The Explainer: Because I @#$%ing hate bullies

The Explainer: Because I @#$%ing hate bullies

Shop DoorI was once asked, by a curious high school student, why I went to law school.

Maybe my response wasn’t exactly appropriate, but my answer remains the same: “Because I @#$%ing hate bullies.”

Well, maybe that’s the answer to why — after so many months off — I am resurrecting “The Explainer.”

By now many of you have seen the story making its way around cycling-related social media about the Afghanistan war veteran in Cochrane, Alberta, who opened up a small bike shop over an ice cream parlor and his ensuing encounter with a @#$%ing bully.

If you haven’t read about Dan Richter and the Café Roubaix Bicycle Studio, do me a quick favor before you do. Without clicking on this link, answer the following very easy question:

What do you, oh velo-centric bike geeks among us, think of when you hear the word “Roubaix?”

I have to admit that my thoughts don’t automatically turn to the commune located in the Nord department of France between Lille and Tourconig. I don’t even think of the famous velodrome there in that little industrial town. No, the first thing that springs to mind for me is pavé, mud, brutal conditions and that great, great quote from Theo de Rooy after he dropped out of the 1985 edition of Paris-Roubaix:

“It’s bollocks, this race! You’re working like an animal; you don’t have time to piss; you wet your pants. You’re riding in mud like this; you’re slipping. It’s a piece of shit …” said de Rooy, quickly adding that he fully expected to do it again because “it’s the most beautiful race in the world.”

And that is what springs to my mind when I think of “Roubaix;” the most beautiful race in the world. It’s probably what came to Dan Richter’s mind when he decided to name his little bike shop after that iconic annual event.

What doesn’t come to my mind — and what probably didn’t come to Richter’s mind — is an admittedly nicely designed bicycle by that Morgan Hill, California, mega-corporation, otherwise known as “Specialized.”

I think of stuff like the Forest of Arenberg when I think of "Roubaix."

Thankfully, when it comes to racing, there isn’t a “TM” attached to the word “Roubaix.”

Richter was notified earlier this year by “Specialized Canada” that his bike shop’s name infringes on Specialized’s Canadian trademark of the name “Roubaix.” Yup. Specialized’s engineers made a nice bike and after they did, the douchebags™ in the legal department went ahead and registered the name of that French city as their own. They couldn’t do it in the U.S., but they’re aggressively “protecting” the name up there in the Great White North.

You see, the brilliant legal minds at Specialized are asserting that Richter’s bike shop (which does not happen to carry Specialized product, by the way) would cause brand “confusion” among consumers and that’s why they had to take aggressive steps to “protect” their trademark.

Yup, they’re essentially claiming that a guy out for a walk in Cochrane, Alberta, will see the sign for the “Café Roubaix Bicycle Studio,” and immediately jump to the conclusion that it must be a part of the Specialized empire.

Richter has been correctly advised by his attorney that his is a battle he can win. Unfortunately, he is now poised to surrender to the corporate bully because, while they can afford a protracted legal battle, he can’t spring for the estimated $150,000 that it would cost him to fight the good fight.

Specialized is using the old “defend it or lose it” argument, saying that it must assert its “rights” to “their” trademark of Roubaix or risk losing it.

It’s a weak argument and one that I, quite uncomfortably, had to try and make myself many years ago (more on that later). It’s basically an argument that can be summed up as — and forgive me for using another technical legal term here — ”bullshit.”

Trademark owners are not required to object to each and every use of a name. What they are required to do is to work to avoid confusion. In other words, Specialized might appropriately object to a bicycle carrying the moniker “Roubaix,” since they have trademarked the name of their model, but that authority doesn’t extend to virtually every use of the name … even when it’s related to cycling. Frankly, even that might be a stretch. Specialized sure as heck isn’t the only bike manufacturer which tried to convey a message about ruggedness by embracing the Roubaix name for its product.

In bike racing circles, “Roubaix” is about as close to being a generic term for “brutally tough,” as you can get.

Trademark Bullies 
Even the U.S. Patent and Trademark Office appears to be annoyed at this sort of behavior. In its 2011 report to the Joint Judiciary Committee of Congress on the subject, the agency defines “trademark bullying” as “The extent to which small businesses may be harmed by litigation tactics, the purpose of which is to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner.”

Keep that word “reasonable” in mind. It pops up all over the legal profession (yeah, yeah, I know). It’s actually a pretty simple standard. Would a “reasonable” person make an error like the trademark holder is asserting would be the case? Honestly, a “reasonable” person probably doesn’t think of Specialized when someone utters the word “Roubaix.”

In its report, the Patent and Trademark Office notes that many trademark owners “… mistakenly believe that to preserve the strength of their mark they must object to every third-party use of the same or similar mark, no matter whether such uses may be fair uses or otherwise non-infringing. They may lose sight of the fact that the effectiveness of enforcement is not measured by how frequently they enforce, but rather by the effect that taking or failing to take action has in the marketplace. ‘The real question is public perception of plaintiff’s mark, not a battle count of how often it has sued others.’”

Perception and the effect on the marketplace
Keep in mind that the quality of a brand comes down to perception. So basically, it’s a question of public relations and marketing. The problem is that companies tend to forget that lawyers – even when they’re technically correct – aren’t always right. They are known as “counselors” for a reason. Their advice should be considered as counsel, but not as the final word. There are other factors to consider when making a decision to go after a little guy.

