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ASI, Specialized and Cafe Roubaix in ‘complete alignment’ over trademark

Published December 13, 2013
Happy Christmas, war is over.

PHILADELPHIA, PA (BRAIN) — The dispute seems to be concluded, quietly, over use of the “Roubaix” trademark on bicycles, which involved two U.S. bike brands and one Canadian retailer and wheel vendor.

Citing a confidentiality agreement, the CEO of Advanced Sports International declined to disclose details of an agreement between his company, Specialized and Dan Richter, the owner of Calgary’s Cafe Roubaix store.

“The three of us are in complete alignment on the use of the Roubaix trademark,” ASI president and CEO Pat Cunnane told BRAIN on Friday.

Cunnane said ASI"s position has not changed since he told BRAIN on Monday that ASI owned rights to the Roubaix trademark, which it has licensed to Specialized since 2003. Cunnane said it was “inappropriate” for Specialized to have registered the mark in Canada, and that ASI had no issues with Richter’s use of the name.

Meanwhile, Specialized president and founder Mike Sinyard has made peace with Richter and has dropped at least one other pending trademark dispute.

In an open letter to the industry Sinyard published on the Specialized Facebook page, he apologized for the dispute, which he blamed on increased concerns over counterfeit Specialized products on the market. He also said Specialized would not pursue action against Epix Gear, a clothing brand. Specialized had contacted Epix earlier this month in an effort to enforce its trademark rights over the word “Epic,” a Specialized bike model.

“I screwed up, and I own it,” Sinyard wrote. “I would like to apologize and let everyone know I realize I handled this situation wrong from the start and I’m very sorry for that.”

Sinyard promised that in the future Specialized will only take action on trademark violations “that present a clear and obvious danger.”

“I realize now that we went too far with this aggressive approach and as a result and in some cases we hurt the local bikes shops and small businesses we wanted to protect. As a result we’re going to take a much closer look at all pending and future intellectual property and trademark issues, making sure to only pursue those that present a clear and obvious danger. The letter on Epix Gear was issued before the Café Roubaix story broke and has since been pulled.”

As for Richter, he wrote on the Cafe Roubaix Facebook page that he his happy with the outcome.

“Mike's comments in regard to Café Roubaix Bicycle Studio are bang on. From our negotiations that were finalized when Mike made trip out to see us, we gained an understanding of the why and how, and accepted Mike's apology from himself and the Specialized family,” Richter wrote.

He also said that his shop was struggling to deal with the outpouring of support during the dispute, support that was often expressed in the form of orders for shop T-shirts and cycling jerseys.

“We are still pedaling squares with all the orders and contacts, etc, but we will be doing our best to get all the orders shipped out! Right now, we are waiting for a bulk order of padded envelops to mail t-shirts and jerseys that have been ordered.”



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