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Tuesday
Dec172013

Trademark Disputes – Lessons Learned by Roubaix-ing Owners the Wrong Way

by Stephan Mihalovits 

Roubaix, like Champagne, is a locale in France – though the town is known more for being the end point of the Paris-Roubaix Cycling Race, than for grapes.

Specialized is a bike maker well-known among professional cyclists. They carry a line of Roubaix road bikes that run thousands, sometimes tens of thousands, of dollars.

Enter Dan Richter, a Canadian veteran who opened Café Roubaix Bicycle Studio in Cochrane, Alberta. Richter began his career by building custom bike wheels and other cycling products – Richter Bicycles moved to Cochrane in 2012 and became Café Roubaix.

It didn't take long for Specialized, understandably wanting to protect its brand, to send Richter a "cease and desist" letter regarding his use of Roubaix for his business this summer. Like most cease and desist letters, it threatened a lawsuit should Richter refuse to change the name of his brick and mortar store. The shop owner, not having the funds to fight the cycling giant, resigned himself to losing this particular battle.

 

Social Media: Specialized Bumps in the Road

 

It all looked like an easy cross to the Roubaix finish line for Specialized, until the Calgary Herald got wind of the story.

Cycling enthusiasts reading of Richter's uphill battle took up his cause, and carried the fight to social media. Many changed their twitter handles to include Roubaix in their names. Others protested with hate tweets. Specialized's Facebook page took hits regarding company boycotts and suggestions for establishing a legal defense fund for Richter.

That's when a U.S. company, Advanced Sports International (ASI), stepped in.

As it turns out Specialized was out of bounds in making its claim. ASI owns Fuji Bikes and holds the trademark for Roubaix in the United States. Steve Frothingham of ASI said Specialized lacked the authority to pursue a trademark case against the owner of the small bike shop.

ASI reached out to Richter, telling him he can continue to use the name under a license, which ASI is willing to grant. ASI noted it believes Richter did not intend for his customers to confuse the bike shop with the Roubaix line of bikes, and that consumers should be able to tell the difference.

 

Trademark Disputes & Lessons Learned

 

This tussle between various users of the same mark shows how important it is to read the lay of the land before engaging in a trademark dispute.

Whether it knew about ASI, or whether it knew but didn’t care, Specialized should have known its own rights were inferior to another company.  Companies should tread cautiously before seeking to enforce a mark that may stir a competitor with superior rights.

The second lesson is another example of how public relations must be considered in trademark disputes.

In an age when social media can deliver gossip instantly, companies should consider ways of resolving trademark disputes without creating potentially harmful PR. These could include phone calls instead of letters, or more conciliatory language.

Problems are seldom resolved when a lawyer writes a scorched-earth letter. More often, this approach bolsters the other side, and the dispute becomes intractable. With a firm message and reasonable language, trademark holders can better get a handle on their legal and public relations issues.

 

 

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