The beauty is that a small business, while unable to mount a full-on legal fight, can take the issue to the court of public opinion. On that front, Specialized doesn’t stand a chance.

I know of what I speak.

Back in 1994, I left a fairly lucrative job as a press secretary in the leadership of U.S. Senate. It was a good gig and, in my mind, there was only one job that could be considered to be better. That job, too, came along when I was offered a chance to work at a nationally distributed cycling magazine with the likes of John Wilcockson, Graham Watson and Maynard Hershon. These were the guys whose work I’d followed religiously when I was a bike racer. Now I was allowed to join them at VeloNews. Suddenly, I had the chance to stop being a guy in a suit and maybe even be a guy covering things like the Tour de France. Obviously,  I jumped at it.

Unfortunately, because “press secretary” meant “PR specialist” to my boss, one of the first assignments I got at VeloNews was to try to deal with the public relations fallout from the magazine’s “cease and desist” letter sent to a small web-based cycling news service, known as “VeloNet.” Arguably, the lawyers were legally correct. The name “VeloNet” could have been easily confused for “VeloNews.” That doesn’t mean they were right. At the time, the site was just a small, volunteer-based effort and we probably would have been better off letting it go.

Despite the fact that were big enough to fire legal salvos across the little guy’s bow, we discovered we were at a distinct disadvantage. Instead of responding to the lawyerly prose of the C&D letter as we had expected, the wise folks at VeloNet simply went ahead and posted the damn thing. We looked like assholes. The response was fast, furious … and appropriate. We were quickly forced to backpedal, but the damage had been done. It took years to overcome the ill-will that move generated … if ever.

Meanwhile, the good folks at was once called VeloNet went ahead and changed the name anyway … to “CyclingNews.” (Yeah, they kicked our collective asses on that front, too.)

So where to fight?
Like Mr. Richter’s attorney said, this is probably a fight he could win in the courts. Unfortunately, that costs money, so he’s forced to surrender the legal battle.

Frankly, I think it’s time to take the fight to another battlefield.

Let’s start by visiting Mr. Richter’s online store at www.caferoubaix.ca and buying something!!! Actually buy a lot.

Then, for the time being, the next time you are in the market for a nicely built road bike, start by looking somewhere other than Specialized. There are plenty of good bikes out there on the market, many of which compare favorably to the Specialized Roubaix. Take, for example, the Fuji (wait for it) “Roubaix,” a label affixed to their downtube a dozen years before the Men from Morgan Hill declared Roubaix was theirs. Nonetheless, the Specialized Roubaix is a bike I enjoyed riding and would probably have enjoyed owning as well … but not for now. Why? Because I @#$%ing hate bullies. Until Specialized Canada stops listening only to its lawyers and stops being a @#$%ing bully, I’ll shop elsewhere.

Besides, if they continue this behavior and you do end up buying a Specialized, the first thing that will come to people’s minds when they see that red slash “S” logo is that it stands for “Shameless asshole.” Beware of using the term, though. I do believe that my good friend Patrick O’Grady already has that one trademarked.

Post Script: The above is apparently not the only example.

Small HeadshotThe Explainer is supposed to be a weekly feature on Red Kite Prayer (Pelkey gets sidetracked now and then).

If you have a question related to the sport of cycling, doping or the legal issues faced by cyclists of all stripes, feel free to send it directly to The Explainer at Charles@Pelkey.com. PLEASE NOTE: Understand that reading the information contained here does not mean you have established an attorney-client relationship with attorney Charles Pelkey. Readers of this column should not act upon any information contained therein without first seeking the advice of qualified legal counsel licensed to practice in your jurisdiction.

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110 comments

  1. Fausto's Schnauzer

    I can’t help but remember the incident back in the mid-90′s when Specialized bought up web domain names that were similar to the brand names of their competitors and then linked them to their own site. Someone who’d erroneously gone to for example http://www.xyzbicycles (when the real domain was http://www.xysbikes) would find themselves on http://www.special_ed.com. When the industry called them on their douchebaggery Specialized took down the misleading domain names and explained it all away as being “just a joke.” “Ha ha everybody, we were just busting yer chops.” Right.

  2. SK

    Your F, U, C, K, I, N, and G keys seem to be broken. There a lot of manufacturers who make very nice (road) bikes, nearly all of which aren’t run by shitheads. Vote with your dollar. Don’t like Walmart? Don’t shop there. Don’t agree with Specialized’s politics? Nobody is twisting anyone’s arms to by their schlock.

  3. In the know

    @Fausto: they actually went beyond that, and bought “www.cannondalesucks.com”, “www.treksucks.com”, etc…

    Not to mention the bullying of Mountain Cycle’s Stumptown CX bike, named after that bastion of CX here in the states, Portland aka Stumptown. Home of Stumptown coffee…
    They thought it was too close to Stumpjumper, and MC being quite a small company, was forced to capitulate.

  4. Ian Darling

    I see that the Canadian patent covers bicycles and bike parts. Cafe Roubaix makes their own hand built wheels – called Cafe Roubaix wheels. Would this fall under the reasonable extension of Specialized protecting their patent? I can’t understand the connection to a bike store, but the wheels do seem to have a stronger nexus.

