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