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Roubaix Specialized
The name in question.

The War on Specialized

When the world's third-largest bike company threatened to sue a small bike shop over a trademark, the cycling community went ballistic, calling Specialized "a bully" and "a bunch of idiots." Was the outrage justified?

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Roubaix Specialized

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Last week was a bad week to be Mike Sinyard, founder and CEO of Specialized bikes.

The idea of culpability because of failure of fake product hadn鈥檛 really registered for me. But the way Sinyard told it sounded plausible.

Specialized sent a letter demanding that the name of the shop Caf茅 Roubaix be changed. Specialized sent a letter demanding that the name of the shop Caf茅 Roubaix be changed.

A week ago Saturday, the stating that the bicycle manufacturer had threatened a local bike shop in Cochrane, Alberta. According to the article, Specialized sent a letter to Dan Richter demanding that he change the name of his shop, Caf茅 Roubaix, because it infringed on Specialized鈥檚 trademark of the word Roubaix. The U.S. company markets its best-known line of endurance road bikes under that name.

Within the hour the story erupted on Twitter. By the time Sinyard returned from his weekly Saturday ride, cycling news sites had latched onto the story, too. 鈥淚 saw the story on Cyclingnews and thought, 鈥榃hat鈥檚 this?鈥 It was the first time I knew anything about it,鈥 Sinyard says. 鈥淚 called our outside attorney but couldn鈥檛 reach him. And I just decided it could wait till Monday.鈥澛

But by Sunday, the news stories had spurred a groundswell of responses and blogs denouncing Specialized for its heavy-handed tactics. On Monday, the Herald reported on the surge of online support for Caf茅 Roubaix, casting the dispute as a . Richter said the 鈥淟ikes鈥 on his Facebook page leapt from 500 to over 15,000. 鈥淲e were in discussions and working on a settlement before the media coverage,鈥 he said. 鈥淒efinitely the social media explosion helped swing it our way.鈥

鈥淨uite honestly, I just feel badly that this thing has gotten to where it has,鈥 Sinyard told me. 鈥淲hen I went up there and met Dan Richter, I realized what a mistake we had made. He鈥檚 the kind of guy that I would have as a friend and ride with.鈥

This isn鈥檛 the first time Specialized has tangled over intellectual property. In 2012, the company took on ex-employees Robert Choi and Barley Forsman after the pair left Specialized and started the bike brand Volagi. The judge threw out eight of the nine counts brought by Specialized, including the claim that Choi and Forsman had used trade secrets from their time at Specialized to create their disc-equipped Liscio road bike. The court did rule in Specialized鈥檚 favor on one count鈥攖hat Choi had breached his contract鈥攁nd the jury .

In 2011, the Portland, Oregon-based wheel-building company, Epic Wheel Works, after Specialized threatened to enforce its trademark rights for its 鈥淓pic鈥 brand of bikes. Specialized also back in 2006 because it felt the brand鈥檚 Stumptown cyclocross bike was too similar to its own Stumpjumper.

As the controversy over Caf茅 Roubaix grew, the message boards filled up with testimonies to other past examples. And by Tuesday, the mainstream media began picking up on the story, including a spot on Public Radio International with the titillating headline, 鈥?鈥 Is it germane to the story that Dan Richter is a war veteran? Not really, but the headline effectively portrayed Richter as David in this battle against Goliath.

Worse still for Specialized, Bicycle Retailer reported that Advanced Sports International (ASI), owner of Fuji, Kestrel, Breezer, and SE Bikes, actually owns the worldwide rights to the Roubaix trademark, which they license to Specialized. ASI President and CEO Pat Cunnane said that not only could Richter keep his caf茅 name but that Specialized had when it registered for the Roubaix trademark in Canada.

The news was like gasoline to the online fire. One well-known columnist wrote an , with fairly clear-sighted commentary. But much of the discourse wasn鈥檛 as collected. Everyone suddenly seemed to be an intellectual-property-law expert. Armchair pundits began calling for a boycott on Specialized products. Someone even set up an to fund Caf茅 Roubaix鈥檚 legal fees.