  5. Blair Houghton

    I tried to buy something at Mr. Richter’s website, but for some reason it says he doesn’t ship anything under 4 kg. I’ve sent an email to see if it can be sorted out.

    I have also test-ridden a Specialized Roubaix, and when I returned it I stated to the shop staff that I was convinced Specialized had named it that because it makes every road feel like it’s cobbled. Frankly I’m surprised they’re still for sale.

  6. Diane Lees

    You know what’s interesting? When I see the word “Roubaix” I think of Fuji not that “other” company.

    I think Sinyard bit off more than he is going to be able to chew on this one!

    Great post Mr. P.

  7. JP

    Charles once again it’s the bike that brings us opposite thinking people together. well stated and still love you man.

    Jody Prummer

  8. Peter Lin

    If specialized canada was really interested in doing the right thing, they would pay the cost of renaming “cafe roubaix” to something else. That way, the get to keep their BS trademark in canada and not come across as total jerks.

  9. Khal Spencer

    After reading this article and O’Grady’s post, the only thing I will ever buy with the name Specialized on it is toilet paper. Unless, of course, they back off this bullshit.

    thanks, Charles, for the legal discussion.

  10. Patrick O'Brien

    Thank you Charles for the great explanation. And, thanks RKP for allowing me to read it. Good journalism is still alive.

  11. Devil's Advocate

    While I’m against bullying as much as the next guy, there’s a lot of missed information here. Specialized is protecting their IP in the fact that Cafe Roubaix is selling Roubaix labeled bike parts. If it were just a shop name, that would be one thing but they are just protecting their IP.

    I’m sure most people reading/posting are Patagonia fanboys… create some apparel and name it Patagonia (a south american mtn range, not unlike a territory called roubaix) and see how fast their lawyers tell you to quit. Build a car/truck and name it Tahoe (again, named after a region in California/Nevada) and see how fast Chevy lawyers are up your ass…

    This isn’t new and it’s not isolated to Specialized. Trek Bikes sued a winery for naming a wine Trek Winery in Napa Valley. Nothing to do with bikes, if you’re really bent on bullying, you’ll have to boycott far more than specialized to not be a hypocrite.

    My $.02

  12. Kurt Holzer

    ANother look at what asswipes The big S is being is here. YOu think your generic term need protection, how about a simple license agreement for a nominal fee. Then you could be both “protecting” what little trademark is there and being a complete bully.

    WIn win, after a fashion.

    Corporate lawyers suck

  13. Viper

    The PR damage to Specialized is significant, due to social media. Trademark’s in and the damage is done, as another Canadian, Neil Young, would offer. Is this a PR campaign on behalf of the Mayor of Toronto, Rob Ford, to change the subject from crack?

    Of interest is the main article, from the Calgary Herald, ‘War Vet Forced to Change Bike Shop’s Name After Threat From US Bike Giant, Specialized’; good to see Dan Richter’s military service is both noted, and respected. The first paragraph of the Herald’s article focuses on Richter’s military service. I wonder if this issue was taking place within America, to an American Veteran within a bike shop, if military service would be noted, supported, or even mentioned?

    Good luck to Mr. Richter. Specialized will either dig their cleats in, or quickly reach an agreement with Cafe Roubaix. Lawyers versus logic, let’s hope logic wins, and Cafe Roubaix can carry on with success, and increased sales.

  14. Justin Harris

    Specialized also make an MTB called the Epic launched in about 1989. I’m sure they wouldn’t dare go after the organisers of the Cape Epic (9 day MTB stage race) held here in South Africa since 2004! Too many of the worlds top riders using their bikes in that event!

  15. John Lloyd

    Excellent article. I went online and bought a Cafe Roubaix t-shirt. Hope he sells a boatload of them to finance his legal defense against the Specialized bullies.

  16. Road Holland

    So I ride a Specialized Roubiax and I would have never thought they would claim TM to the town… even more confusing, the bike I owned before was a Fuji Roubiax and as far as I can tell, Fuji still makes that line. So what gives there? Does Fuji not sell these bikes in Canada?

  17. Christian

    My .02$. Why didn’t a Special Ed sales rep just call and politely ask if he would like to sell their brand? Problem solved both parties happy. We’ll we are past that now. Maybe pay your sales reps more and lay off a lawyer to pay 5 more for the year.

  18. Kyle

    I’d suggest that you link this article to the specialized bike reviews posted in your site. Your review of the Tarmac pro was the most comprehensive and led me to the decision to purchase it over other options in its category. What a shameful bunch of punks!

  19. Pingback: Specialized bullies small shop owner over name “Roubaix” | Industrialized Cyclist Notepad

  20. Ron Steers

    They pulled this same stunt with a one man operation from Alaska. Epic designs was making frame bags for bikepacking and specialized pulled the same b.s making him change his name with the threat of a lawsuit. Specialized claimed that “epic designs” would cause customer confusion!!! F- specialized I will never buy another product from them!

  21. Skippy

    WELCOME BACK ! Disappointed that ” lawyering ” has taken you away from your efforts here , for so long ! Best wishes to you & yours for the Festive Season!

    NOW , how the hell does a Canadian Trademark apply to ” Cafe Roubaix “?

