The Chainlink

So Specialized is a patent troll.

Heard this on NPR then googled it. I don't own one and now likely never will.

http://www.google.com/url?sa=t&rct=j&q=&esrc=s&sour...

If the link does not work google "specialized bikes patent troll"

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Permalink Reply by Thunder Snow on December 10, 2013 at 9:40pm

News out of Canada in the last hour reports that Specialized and the lawyer for the café are back at the bargaining table trying to hash out a compromise.  Café owner credits the massive outpouring of support he's received via social media as the main reason Specialized is now interested in talking rather than litigating.

If on Facebook, add your "like": http://www.facebook.com/CafeRoubaix

Permalink Reply by Drewbacca on December 10, 2013 at 11:41pm


That... and the fact that ASI owns the trademark and Specialized lacks the legal authority to enforce it in the first place. I wasn't super happy with PRI's The World's report... it was lacking a lot of details and wasn't up to date.

See:

http://redkiteprayer.com/2013/12/the-explainer-because-i-ing-hate-b...

http://ridingagainstthegrain.com/2013/12/08/an-open-letter-to-mike-...

http://www.bicycleretailer.com/north-america/2013/12/09/asi-says-ca...

and http://www.bicycleretailer.com/north-america/2013/12/10/cafe-roubai...

To get the entire story.


Thunder Snow said:

 Café owner credits the massive outpouring of support he's received via social media as the main reason Specialized is now interested in talking rather than litigating. 

Permalink Reply by Tom Dworzanski on December 11, 2013 at 12:29am

Equating patent trolling with trademark defense is a little ridiculous. Patent trolling is a genuinely evil activity. Defending a trademark generally isn't.

I'm more with Specialized on this one. They own the trademark. The guy could should have checked if anyone is using it before starting his business. All that military fluff (which I respect very much but in this context it's fluff) doesn't make him above the law.

If someone wants to argue that "Roubaix" shouldn't be allowed as a trademark, I'll prob agree with you, but as it stands, Specialized is right.

Permalink Reply by Drewbacca on December 11, 2013 at 1:13am

@Tom, in regards to having the shop's name on the wheels... sure (although, again, ASI owns the rights and not Specialized so they were out of line to begin with). In regards to going after the shop name itself... that was complete BS on Specialized part since the shop is not a bike nor is it a component. There is no reason to believe that the shop was violating the trademark (regardless of who owns it) in any way. ASI certainly sees Cafe Roubaix as fair game (although, they are enforcing the trademark).

So sure, Specialized is *technically* correct (if they owned the trademark in accordance with the contract they previously worked out with ASI). That doesn't make them any less a bully. Why was it impossible for Specialized to work something out with the owner while it was no problem for ASI to do so? Given S-Law's history, it smells of BS to me. 

The question, for me, is whether or not Specialized just has an overly aggressive legal department acting independently or if the brand itself is too anal for its own good? They could have approached this in a completely different way. I really like the Jack Daniel's approach in the ridingagainstthegrain link above. I hope they learned form this controversy, but considering Stumptown and Epic in the past, I find that unlikely. 

Permalink Reply by Drewbacca on December 11, 2013 at 1:15am

Granted, and I speak as a veteran, it was military fluff on top of the real story. I absolutely agree with you on that note. 

and yeah, I don't think Roubaix should be a trademark. BikeSnob had a funny take on that one if you missed it. 

Permalink Reply by Tricolor on December 11, 2013 at 7:41am

Epic Burger?  I'll take it over a 'Magma' coffee any day.

Permalink Reply by Charlie Short 2.9 on December 11, 2013 at 7:52am

Specialized is definitely being a bunch of jerks, but they aren't being patent trolls. Petty? Yes.

Permalink Reply by Anne Alt on December 11, 2013 at 9:19am

I agree. And there's more small business bullying by Specialized here.

Charlie Short 11.5 said:

Specialized is definitely being a bunch of jerks, but they aren't being patent trolls. Petty? Yes.

Permalink Reply by Crazy David 84 Furlongs on December 11, 2013 at 9:56am

Trademarks can be complicated.   Is the Specialized Trademark on the place name or on the phrase "Cafe Placename".   The key test is likelihood of confusion.    Since this is a place name associated with Bicycles and, assuming that the word "cafe" is not in the specialized trademark, I think a good case could be made that no likelihood of confusion exists and the usage is not infringing.   If it were a "coined" word, say "RoToDeFra" , they would have a much easier case.

That being said, the cost of defending even a valid use is high.

