I won't be thinking of buying anything from Specialized...

ddraver

:P :P

Hockey players, just.....you know?

RichN95.

whiteboytrash wrote:

Perhaps leave this to those proficient in trademark law rather than a 7 minute fumble on a Google, yes?

Out of depth, I'd say so.

OK. I've worked for the Intellectual Property Office for 18 years.
How about you?

ddraver

As the Aussies' would say (accent) Don' Argue...

Yellow Peril

whiteboytrash wrote:

RichN95 wrote:

whiteboytrash wrote:

Smart guy.

And that's why they registered it in Canada as well.

http://www.cipo.ic.gc.ca/app/opic-cipo/ ... exOnPage=1

The rule will apply. They have to enforce the trademark.

And Canadian law will apply to that mark, not US law.
No right holder is going lose their right if don't sue everyone. That only happens if they neglect the mark entirely and it falls into common usage.
And in this case, due to the strong prior connection between the mark and cycling they would have to show a level of confusion on behalf of the consumer, which is unlikely.

Perhaps leave this to those proficient in trademark law rather than a 7 minute fumble on a Google, yes?

Out of depth, I'd say so.

Are you a trademark lawyer WBT? I may be wrong but I think Rich is something to do with patents or suchlike

afx237vi

What we need is someone who has gone to law school and specialized in trademark law... but we can't, cos Specialized owns 'em all.

PS: it's f***ing Specialised.

whiteboytrash

Yellow Peril wrote:

whiteboytrash wrote:

RichN95 wrote:

whiteboytrash wrote:

Smart guy.

And that's why they registered it in Canada as well.

http://www.cipo.ic.gc.ca/app/opic-cipo/ ... exOnPage=1

The rule will apply. They have to enforce the trademark.

And Canadian law will apply to that mark, not US law.
No right holder is going lose their right if don't sue everyone. That only happens if they neglect the mark entirely and it falls into common usage.
And in this case, due to the strong prior connection between the mark and cycling they would have to show a level of confusion on behalf of the consumer, which is unlikely.

Perhaps leave this to those proficient in trademark law rather than a 7 minute fumble on a Google, yes?

Out of depth, I'd say so.

Are you a trademark lawyer WBT? I may be wrong but I think Rich is something to do with patents or suchlike

Patents are vastly different from trademarks.

There's good reason for the maintaining of rights. It's stops people (with money) hoarding names and never using them for purpose.

ie in the cycle industry there's not a billion names one can possibly use. You don't want some middle eastern oil magnate buying up trademarks all over the world and never using them. Except to sue for money.

In saying that there is a valid market in trademark buying and selling.

Bike shop owner is also within his rights to sue Specalized as well. He has equal access to he law.

But he has one problem. He didn't trademark the name himself. Which he should done for his wheelsets and cafe.

By doing that a) there would have been a search conducted and noted that a trademark pre-existed and b) given him time to pause to think maybe he should call the cafe "Flanders"?

Searching trademarks is free.

5 minutes could have saved him a lot of heartache.

whiteboytrash

RichN95 wrote:

whiteboytrash wrote:

Perhaps leave this to those proficient in trademark law rather than a 7 minute fumble on a Google, yes?

Out of depth, I'd say so.

OK. I've worked for the Intellectual Property Office for 18 years.
How about you?

Perhaps time for a new career? :shock:

I jest. But you should be well aware of maintaining rights. Along with the fact the bike shop man didn't trademark his shop/wheelset name in his own country.

That is basic admin.

I'm sure that's what you'd tell anyone coming into your ufficio seeking such advice, yes?

rayjay

WBT "Searching trademarks is free.

5 minutes could have saved him a lot of heartache"

I agree.

But still it was no big deal and really does not effect SpecialiSed in anyway.

But both sides have now got some show time out of it.

Does it ever make you wonder?

whiteboytrash

rayjay wrote:

WBT "Searching trademarks is free.

5 minutes could have saved him a lot of heartache"

I agree.

But still it was no big deal and really does not effect SpecialiSed in anyway.

But both sides have now got some show time out of it.

Does it ever make you wonder?