    ” Cafe Roubaix “is not ” Roubaix ” , is it ?

    WIll i be sued for using “@iamspecialisedROUBAIX ” , in the near future
    OR
    @skippydetourROUBAIX
    or
    parrabuddyROUBAIX.blogspot.com

    If i had seen this NONSENSE on the “Jimmy fallon late night show ” , i would have said it was a poor piece of comedy !

    Rather than spending money at the shop or contributing here :

    http://www.indiegogo.com/projects/save-cafe-roubaix/x/1340916

    and i am not saying not to do it , in fact if i had spare cash , i would love to tweet @gpmondini ( panto’s team mate , factory/team manager for spec.bikes ) that fact .

    WHAT i would urge is the creation of a ” Change.org Petition ” to the CEO of specialised ! When they see 1 Million Cyclists giving them the bird , i think the CEO , would be making a personal visit for a cup of Coffee ? Hope the door doesn’t hit him as he makes an exit !

    Love your stories about velonews getting the finger for their poor client interaction .

    Whilst on the subject of Petitions , this gets NO HELP :

    https://www.change.org/en-GB/petitions/ioc-chairman-thomas-bach-create-an-international-umbrella-cycling-safety-organisation

    In Queensland state of Oz , there is from the 1st Jan 2014 a 1m safe Pass LAW under 35mph & 1 1/2m over ! Seems that $A4000 cash penalty & 8 points of 12 will result on successful prosecution ! Many states in USA are either doing or wishing to copy . Scotland & England want , but , political shenanigans are foiling this at present .

    WorldWide Cyclists defy Motorists , by daring to assert the right to be treated as Traffic on the roads , yet , many GREAT Initiatives are being either ignored or are not discovered in other countries through the LACK OF COOPERATION !

    So with YOUR Audience , i feel sure you can gain the attention that is needed to see BOTH of these ideas flower ?

    GOOD LUCK !

  22. Alan

    So, will we see Specialized similarly defend the name ‘Enduro’ by sending letters of demand to bike magazines and event organisers featuring the name Enduro? Likewise for Epic? Did they send a letter to the inventor of the Stumpjump plough?

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  25. Alex TC

    Man, this has to be one of the most stupid PR and marketing moves of the… Of the History of Stupid and Poor PR Moves. Spend hundreds of millions in marketing to create and improve corporate image, then screw big playing Goliath for such small, small matter. Big S’s competitors must be rejoycing, does anyone at Specialized Canada live in the social media era or has a clue of its workings?

    Mr. Pelkey made a (IMHO) a basic yet essential distinction between correct and right, something that apparently passed a galaxy away from the senses of Specialized Canada people – and by association Specialized worldwide. And these two simple concepts tell everything that’s needed to be known to judge this case from the market and consumer perspectives: the Goliath going over David will never be a fair fight, and that’s all people will see and take from this case despite the merits.

    Of course it also puts everyone on the side of the little guy, with huge consequences to Specialized. The only good thing from this (beside the lesson hopefuly aplied to Specialized of course) is the advertising this dude got for his bike boutique. I wish he does well!

  26. Noah Sutherland

    Funny, the first thing I thought about when this story came up was its striking similarity to the VeloNews/VeloNet hoohah. I was part of the VeloNet community and, I believe, a VeloNews subscriber. I made my objections clear to VeloNews and was glad to see them back off. I was thrilled and amused to see your recollection of those events from the “other side.”

  27. Larry T.

    Show “Kim Il Sinyard” what you think of his bully-boy tactics! I figured I’d chip in the same amount of dough to the defense fund that I tossed in to fix Padraig’s face AND buy a t-shirt as well. Just think – if the evil pricks prevail the t-shirt will be a collector’s item. Years ago the big-S offered to become an “official supplier” to CycleItalia. I turned them down based on tactics like these. Remember Full Force? How about Volagi? I’m sure there’s more.

  28. Buck Rogers

    Charles! Great story and article! Glad to see ou in print again. You were the only thing that Velonews had going for them. Hope that you are healthy and well and God Save Dan R!!!!

  29. GMa

    Nice article! Can’t agree more regarding despicable bullies.
    Are you aware that Specialized advertises on your home page?

  30. Ron

    just a comment from a Canadian site
    http://www.trademarkcanada.org/Trademark-name-Canada.html

    Can You Trademark a Name That is Currently in Use in Canada?
    Yes. If you wish to trademark a name that is currently in use, even already trademarked, you may do so if the goods and services that this trademark will apply to are unique to the existing name or trademark. For example, you wish to trademark the name Midnight Services and you provide services related to emergency computer repair. There already exists a company and trademark for Midnight Servings, which provides late night food delivery. Although these names are confusingly similar there is no conflict because the two companies offer completely different goods and services.

    the law many be different between the US and Canada so it may be that in fact the shop even their wheels are not in fact infringing.

    Also Specialized could settle this for a nominal fee with the so called infringer realising it was a marginal infringement at best. I think the key point is the potential for confusion. On that point and of course this is bullying,I fully agree with the Explainer.

  31. Simonblaine

    I would love to see the stores that do carry Specialized products maybe stand up for this guy and his tiny little shop, voice their displeasure with Specialized, maybe push their other brands for a little while. After all, it may be them that Specialized comes after next…….