But it鈥檚 crucial to remember the facts. First, ASI owns the trademark for the word Roubaix, and they license it to Specialized. Second, Specialized owns the Canadian trademark. (And it seems that over that.) Third, Dan Richter opened a shop in Cochrane, Alberta, and named it Caf茅 Roubaix. He also produces cycling goods, most notably wheels, that are branded with the word Roubaix. Finally, by virtue of its trademark, Specialized has the right to question Richter鈥檚 usage of the name.

Does that make Specialized look like a cool company? Probably not. Is it empathetic? No. Do consumers have a right to buy elsewhere because they don鈥檛 agree with Specialized’s initial threatening action in this case. Of course.聽

Specialized didn鈥檛 help its case by remaining largely mute for the first half of the week. The only word for days was a feeble and legalistic statement that the company is 鈥渞equired to defend or lose its trademark.鈥 Breaking the silence on Tuesday, Specialized released a 39-word statement that said they were working with Richter to find a solution. Almost simultaneously, that he had spoken with Sinyard and 鈥渆verything will be working out fine.鈥 A video of a sheepish Sinyard apologizing to Richter surfaced the next day. And finally, Thursday night, Specialized broadcast a forthright and contrite letter from Sinyard.

The headline: . Perhaps the most salient point, however, was that he acknowledged that Specialized had gone too far in some cases and that the company was committed to reassessing its intellectual property and trademark pursuits.

The story contained another interesting tidbit. Sinyard explained that Specialized had become so assertive with its claims in the past few years because of the proliferation of counterfeit goods. He said that the company has identified some 5,000 listings of fake Specialized products worth over $11,000,000, and added that the liability and responsibility for defending against such piracy was enormous.

The idea of culpability because of failure of fake product hadn鈥檛 really registered for me. But the way Sinyard told it sounded plausible.

鈥淚 acknowledge that we have over-reached in some cases,鈥 he said, when I called him up to discuss the conflict. 鈥淪o we鈥檙e going to review everything that鈥檚 on the table. In cases that put riders and Specialized at risk, we鈥檙e still going to go in with a cannon. We have to. But if we can verify a business, if there鈥檚 no need for concern, then we don鈥檛 have to be as aggressive. There will be better oversight.鈥

This seemed to be the most redeeming thing I鈥檇 heard out of this story all week. Caf茅 Roubaix was keeping its name where it likely otherwise would not have. Mike Sinyard was, as far as I could tell from talking with him, regretful. Better still, he was vowing to improve Specialized鈥檚 litigation practices. (Sinyard confirmed that the that surfaced on Thursday was sent prior to the Caf茅 Rouabaix dispute and had been subsequently dropped by Specialized.) In spite of all of the conjecture, rants, and tabloid-style reporting on the issue, something good was going to come of it.

But before deciding that it was all beautiful sunrises and sweet conclusions, I rang up Dan Richter to see how he was feeling. Richter said he is happy with the outcome and is now a licensed user of the trademark Roubaix. 鈥淲e gained a good understanding of the situation by sitting down with Mike, and we accept his apology,鈥 he said. He added that he will likely re-brand his wheels after the winter to match a line of house-branded components he is launching, though he said that those plans were on the table prior to the dispute with Specialized.

Richter said he didn鈥檛 blame Specialized for its position. 鈥淚f I found out someone was riding wheels with Caf茅 Roubaix on them, and they didn鈥檛 come from my shop, I would be concerned. If it fails, it reflects on me. Sure, I could disclaim it and say it鈥檚 not mine, but it would still reflect on me,鈥 he told me. 鈥淪o I understand Mike鈥檚 and Specialized鈥檚 position, especially as one of the biggest bike manufacturers in the world.鈥

鈥淏ecause of their size, Mike鈥檚 either loved or hated,鈥 Richter said, adding that he was ready to move on. 鈥淏ut I met him face to face, and he鈥檚 very personable, very charismatic. I feel no ill will towards Mike or his company. Ten years down the road, I hope we can sit down and have a beer together and laugh about this.鈥

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