Yes and No.... But agree, Spesh should just sit down with the dude and sort it out. But legal counsel need to rack up some billable hours.

In all fairness by law Speclized have to send a letter out per the pre-action protocol. It's looks scary but they have to clearly indicate they believe there is a dispute.

If this guy was a former Enron exec or a drug mule stripper I don't think anyone would care. But war vet, small business owner tugs at heart strings. (Insert photo of fluffy kitten)

But as I said. The threat is not so much this guy. It's the threat that the name "Roubaix" loses its rights and another company trademarks it for their new bike brand or what have you.

Fading memory but the RollerBlade company and Inline skating was very similar. Rollerblade was the company and in-line skating was the sport. But once it hit popularity everyone just called it "rollerblading" - so who owns the trademark now? Similarly with "Kleenex" etc.

If the name is still in use and pivotal to your brand and sales then hold on to it and defend it like crazy. (See apple).

Remember not so long ago Speclized was a small company with one shop.

mididoctors

conversely 5 seconds of thinking by specialized may have lead them to the realisation that trying to own the brand "Roubaix" is the act of a massive asshat.

I find it hard to accept the underlying ridiculousness of this world.

frenchfighter

Regardless of what wbt has said on other threads many of his points are valid. Yes it is a bit of an emotional story...if the guy sold guns to gangsters would you be so damning? Im sure Spec. wouldnt have known much about him...ppl's jobs exist to search names infringing copyright and pursue it. Agreed on silliness of copyrighting Roubaix but sometimes your name is everything to the existence of your company. Apple made a similar action against a lady whose shop had an apple on it I think. He has only been going six months...if he makes a slight change to the wording (which is a mouthful anyway) its not a big deal.

If you want to be an ethical consumer may I suggest you find out about the practices of many high street and leading brands which affect the lives of thousands. Or join Avaaz and see some cases worth supporting.

mike6

I suspected WBT was a troll, now it is confirmed. The posts on threads that have been running are jumped on, the prevailing drift of opinion judged, and the opposite stand taken. I rest my case.

I'm out, another thread ruined by multiple posts saying the same thing. "You are "ALL" wrong and I am right.

tailwindhome

http://www.lettersofnote.com/2013/07/it ... thing.html

TheBigBean

I came across a story recently of someone trying to create a brewery in Wimbledon.He wanted to call his beer Wimbledon Beer or something like that. The All England Lawn Tennis Club promptly took him to court to prevent this. Fortunately, he was able to pay for a defence and won, but nonetheless I don't understand this business of trying to trademark places. It is silly. Now, if he called it AELTC beer I would be sympathetic to AELTC.

Also, the Olympics cracked down on all mentions of London 2012.

fleshtuxedo

The root of the problem is that specialized were able to copyright the name in the first place. It's absolute boll**ks that they are allowed to trademark the name of a French town. What gives them the right? The town existed for centuries and the race bearing it's name was built up over more than a century so the name is in the public domain. Spesh have no ethical right to stop anyone else from using the name.

It's like Budweiser trying to stop Budweiser Budvar using the name (even though it means from the town of Budweis, which budvar is and Budweiser isn't) and budvar used it first, or Monsanto trying to trademark the name "basmati" as if a centuries old name in another language is something you should be able to buy.

Scumbags, the lot of them.

Macaloon

TailWindHome wrote:

http://www.lettersofnote.com/2013/07/its-real-thing.html

worthy.

ratsbeyfus

Macaloon wrote:

TailWindHome wrote:

http://www.lettersofnote.com/2013/07/its-real-thing.html

worthy.

Great link - thanks for sharing!

rayjay

http://www.hbstache.com/ProductDetails. ... _Mens-Grey

whiteboytrash

FleshTuxedo wrote:

The root of the problem is that specialized were able to copyright the name in the first place. It's absolute boll**ks that they are allowed to trademark the name of a French town. What gives them the right? The town existed for centuries and the race bearing it's name was built up over more than a century so the name is in the public domain. Spesh have no ethical right to stop anyone else from using the name.

It's like Budweiser trying to stop Budweiser Budvar using the name (even though it means from the town of Budweis, which budvar is and Budweiser isn't) and budvar used it first, or Monsanto trying to trademark the name "basmati" as if a centuries old name in another language is something you should be able to buy.