  32. Davo

    I can’t help but draw the comparison with another cycling icon who used his power simply because he could. In the end that icon paid a much higher price than others who did the same thing. Why did he pay a higher price? Because he was a jerk when other people were not. Specialized should take a lesson from Lance.

  33. Jeff Spencer

    A grammar school friend has a small audio cable company. Monster Cable hit him with an intimidating threat of litigation to cease and desist. What Monster didn’t know was that Kurt was a lawyer in a previous life and an experienced litigator. Kurt responded very publicly and has become something of a folk hero in the Audiophile world. Perhaps this David v. Golliath story can offer some guidance. Can we crowd source some pro bono legal help for Cafe Roubaix? Check out the links, read Kurt’s response, it is long and can be technical, but it is brilliant and actually quite funny.
    http://www.audioholics.com/news/blue-jeans-strikes-back
    http://www.youtube.com/watch?v=at-M6v45bXM

  34. Bo L

    Charles, Welcome Back! I hate to say that I have ventured less frequently to this site in your absence.

    Correct me if I am wrong, but I think Specialized had to purchase a licensing agreement with Fuji for the Roubaix in US markets. That said, I don’t see articles about bike companies suing smaller companies into bankruptcy (or near) as often as I do Specialized. Volagi, Stumptown, Epic, and Roubaix? I am guessing that there are more that I am not aware of. I haven’t completely purged my cycle gear cache of big S products, but be assured that when they wear out I will not be replacing them with like-labeled products.

    It seems like a legitimate license-holder can offer a reasonable licensing fee to small companies that want to use a similar name in a dis-similar way. There is not any direct competition here. The only potential for competition is in the wheels, which would only be a problem if Specialized chose to begin manufacturing their own Roubaix-branded wheels for their bikes.

    On that note, Specialized owns a Roval, which has a wheel called “Pave”. I predict another lawsuit surrounding that word to appear sooner or later.

  35. Pingback: An Open Letter to Mike Sinyard | riding against the grain

  36. I'm@ Roubaix

    Good article. I would like to bring some precision that mr. Richter offered to change the name of his wheels and that was arrogantly refused by S attorneys,

  37. In The Know

    Also, I’m fairly sure there were some shenanigans with Stratos Suspension as well, back in the day. Another small company that isn’t around anymore…

    Also, they’re using the “Evo” name on some bikes, and so is Cannondale with their Evo, maybe they should sue someone their own size…

  38. Amanda

    So does this mean that going forward, Spesh will claim trademarks on all of their models, such as the Demo … ? What a joke. It’s shameful that such a large company treats someone within the same industry so horribly. But I guess it’s easier to bully someone who can’t defend themselves rather than pick on someone your own size.

  39. Al Pastor

    My local bike shop apparently was forced to change their name because a chain of bike shops with a similar name opened a store in town. I say apparently because all I have is a story from another local mechanic. Also the fact that Michael’s Bicycles run by a guy name Michael changed the shop name and then went out of business.

  40. Steve O

    Wonder if the town of Roubaix could sue Specialized?

    How the eff is it physically, mathematically, or philosophically okay to register someone else’s name?
    Legally, sure, why not?

    Add me to the list of Big S boycotters. Just threw out 7 water bottles and a pair of BG gloves.

  41. stikman

    Al Pastor…
    out in temecula, there was a long time health food market, called SPROUTS. Years later a much larger chain came to be, and its name became sprouts. Sprouts took over the ‘henrys’ chain and there was a henrys in temecula. I have heard Sprouts corpos sued this little sprouts, to change its name. Rumor has it the local sprouts was paid a million bucks and they changed their name to ROOTS. Did I make any sense?

  42. SusanJane

    What amazes me is Specialized actually decided this whole thing in the first place. What could they possibly gain? I mean really? Would someone actually buy one of their products because of the bad publicity? Would their victory increase their sales out of pity? A tiny bike shop in a small town? Really? Since when does any company get something out of spending money squashing little guys? Moral indignation? Arrogance? Ego gratification? What?!

    I am unfortunately reminded of Disney and their predatory legal actions. I’m not talking boneheaded territorial rights. They go after anyone, anybody, everywhere. If it’s got ears, a tail, and might be a mouse they send in million dollar lawyers. It’s scares the shit out of me. The happy kingdom is built on evil predators who eat anything and anyone. Even satire, folk. No one is safe from Disney. Is Specialized sure they want to go down this path?

  43. Lee Lau

    Thanks for the trademark law geek fest reality check and for debunking the fiction that the trademark system “forces” you to police your mark or you lose. That’s complete bs of course. No-one forces you to be a prick. Specialized chose that path all by itself. The same principle applies in Canada – trademark owners can exercise judgment as to whether or not to police their marks

  44. BusterSci

    Nice job, Charles!
    @iamspecialized stopped tweeting two days ago. Like most bullies, they appear to be cowards, too.

  45. Pingback: Specialized facing social media storm after ‘Roubaix’ lawsuit threat | Sykose Extreme Sports News

  46. Alex TC

    Charles Pelkey says:
    December 8, 2013 at 6:32 pm
    GMa: Padraig’s policy is not to tell writers to change their columns to accommodate advertising concerns. I guess this proves it, eh?

