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What Impact Can Social Media Have on a Trademark Dispute?

Posted in Infringement, Mixed Bag of Nuts, Social Media, Trademark Bullying, Trademarks

Social media weighs in on the dispute over use of the mark ROUBAIX in connection with bicycles.  A lawsuit was brought by Specialized Bicycle Components, Inc. (“Specialized”) who owned the registration for the mark in Canada against Dan Richter.  Mr. Richter operated the Café Roubaix Bicycle Shop and sells a Café Roubaix wheel and rim.  Social media picked up on the story focusing on Mr. Richter being a veteran of the Afghanistan war and bashed Specialized.  Bicycle enthusiasts raised money for Mr. Richter’s defense of the lawsuit and lawyers offered to represent him for free.  Twitter followers sought to boycott Specialized.

Advanced Sports International (“ASI”) puts an interesting “spoke” into this bicycle wheel trademark dispute.  Specifically, ASI asserts that it has worldwide rights to the ROUBAIX mark in connection with bicycles.  I note that ASI owns the United States trademark registration for the ROUBAIX mark in connection with “bicycles” in International Class 12 at U.S. Registration No. 1,686,272.  Further, Specialized licensed use of the ROUBAIX mark from ASI.  It will be interesting to see how the dispute with Mr. Richter affects the relationship between ASI and Specialized.  Will the improper (according to ASI) registration for the mark in Canada be transferred to ASI?  Will ASI no longer allow Specialized to use the mark?  Will ASI require notification before Specialized attempts to police the mark again?

As for the veteran bike shop owner, it was reported by Bicycle Retailer and Industry News that he could continue to use the Roubaix name A spokesperson for ASI stated that he did not believe the bike shop owner was trying to confuse consumers that his bike shop or wheels were associated with ASI’s ROUBAIX road bike.  Indeed, he did not believe consumers would be confused.  ASI was going to license use of the trademark to the bike shop owner.  Query whether the same result would have occurred without the social media backlash.

Social media is here to stay, so we will likely hear about more cases like this one where trademark rights are at the forefront of a Twitter battle or even a boycott.  Will social media be a tool for others to “police” trademark owners who actually overreach?  Will social media be unfairly used to blacklist and disparage innocent trademark owners who are merely trying to legitimately protect their valuable trademark rights?  Will legitimate trademark owners cave to boycotts and bad press resulting in a loss (or narrowing) of their valuable trademark rights?  I hope not.  Should these disputes be decided by judges, Examining Attorneys, the Trademark Trial and Appeal Board and others tasked with determining trademark rights?

Are you aware of other cases where social media has played a part in affecting a trademark dispute?  You may recall the media blitz and boycott against Chick-fil-A’s efforts to prevent federal registration of “Eat More Kale” based on Chick-fil-A’s “Eat Mor Chikin” tagline and trademark.  I am sure that this is not the last time DuetsBlog will comment on social media taking on overreaching trademark owners or hammering an innocent trademark owner’s legitimate enforcement efforts.