Scumbags, the lot of them.

Yes that's true to a degree. You can't trademark geographical places.

However they were able under the condition of North America only for Roubaix. Outside of Europe and the cycling world what is a Roubaix? People conceivably don't know what it is so they nabbed the name for the price of the submission.

"I love NY" tshirts are for the taking.

The Budvar example is good. Apple Computer had a trademark agreement with Apple Music that they could use the Apple name as long as not for music production. Apple Music was first with the Beetles. Apple Computers and music was never going happen, right? Then 20 years later along comes the iPod, then Apple start selling music through iTunes! Who would have thought!? Apple Music rightfully took Apple Computer to court. (In this instance they came to a nice compromise)

I agree with all of you. Specalized are making a hash of this ....buuuut... Specalized spent 30 years building a brand, investing in their company, taking risks and hiring people.

So why shouldn't they protect the name?

Nevertheless. If I was Bike Shop man I'd claim the French-Canadian route. Claim he didn't trademark the name because 51% of Canadians speak French. And they would associate the shop name with the French town per their language set and not Specialized bicycle company.

Someone send this to him and a bill for my time.

whiteboytrash

mike6 wrote:

I suspected WBT was a troll, now it is confirmed. The posts on threads that have been running are jumped on, the prevailing drift of opinion judged, and the opposite stand taken. I rest my case.

I'm out, another thread ruined by multiple posts saying the same thing. "You are "ALL" wrong and I am right.

I don't see anywhere whereby I've said anyone is wrong. Or that I'm right.

In fact no one is right or wrong.

Trademark law generally comes down to interpretation.

As I said any two-bit startup business always checks trademarks before choosing a name. It's free and simple to do.

There's no place in law for ignorance.

Let's put another spin on this.

Say a cafe / bikeshop opens up in the UK and calls themselves Sky. Do they have a right to the name? Considering its a genetic description for part of the atmosphere. Or could the Sky Cycling Team take them to court?

You see neither party would be right or wrong but one would win at the end of the day. Unless they came to a compromise.

mroli

There's some good stuff on here too:

http://www.l-13.org/acatalog/L-13_Latest_Works.html You need to go about half way down the page to read the letters from Universal Music. Odd stuff.

James Cauty did a load of piss-taking with his art work as well - and the setting up of the Cautese National Postal Disservice. Got himself into a load of trouble with the Royal Mail:

http://www.theguardian.com/uk/2003/jun/04/post.artsfeatures

I think he successfully argued that he had not in fact used the Royal Mail image, but another image that just happened to look like the Royal Mail image, to which he was not copyright restricted (after making a tweak or two).

Some of his stuff is here: http://www.l-13.org/acatalog/JAMES_CAUTY_DESIGN_SOLUTIONS__UK__LTD.html

RichN95.

whiteboytrash wrote:

Let's put another spin on this.

Say a cafe / bikeshop opens up in the UK and calls themselves Sky? Do they have a right to the name? Considering its a description of part of the atmosphere? or could the Sky Cycling Team take them to court?

It's extremely unlikely that BSkyB own a trademark which is simply the word Sky. They will have phrases such as Sky Sports, Sky+, etc and logos. But not blanket use of the word. There have been plenty of Sky related trademarks before they came along. (There was both a band and a magazine in the 80s for example).

If they took action against a theoretical bike shop it would more likely be on the basis of passing off than a trademark case.

LutherB

mroli wrote:

....James Cauty....

Is that James Cauty from The JAMM'S & KLF? I remember ABBA suing the JAMM'S for the 'Dancing Queen' sample on their album whilst i was working at Rough Trade.

TheBigBean

RichN95 wrote:

whiteboytrash wrote:

Let's put another spin on this.

Say a cafe / bikeshop opens up in the UK and calls themselves Sky? Do they have a right to the name? Considering its a description of part of the atmosphere? or could the Sky Cycling Team take them to court?