Permalink Reply by Doug Haynes on December 11, 2013 at 11:20am

Actually the worldwide trademark to the name, in regards to bikes, is owned by ASI and licensed to Specialized.  Their claim to a Canadian TM is suspect because of the worldwide TM ASI holds; they never should have gotten the TM in the first place so they really have no legit claim to the name.

Also, TM enforcement is all about there being a reasonable chance of confusion.  Such as was the case with Stumptown and Epic bags there is really little chance of this shop being confused with Specialized or it's products and the owner was in no way trying to ride on their coat tails.  That means that they again, for yet another reason, do not have a legit claim on the TM.

As for the, 'we have to do this to protect or TM!' argument there are very easy ways around that.  Even if you want to press the issue where there is little chance of confusion you can just license the TM to them, much like ASI licenses the TM to Specialized, and everybody wins.  It can be a for as little as a dollar/yr and still protect the TM.

Specialized is being a bully here, pure and simple.

Tom Dworzanski said:

Equating patent trolling with trademark defense is a little ridiculous. Patent trolling is a genuinely evil activity. Defending a trademark generally isn't.

I'm more with Specialized on this one. They own the trademark. The guy could should have checked if anyone is using it before starting his business. All that military fluff (which I respect very much but in this context it's fluff) doesn't make him above the law.

If someone wants to argue that "Roubaix" shouldn't be allowed as a trademark, I'll prob agree with you, but as it stands, Specialized is right.

Permalink Reply by Tom Dworzanski on December 11, 2013 at 5:38pm

There is no such thing as a "worldwide trademark." (No, the Madrid Protocol does not grant a worldwide trademark.)

And honestly, I feel almost as though ASI is acting absurdly here claiming they have some ridiculous global right. They, not Specialized, seem like the villains here . . . no matter how good a job they're doing getting cheap publicity as faux heros.

notoriousDUG said:

Actually the worldwide trademark to the name, in regards to bikes, is owned by ASI and licensed to Specialized.  Their claim to a Canadian TM is suspect because of the worldwide TM ASI holds; they never should have gotten the TM in the first place so they really have no legit claim to the name.

Also, TM enforcement is all about there being a reasonable chance of confusion.  Such as was the case with Stumptown and Epic bags there is really little chance of this shop being confused with Specialized or it's products and the owner was in no way trying to ride on their coat tails.  That means that they again, for yet another reason, do not have a legit claim on the TM.

As for the, 'we have to do this to protect or TM!' argument there are very easy ways around that.  Even if you want to press the issue where there is little chance of confusion you can just license the TM to them, much like ASI licenses the TM to Specialized, and everybody wins.  It can be a for as little as a dollar/yr and still protect the TM.

Specialized is being a bully here, pure and simple.

Tom Dworzanski said:

Equating patent trolling with trademark defense is a little ridiculous. Patent trolling is a genuinely evil activity. Defending a trademark generally isn't.

I'm more with Specialized on this one. They own the trademark. The guy could should have checked if anyone is using it before starting his business. All that military fluff (which I respect very much but in this context it's fluff) doesn't make him above the law.

If someone wants to argue that "Roubaix" shouldn't be allowed as a trademark, I'll prob agree with you, but as it stands, Specialized is right.

Permalink Reply by Doug Haynes on December 11, 2013 at 5:42pm

Not according to ASI...

Tom Dworzanski said:

There is no such thing as a "worldwide trademark."

notoriousDUG said:

Actually the worldwide trademark to the name, in regards to bikes, is owned by ASI and licensed to Specialized.  Their claim to a Canadian TM is suspect because of the worldwide TM ASI holds; they never should have gotten the TM in the first place so they really have no legit claim to the name.

Also, TM enforcement is all about there being a reasonable chance of confusion.  Such as was the case with Stumptown and Epic bags there is really little chance of this shop being confused with Specialized or it's products and the owner was in no way trying to ride on their coat tails.  That means that they again, for yet another reason, do not have a legit claim on the TM.

As for the, 'we have to do this to protect or TM!' argument there are very easy ways around that.  Even if you want to press the issue where there is little chance of confusion you can just license the TM to them, much like ASI licenses the TM to Specialized, and everybody wins.  It can be a for as little as a dollar/yr and still protect the TM.

Specialized is being a bully here, pure and simple.

Tom Dworzanski said:

Equating patent trolling with trademark defense is a little ridiculous. Patent trolling is a genuinely evil activity. Defending a trademark generally isn't.

I'm more with Specialized on this one. They own the trademark. The guy could should have checked if anyone is using it before starting his business. All that military fluff (which I respect very much but in this context it's fluff) doesn't make him above the law.

If someone wants to argue that "Roubaix" shouldn't be allowed as a trademark, I'll prob agree with you, but as it stands, Specialized is right.

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