Specialized facing social media storm after ‘Roubaix’ lawsuit threat

Specialized is facing a global social media backlash after news broke it is threatening a lawsuit against a two year Canadian bike-shop called Café Roubaix. Specialized owns the trademark for the use of Roubaix on certain cycling products. Café Roubaix produces a carbon wheelset emblazoned with Café Roubaix. Roubaix is a town in France famous in cycling for being the destination of the classic Paris-Roubaix road race.

Cyclists around the world are changing their twitter names in an ‘I’m Spartacus…no, I’m Spartacus’ attempt to protect Café Roubaix. There is also an Australian-based crowd-funding campaign to raise money to help Café Roubaix defend use of its name.

Café Roubaix is also selling far more products from its online store than usual. This is because of the swift, unrelenting and unco-ordinated social media campaign against Specialized. Bill Chidley changed his Twitter name to Bill Roubaix: "If you’re wondering why my twitter name has changed, it’s because @iamspecialized [is] suing a small bike shop."

Journalist Mike Davis is now Mike Roubaix Davis and there are many others changing their names in order to offer moral support. Many of those who have changed their Twitter names say they will be boycotting Specialized until it backs down.

The social media frenzy kicked off when the Calgary Herald reported on the case of Dan Richter, a Canadian veteran of the war in Afghanistan who opened his Café Roubaix shop in 2012. The newspaper story has had 26,000 Facebook likes and 5906 retweets.

Richter told the newspaper he had received a letter from the lawyers of Specialized in Canada some months ago, demanding he change the store’s name because the company owns the Canadian trademark on the word ‘Roubaix’.

Richter claims he didn’t name his store after Specialized’s Roubaix road bike but for the blood-and-glory Paris-Roubaix race.

“It’s been frustrating,” Richter said. “The response throughout this process [from Specialized] has been arrogant and almost unbelievably dismissive."

Larry Koury, managing director of Specialized Canada Inc., said the company was defending its legally-owned trademark: “We are required to defend or lose our trademark registration.”

This is a reference to US "defend it or lose it" law which states that trademark owners are in breach of their trademark agreements if they don’t defend their marks. (‘Defend’ doesn’t necessarily mean ‘launch a lawsuit’, it could also mean brokering a friendly agreement between parties to prevent "confusion"). US and Canada share trademark treaties.

Attorney Charles Pelkey on Redkiteprayer said: "The US Patent and Trademark Office appears to be annoyed at [bullying] behaviour. 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.’"

In its report, the Patent and Trademark Office said 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.’”

Specialized’s Facebook page is attracting a great many negative comments, with many of the company’s recent postings being used by Facebook members to attack Specialized for its stance over the town and bicycle race name of a small Canadian bike shop.

The Roubaix name was originally trademarked in 1992 by Toshoku America Inc, then connected with Fuji bicycles. Fuji still markets Roubaix-branded bicycles.

A trademark attorney wrote at the time: "It is unlikely that a significant number of the American population would know that Roubaix, France is the location of a well-known annual bicycle race."

Specialized has owned the trademark in Canada since 2007. The protection applies to "Bicycles, bicycle frames, and bicycle components, namely bicycle handlebars, bicycle front fork, and bicycle tires." But not specifically wheels or shops although it could be argued that linked products count. To fight Specialized would cost $150,000 Richter has been told.

Roubaix is also the brand name for a fleecy stretch fabric by MITI of Italy, long used by cycling companies such as Endura and many others.

According to lawyer James Moss of Recreation Law, one potential get-out for Specialized might be to allow Café Roubaix to licence the use of the name for cycling products and for the licence fee to be a nominal low amount per year.