BOULDER, CO (BRAIN) — Specialized Bicycle overstepped its bounds when it registered the Roubaix trademark in Canada and then tried to prevent a Calgary retailer from using the name, Advanced Sports International’s CEO told BRAIN on Monday.

ASI says it owns the worldwide rights to the Roubaix trademark — it’s had a Fuji Roubaix road bike model in its lineup since 1992 — and has licensed it to Specialized since 2003. ASI’s Pat Cunnane said the company has no problem with retailer Dan Richter using the name on his store, Cafe Roubaix.

“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,” Cunnane said.

Richter told the Calgary Herald this weekend that lawyers representing Specialized told him he had to rename his store and transfer its website’s URL to Specialized. Besides the store, Richter sells Cafe Roubaix-branded wheels. The general manager of Specialized Canada told the Herald that Specialized had to protect its trademark or risk losing it. Specialized’s U.S. office has not commented on the situation, despite negative press and an outpouring of support for Richter over the weekend on social media.

Cunnane said his company left a message for Richter but has not communicated with him yet. Cunnane also said he has reached out to Specialized with no response yet.

“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 said in an email to BRAIN. “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.”



According to the Canadian Intellectual Property Office, Specialized registered the Roubaix name in 2007 for use on “Bicycles, bicycle frames, and bicycle components, namely bicycle handlebars, bicycle front fork, and bicycle tires.”

But Cunnane said that registration was “inappropriate.”

“Like many trademark owners, ASI does not register its trademarks in every country and never tried to register the mark in Canada. ASI only recently learned of Specialized’s registration of the Roubaix trademark in Canada and ASI’s position is that Specialized’s registration of the mark in Canada was inappropriate under the terms of their license agreement. ASI has used the mark in Canada for well over 10 years, giving it first-use trademark rights in Canada.”

In a phone call, Cunnane noted that ASI has been able to reach amicable agreements with several other brands over trademarks. For example, ASI owns the U.S. rights to the name Gran Fondo for use on bicycles, while BMC owns the rights in Europe. The two brands have a co-existance agreement to share the name in both markets.

Besides Fuji, ASI owns the Breezer, Kestrel and SE Bikes brands.