    Integrity. Rarer thangold these days. And a bit ironic in this case, Specialized could well take the lesson contained. Plus, if they’re to back off advertising from online media outlets for every critical piece written about this, they’ll stay out of online media altogether. I couldn’t find a single favourable one, the closest being some forced “neutral” news-type ones, but even on those the comments are overwhelmingly negative. They should be thankful for it, apologize to everyone and pack it up.

  47. Steve O

    Why would specialized drop this site, just because of Charles’ comments? There’s obviously some ill will hear which needs repaired… Which makes this exactly the site they need to advertise on.

    Regardless, I’m done with the brand. Just threw out 7 water bottles and a pair of BG gloves. Nothing worse than a bully. What’s wrong in 7th grade doesn’t become the norm amongst adults unless we allow it to through inaction.

  48. Pingback: Roubaix Squabble - Pallas Athena Bicycles

  49. Arnie

    Charles –
    While, in principle, boycotting Specialized products may be appropriate, what of the LBS that carries S as their main brand? Who will the boycott harm more – the big corporation, or the LBS?

  50. Pingback: The Soul of a Bike | Double the Speed of Wheels

  51. Andre

    Funny thing they can only do that in Canada because here in the US the name ROUBAIX is registered to ASI which owns Fuji and Kestrel Bikes.

  52. SNS

    The law should be such, that you can’t come in 70 or 80 years after a word became part of the sport (and another brand already names a bike Roubaix, not to mention Roubaix fabric products) and trademark it. If that’s the case, then someone should patent a few hundred words to do with cycling … Allez, Peleton, Yellow … Syniard …

    As good as my Tarmac has been to own, I will be looking very carefully at my options when it comes time to replace the Tarmac. Cannondale could be a better option?

    Buy your Cafe Roubaix Bicycle Shop t’shirts now, before Specialized makes them change their name. $30 + $10 shipping … or $125 for a riding jersey if you’re feeling rich. Going to order myself one now.

  53. Garuda

    Damn it spesh, i really liked your shit. Alas, straw on the camels back. Ill have to find a new brand of shoes, helmet, saddle, bartape (admittedly easiest to replace), tires, tubes, short ride shorts, 3rd pair of gloves, bike pump. Damn it all

  54. Tim A

    Not to defend Specialized or anything – they’ve earned all the bad PR they’re getting right now – but does the fact that, according to the local article, Mr. Richter started Cafe Roubaix as a *wheel* brand have anything to do with the lawsuit? I can see Specialized quite reasonably asking him to quit using “Roubaix” on his Chinese carbon wheelsets. Without seeing their letter, it’s hard to say which they’re taking issue with.

    I’m just saying- it may not be as cut and dry as we’d like to think. Still, Specialized just can’t seem to help themselves, can they?

  55. Dan Empfield

    This issue popped up on our reader forum, and when I heard Charles Pelkey opined I had to run over and read. I bow to your expertise and judgment on the merits of this case, tho only to note (speaking as a brand protector) that size does not matter – often goliath is the righteous actor in an intellectual property disagreement. My one slight veer is this: We are issuing waaaay too many fatwas these days. The great social leveling brought by the internet has given us a machete and goddammit what’s the use of having it if you’re not going to wield it. This is not the first time Specialized has gotten out over its skis. Volagi comes to mind. Just, there is a big picture reservoir of goodwill Specialized has built. Ironically, perhaps, no one is more out front in supporting the LBS (as opposed to buying from, say, Amazon) than Specialized. I am proud of Trek, and SRAM and, yes, Specialized, the U.S.-based cycling industry that has built up from zero since I started riding. I think we can gently chide, even embarrass, a marquis, flagship brand without urging consumers to forego its products. Otherwise, why not brands boycotting states because of state laws with which they disagree? How about a searchable database of fatwas, queriable by state, brand, class of product? Otherwise and with that, Charles, you are the man. You have built up a reservoir of goodwill in me. Soldier on.

  56. Souleur

    So, Specialized also owns all ‘tarmac’, so they should also sue trademark to all rallycross as they are constantly referring to their proprietary trademark….
    and they own all stumpjumpers, so my hillbilly stumpjumping neighbors shall never do this again…rather they will be partial-tree hopping hillbilly’s
    and specialized owns ‘crave’ as my buddy recently purchased one, and I cannot now crave without stepping on their TM

    udderly the stupidest thing Specialized could have done

    dare I say, they have idle time in the factory front room????? if they are looking to pick on this stuff

  57. Timothy Fitzgerald Young

    Bullying works both ways when it comes to trademark. In my case, Arianna Huffington and Chipotle Mexican Grill have combined forces to launch a new blog vertical called “Food For Thought” dealing with food politics and sustainability. Great name, only I trademarked it for my organic food business over a decade ago and have also had a blog by that name dealing with the same topics for almost as long. I’ve spent 18 years of my life building this brand to stand for just and sustainable food, and now HuffPost (AOL/Time Warner) and Chipotle can simply suck up all the SEO and banish me to the shadows of the world wide web. My trademark attorney says the same thing. I could win the legal challenge, but where is this small northern Michigan farmer going to come up with six figure numbers to mount the challenge? Despite hundreds of letters from my supporters, both entities continue to ignore me and plod ahead. It’s the lack of ethics that makes me so #*!@!!$%& frustrated. Here are two entities espousing a higher ethic in the way they do business, but as always, actions speak louder than words. Anyone interested can read more about it on my blog. http://www.foodforthought.net/blog

  58. Ransom

    @Tim A, I am all for a calming influence and a deep breath when I start to froth at the mouth over stuff like this, but I can’t help but feel that any cycling company attempting to lay unique claim to the word “Roubaix” is folly at best, but more just cynical and greedy.

