Must Read: Fuji owner says Specialized overstepped in Roubaix case
The owner of the U.S. trademark for "Roubaix" says it is in discussions with Specialized over its warning to a Canadian merchant
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ASI says Calgary bike shop can use Roubaix name — Bicycle Retailer
The CEO for Advanced Sports International, the firm that owns Fuji Bikes and holds the trademark for the term “Roubaix” in the United States, told Bicycle Retailer’s Steve Frothingham on Monday that Specialized lacked the authority to pursue a trademark case against the owner of a small bike shop and wheel-building operation in Alberta, Canada.
News broke last weekend that Specialized had served Daniel Richter a cease and desist order over his use of “Roubaix” in the branding of custom wheels that he builds for his shop, Café Roubaix. Specialized holds the trademark for “Roubaix” in Canada and licenses the mark from ASI in the U.S.
“We have reached out to Mr. Richter to inform him that he can continue to use the name, and we will need to license his use, which we imagine can be done easily,” ASI’s Pat Cunnane told Bicycle Retailer in an e-mail.
“We are in the process of notifying Specialized that they did not have the authority, as part of our license agreement, to stop Daniel Richter … from using the Roubaix name,” Cunnane wrote. “While ASI does have the authority to object to Mr. Richter’s use of the name and while we at ASI understand the importance of protecting our bicycle model names, we believe that Mr. Richter did not intend for consumers to confuse his brick-and-mortar establishment or his wheel line with our Roubaix road bike. And we believe consumers are capable of distinguishing his bike shop and wheel line from our established bikes.”
Late Monday, Café Roubaix posted a message of gratitude for the outcry over the Specialized move, and claimed to be in discussions over the issue: “We can announce that your voices have been heard. We are now back in discussions with the other party (Specialized). We are aware of recent announcements by third parties within the industry.”
Specialized has not responded to VeloNews’ request for comment.