What we Learned From the Specialized Trademark Incident
Part 2 – Never Miss an Opportunity to Publicly Scold Your Competitor.
In my last post, I opened a discussion on the Specialized trademark saga, with the goal of highlighting what hard rules, according to the Internet, apply when dealing with a mark infringement issue. Our first take-away point was this little gem: Mark owners who fear infringement must investigate the veteran status of the alleged infringer before sending out a cease and desist letter. The saga teaches us a second rule, which I explain below.
The “Café Roubaix” story took an even weirder turn when the company Advanced Sports International (“ASI”) interceded in the matter. Upon interceding, ASI stated that ASI owned the rights to the mark ROUBAIX and Specialized was only licensed to use the mark from ASI. (This, of course, left me scratching my head how Specialized, as a non-owner of the mark could get a registration in Canada for the mark. Perhaps a Canadian reader can inform, though ASI reportedly indicated the mark was inappropriately registered.) In what must have been embarrassing for Specialized, ASI publicly scolded Specialized for asserting non-owned rights. Further adding a twist to the story was the report that ASI supposedly had no issues with the bike shop owner’s use of the name. If the story stopped here, then this would lead me to offer this clean rule of trademark practice. Make sure before you send that cease and desist letter, you actually own the rights you are asserting. Otherwise, you risk getting publicly scolded by the actual mark owner. If that happens, you have to go on a mea culpa tour and break bread with an Aghan war veteran, like Specialized’s president did. (Genuine plaudits to Specialized’s president for doing so.) But the story does not end there, so I will not offer that piece of advice.
The story that continued indicated that ASI was going to offer a license to the bike shop owner. Whether this is true or not, I do not know. I do know that “offering a license” to someone is only a polite way of phrasing a cease and desist request. To wit, if there is no infringement, then there is no basis for exacting a license. Hmmmm, how is that substantively different from what Specialized did? Sounds like ASI’s public scolding of Specialized involved a bit of corporate fencing. So my take away from this is: Never miss an opportunity to publicly scold a licensee of your trademark if the licensee happens to be a competitor.