    The distinction between shop and wheel names is meaningful, but doesn’t change the fact that the name is a part of the broader sport. I think on top of the concerns already raised about the name belonging to a location and to the history of our sport, beyond even the undue harm to a small business which should also be able to reference our shared lore, I bristle at the S-brand’s attempt to co-opt that lore itself; to make Roubaix a reference to their brand.

    Perhaps at its core, the most maddening thing is that I find it all but unfathomable that they earnestly believe they should be able to own the name, but that thinking they may be able to get away with it is enough to try.

  59. Chris H.

    As an attorney who until recently REALLY liked the lines of the lines of the big S Roubaix and their Source Eleven…get lost Big S. I don’t want anything to do with a company where the law department is empowered or allowed by the CEO to inflict damage on ANY little bike guy, regardless of their legal right to do so. When a mega-bike corp like Big S has lost the faith, natural selection should force them out of business, never again will they get a dime from me.

  60. SNS

    Another online article says that Specialized will be making an announcement later today (monday), which will be interesting.

    Trademarking common industry terminology (‘roubaix fabric’ has been around as long as I can remember, roubaix race for longer) seems wrong. And the practice of big companies taking out questionable trademarks (and patents too), knowing that they’re weak patents, but that nobody can afford to challenge them, is bad karma. (I have read that Fuji took out the trademark world wide, and Fuji’s USA owners bought it in 1998, and licensed it to specialized).

    The open letter to Mike Sinyard on a blog is very well written, and hopefully will get an individual response.

    However, I still look forward to watching the ‘Pair-Specialized’ race in April 2014, it has been a highlight of the cycling calendar for a century.

  61. John P

    There is an easy solution to this issue. Specialized can just licence the use of the name to Dan for a nominal sum ($1 for twenty years). It means Dan is recognizing Specialized’s trademark but it protects them. End of problem unless they think he really is competition. Their trademark is protected and he can legally use the name.

  62. big jonny

    Love ya, Charles, but I disagree with you on this one. I don’t know anything about the applicable Canadian laws (and I’m not going to try to learn it today). But, in the US there absolutely can be a loss of trademark rights through inaction. Where a plaintiff has failed to act diligently in protecting her rights, in not policing her rights, those rights can and will be forever lost. Thus, from a strictly legal point of view, Specializes is acting reasonably. However, from a public relations standpoint, this is a disaster.


    1. Author
      Charles Pelkey

      There is a difference, Jonny, between noting and negotiating a resolution to a potential dilution of a brand and pursuing – or threatening to pursue – litigation. You and I agree on one thing for sure: That this is a PR nightmare for Specialized. It could have been handled differently and none of us would ever have heard of it … or the Cafe Roubaix.

  63. Bob

    Hey!!! Maybe since Harley has an Evo engine, they should sue Specialized for “infringement”. Betcha there are many more that think Harley when hearing Evo that think bicycle….

  64. Lee Lau

    When did the principle cited by Johnny drunk cyclist get bandied around as gospel truth dogma? US – and – Canadian trademark law follow the same principles in the matter of diligently policing your trademark rights. This means things like subscribing to a trademarks watch database, setting up a google search term etc.

    Nothing prevents a trademark holder believing their rights to be infringed from communicating to the alleged infringer and offering reasonable solutions. Nothing requires the trademark holder to act the 300 pound heavyweight. That is purely Specialized’s choice

  65. Robot

    The law is good. The law is great, but the unwritten law “don’t be a dick, just cause you can,” is the one being violated here, and it’s being violated so brazenly that you wonder if they even know…and if they don’t even know…well…

  66. August Cole

    Roubaix. A universally recognized expression of what we all want cycling’s soul to be. It is something that cannot be bought or boxed up. It must be earned. On a bike. It is fitting that the Roubaix bike line keeps leading Specialized again and again, onto treacherous ground with the sport’s die hard fans. It’s as if a voice keeps whispering into some executive’s ear, follow my wheel, heed not the slimy stones and faltering peloton, faster, faster, the forest is so near, into the darkness with me… And they never came out the other side of the Arenberg. Perhaps the name is cursed. Or maybe it is a gift as it is not yet April and we are kept rapt with such glory and folly.

  67. slowride(r)

    This story brings back saying my dad repeatedly told me while growing up, “Just because you can doesn’t mean you should.”

    Visiting the Specialized Facebook page shows that they are losing the public relations battle in a big way. They have thousands of negative comments on this. Hopefully they back down and learn a new way to deal with this because of the backlash.

