Plus, most people can't afford bikes built by the "little guy."


No, it's right because it's right. Specialized has a trademark, and they're protecting their trademark. The shop owner made a mistake, because he didn't understand trademark law. He isn't allowed to violate trademark laws just because he runs a small business or is a vet.

The reason to point out that "everyone does it" is because everyone does it. Whooever you are rooting for will almost certainly do the same thing in the same situation. Cannondale will not let you sell "Slice Wheels," Pinarello will not let you sell "Pinarello Bar Tape." LucasFilms fires off nastygrams all the time. Just because you don't hear about every letter sent by a company lawyer doesn't mean it never happens.

eja_ bottecchia

Dave, it is actually not all that clear that Specialized would win this one in a court of law. As you pointed out, they already lost in the court of public opinion.

Go Canada!

DaveWC

Yes, there are. If there are none in this case that will only be because the defendant cannot afford the cost of a defense. It doesn't change the statement I made.


That's interesting but irrelevant to the idea of people switching from large builders to small.

Good to know. If I'm considering a Tarmac SL4 I cannot choose a small builder instead. Most people won't be aware of this case. Most people won't buy Specialized regardless. Most people buy from a department store. None of the issues in this story will affect "most people". But good point otherwise.

It's legally correct but as I said, consumers can decide for themselves what is right, regardless of your opinion.

3alarmer 

3alarmer 

...of course, if not, the next question might be, "Why not ?"

gregf83 

That question was already asked and answered in this thread.

ss600

It turns out that Specialized and Fuji had this talk already. Fuji was going to go after Specialized but, instead, to forego the legal fees and litigation, Specialized let Fuji use their 4-bar suspension setup. They both proceed happily. I am still not sure why Specialized couldn't have done something similar with Cafe Roubaix.

shoota 

I have to agree here. I used to have the Apple boycott syndrome. Eventually I figured out it's not worth the time and energy. Just buy crap and spend the time and energy focused on things that really matter.

3alarmer 

....thank you. So basically all the guys stating that Specialized really has no choice but to pursue the issue
with this particular businessman or risk losing their trademark rights are kinda ignoring the obvious here ?

The obvious being that there's another line of bikes and at least one tire made in Italy already carrying the name.

gregf83 

They did a cross licensing or similar deal with Fuji. The little bike shop and everyone else who wants to infringe the trademark isn't in a position to cross-license. They wouldn't be able to afford it.

Of course they have a choice. They could give away the rights to the trademark they have been investing in for years. They just chose not to.

3alarmer 

...on a side note, in the Volagi case, Specialized won. They were awarded a dollar
as their damages, and it is not difficult to understand that in that particular case,
their litigious history was used as part of the defense. In that case, it worked well.


The company has finally achieved the reputation as a plaintiff in too many such cases,
and such a reputation eventually earns the rewards of going too many times to the well.

Bacciagalupe

Nope. Fuji and Specialized made a legal arrangement for mutual use of the trademark.

If I start selling "Roubaix Wheels" in the US, chances are pretty good I'll get a "pleasant" letter from Fuji's lawyers.

Bob Dopolina 

As was the fact that the owner DID do a search but thought the name would be ok. Also mentioned was the fact that his lawyer agreed and feels he has a strong case and that the real issue is about the prohibitive cost of litigation.

3alarmer 

...how does that dictate the company's "choice" in this or many other cases.

I don't get the argument that, "They hadda do it, or their corporate branding would come crashing down."
And I'm sorry, but I think it unlikely that your further explanations of it in those terms will sway me.

gregf83 

If he had a strong case it wouldn't cost $150k. His lawyer thinks he has a case and is willing to bill his client $150k to see if he's right.

It's not clear the owner did a trademark search. He says he did his research and thought he'd be OK. It's likely he didn't have much business experience and certainly no experience in trademark law.

I'm not an expert in trademark law but my business sense would have told me it would be flirting with danger to build bike parts and attempt to use the name 'Roubaix' as a brand.

If you think Specialized is being harsh you should have been in Vancouver when the Olympics came to town and forced small restaurant owners who'd been in business for many years to remove the word Olympic from their name.

Smokehouse

*EDIT*

I guess I still don't get why people are shocked or outraged at this. A company owns the right to make an item with a name on it, some other company makes a product with that same name without permission. End of story. He's making, and selling wheels with a trademarked name on it. It's doesn't matter if it's "mickey Mouse wheels", "Nintendo wheels", or "cherry Coke wheels"…he took a name, that legally belongs to another company, made a product with the same name on it and you all are making this out to be some "David vs Goliath" thing when its not. He made the poor choice to do it, it was his legal responsibility to do the homework. I can start making my own car, calling it a Mustang and post that I'm being bullied by the big, bad Ford company when they take me to court...


As usual, the always colorful internet attempts to color things with "he's a vet OMGWTFBBQ!!!" Or "he just used the word to name his company!!!" But skip right over...or deeply bury the item name part.


This tripe is actually in the story:


“I’ve gone through some very intense (post-traumatic stress disorder) therapy in the last year. Forcing myself to get out there into the public and the business world has taken a huge effort,” he says. “I’m just at the point were we think this might fly, so this was a huge hit for me personally.”


Seriously? They felt the need to play up this guys plight, although he is clearly breaking the law and using his mental state as some sort of "we should let him be" tripe.


This kind of garbage is what is ripping This (and other countries) apart. Letting people get by with illegal acts/stupidity because of some sob story.


Legal is legal and the system is in place. The fella is using a name for item that is already owned...it doesn't matter how big, or small his company is or what he was before he owned a bike shop. He is doing something illegal, end of story.

Mike F

Why name a store after a bike that looks like a dog dropping a deuce? Cafe "Grumpy Dumpy" already taken? Putting on Kevlar underwear now...

Bacciagalupe

I'm not sure what is unclear.

Trademark law requires that you have to defend your trademark if you want to keep it active. If a bunch of people started calling their bikes "Roubaix," and Fuji did nothing about it, they'd lose the trademark.

The fact that Fuji and Specialized made a deal doesn't change this requirement of trademark law, it doesn't make the trademark generic, and it doesn't obligate Specialized to make a deal with the shop owner. It's not that complicated.

WhyFi

Are you trying to say that this discussion has become repetitive to the point that one wonders if people are actually reading prior comments?

WhyFi

Yeah, people keep saying the same things over and over - is no one paying attention?

3alarmer 

...what's this thread about ?tm rjones28