It's extremely unlikely that BSkyB own a trademark which is simply the word Sky. They will have phrases such as Sky Sports, Sky+, etc and logos. But not blanket use of the word. There have been plenty of Sky related trademarks before they came along. (There was both a band and a magazine in the 80s for example)

It can still just come down to interpretation. Consider the following:
1. Blue Sky Cafe
2. Sky Cycling Cafe
3. Blue Sky Cycling Cafe

I imagine 1 is fine, 2 is definitely not fine and 3 requires an argument. All of which is different from using a place in France.

RichN95.

TheBigBean wrote:

It can still just come down to interpretation. Consider the following:
1. Blue Sky Cafe
2. Sky Cycling Cafe
3. Blue Sky Cycling Cafe

I imagine 1 is fine, 2 is definitely not fine and 3 requires an argument. All of which is different from using a place in France.

2 is much worse than 3. "Blue Sky" has no real connotation with Sky.

Edit: I see you've edited. So ignore that. We now agree.

whiteboytrash

RichN95 wrote:

whiteboytrash wrote:

Let's put another spin on this.

Say a cafe / bikeshop opens up in the UK and calls themselves Sky? Do they have a right to the name? Considering its a description of part of the atmosphere? or could the Sky Cycling Team take them to court?

It's extremely unlikely that BSkyB own a trademark which is simply the word Sky. They will have phrases such as Sky Sports, Sky+, etc and logos. But not blanket use of the word. There have been plenty of Sky related trademarks before they came along. (There was both a band and a magazine in the 80s for example)

I know. It's just an example of what could happen and how would one delineate between the rightful owner of the trademark.

Interpretation.

Even just Sky and selling bikes is close enough for a trademark dispute.

Would the public be confused between the two? Perhaps? It could be argued that way, certainly.

Trademarks do not need to be an exact match for there to be a dispute.

Imagine if that same bike shop had Sunday bike rides? And on the same day as a SkyRide! Then what?

See now these things because most confusing.

It's a fascinating discussion. Lawyers tear their hair out trying to find ways to defend trademarks or assert rights to names that in a practical sense should be generic.

Could Paris Hilton trademark her brands of perfumes?

Nevertheless. Charles Pelkey has a nice write up here: http://redkiteprayer.com/2013/12/the-ex ... e-bullies/

Although I do think "bully" is the wrong word. Tut tut.

RichN95.

whiteboytrash wrote:

I know. It's just an example of what could happen and how would one delineate between the rightful owner of the trademark.

Interpretation.

Even just Sky and selling bikes is close enough for a trademark dispute.

Would the public be confused between the two? Perhaps? It could be argued that way, certainly.

Trademarks do not need to be an exact match for there to be a dispute.

Imagine if that same bike shop had Sunday bike rides? And on the same day as a SkyRide! Then what?

See now these things because most confusing.

That's probably more a question of passing off than trademark infringement - they're different things although obviously similar.

TheBigBean

RichN95 wrote:

Edit: I see you've edited. So ignore that. We now agree.

Wow you're very quick! My mistake must have been up for about 15 seconds.

whiteboytrash

LutherB wrote:

mroli wrote:

....James Cauty....

Is that James Cauty from The JAMM'S & KLF? I remember ABBA suing the JAMM'S for the 'Dancing Queen' sample on their album whilst i was working at Rough Trade.

Although that's copyright not trademark.

Suede the band in the UK had a trademark or naming rights dispute in the US with smokey room jazz singer by the same name.

In the US they were forced to change their names to The London Suede. Caused them great expense in legal fees and changing marketing material etc.

LutherB

whiteboytrash wrote:

LutherB wrote:

mroli wrote:

....James Cauty....

Is that James Cauty from The JAMM'S & KLF? I remember ABBA suing the JAMM'S for the 'Dancing Queen' sample on their album whilst i was working at Rough Trade.

Although that's copyright not trademark.

Suede the band in the UK had a trademark or naming rights dispute in the US with smokey room jazz singer by the same name.

In the US they were forced to change their names to The London Suede. Caused them great expense in legal fees and changing marketing material etc.

Indeed it is/was copyright. Had to destroy the album pressings i think, can't remember what it was called now, thought it had the classic 'Whitney Joins The JAMM's' on it - quick search & it was '1987 (What the Fuck Is Going On?)'

'The London Suede'!!