    I have a Cafe Roubaix T-shirt on order, hope they haven’t run out by the time they get to my order

  68. Mark

    Sometimes there’s an even bigger fish and even big ol’ Specialized won’t go after. Epic is one of the largest, if not the largest, computer Electronic Health Record software manufacturers in the USA. Located in Madison, Wis, you’d think they would be trying to sue or file a C&D against them, but they would actually have to pony up some money, because Judy wouldn’t back down. http://www.forbes.com/sites/zinamoukheiber/2013/05/15/a-chat-with-epic-systems-ceo-judy-faulkner/

  69. bagni

    i love you lawyer boi..this was a nice piece. you’re right….speakthelies has pooped in their chamois on this one. the good news for them? humanoid memories are only good for 30sec to 30days. hand out a few specialized key chains, kiss a few babies on unicycles and they’ll still go back to being close to what?….. a billion dollar company and rolling right along. remember the “full force” line they attempted to put into the mass channel? the industry said the backlash could put em under…..and they did just fine after they pulled the line and said “oops”. since then, they’ve been consistently throwing their weight around for quite some time and are still selling plenty o’ units……

  70. Carl Mega

    So glad Spec is getting their due on this one – long time coming. They lost me long, long ago – probably before but cemented with the Stumptown fiasco. Absolutely will never own one of their products again. Too bad they have some good people working for them but their whole style of “innovation” is predatory.

  71. Mike

    Just bought a Cafe Roubaix T-Shirt to help them out. Will wear it proudly. Hope it helps add a bit to the war chest too. Go get ‘em David!

  72. Souleur

    Nick, i just read that too, and was going to add the same, thanks!

    I think this is now getting a bit funny
    Specialized better start ‘ass kissing’ aka this mornings meeting with risk management @10am, tomorrows meeting may be: @10am HR re:firing lawyers

  73. deb

    What makes it even more blood boiling is the sheer condescension of Specialized in thinking that the bike riding public are just too stupid to not think of Roubaix or even the Paris-Roubaix, either that or their arrogance just knows no bounds and they clearly believe their coincidentally named bike to be any riders point of reference when we hear the word/name Roubaix! They are bullies, unfortunately though, they are consumate, well-experienced bullies. Some day they just gotta get theirs…here’s hoping

  74. Pingback: David vs Goliath: A bike industry story. | The Pondering Cyclist

  75. Pingback: Specialized’s disastrous trademark case is unnecessary to defend the brand « Carbon Fiber Guru

  76. Heinz Mayr PEI

    these are my posts on Cycling PEI
    ==================================
    Heinz Mayr Just goes to show how idiotic this “Trademark Crap” has become. Next thing you know there will be some idiot who puts a “Trademark Claim” on the word “Canada”, and we have to ask some lame-brain in the US-of-A for permission to use the word Canada.
    Yesterday at 9:07am · Like
    Heinz Mayr Just one comment???…..goes to show how little people care what’s going on in this screwed up country!!!
    about a minute ago

  77. Nick

    I thought I had added this additional information but I don’t see it posted so here it is again.

    checking the Canadian pages for this trademark

    http://www.cipo.ic.gc.ca/app/opic-cipo/trdmrks/srch/vwTrdmrk.do?lang=eng&status=OK&fileNumber=1331172&extension=0&startingDocumentIndexOnPage=1

    The trademark for ROUBAIX seems to be associated with bicycle components and NOT a business. So to me that makes this effort by specialized even more ridiculous.

    TRADE-MARK (Word):
    ROUBAIX

    INDEX HEADINGS:
    ROUBAIX

    WARES:
    (1) Bicycles, bicycle frames, and bicycle components, namely bicycle handlebars, bicycle front fork, and bicycle tires.

    CLAIMS:
    Used in CANADA since at least as early as April 06, 2003.

  78. SNS

    Just realized that Specialized have bikes called ‘Allez’, so if I shout ”allez! allez! allez!” when watching the tour (which I’m sure has been shouted since the first Tour a 100 years ago), will Specialized take me to court?

    Trademarking a word that is a cycling word, is stupid. It is NOT like Chevy making a ‘Tahoe’, as they’ve taken a non-car word and brought it into the car world. It’s more like if a car maker tried to Trademark ‘Grand Touring’ 100 years after it became a common term used in the auto industry.

    QUESTION: An article I read yesterday, said Specialized were going to make a statement Monday afternoon, has anyone seen what they’ve said? (I’ve only seen Fuji’s reply).

    This could have been handled so much better. 1) Don’t use a word like Roubaix, when it is already used in the industry and then get pissy when the industry keeps using it 2) If you want to stop someone selling wheels or having a shop with the name Roubaix in it, then include that in the trademark! (not just ‘bikes, tires, handle bars’).

    QUESTION: Easton Bell Sports own the Giro brand, which is a word that was already associated with cycling. I’ve seen some bike brands bring out bikes called ‘Giro’, in reference to the Giro race in Italy, and have never heard of them being taken to court. Does Easton launch in with lawyers like Specialized do?

    For now at least, the s-works shoes and roubaix disc braked bike are off my shopping list. I’d like a ‘cafe roubaix’ sticker to go over the Specialized logo on my Tarmac now too.

  79. Tom

    Charles – I’d be careful to not advertise that you “specialize” in any certain legal realm. The big S radar is hot on you now.

  80. Pingback: Specialized vs Cafe Roubaix: Or the perils of taking on the little man | InspiralInspiral

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  82. M burdge

    Specialized pulled the same stunt with boutique Ti builder Everti Bikes when they were known as Epic Ti. If you are interested in supporting another company that was bullied by team Sinyard, consider a bike from Everti.com.

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