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oh, no you can't
in 2009, i paid my first visit to portland's fair city, during which i had the good fortune to visit a number of cycle practitioners in some of the more obscure corners of the town. one of those with whom i was keen to make contact, was a young lady by the name of jude kirstein (now jude gerace), who had only recently commenced with a wheelbuilding business entitled epic wheelworks. her workshop (and i use the term in its loosest sense) was scarcely any bigger than the elevator in which we reached her first floor premises. though she had a wide array of the componentry required to build wheels, along with a workbench on which to carry out her skilled practice, with three of us in the room (chris distefano was my tour guide), there was very little room to move.
jude had spent the weeks and months leading up to opening the business and staking her claim within portland's burgeoning cycling culture, by visiting those whose work she admired, determined to learn as much as possible. the built wheels sitting under the window sill were testament to her ability to learn quickly.
however, only a few weeks following my return to civilisation, i learned that she had been served with a cease and desist order from the legal department of specialized bicycles. it transpired that they had registered the word epic as a trademark, and took exception to her adoption of the name for a wheelbuilding concern. i confess this seemed particularly heavy-handed, considering the extreme unlikelihood of anyone confusing her broom cupboard of a workshop, with one of the world's largest bicycle manufacturers. however, well aware of her meagre resources, both legal and financial, in comparison to those possessed by specialized, she capitulated and altered the name of her wheelbuilding to sugar wheelworks, an enforced change that winningly provided not only a better name, but a far better logo in the process.
i can understand her disinclination to take on the might of the merida-owned cycle behemoth, but it seems quite possible that she would have won her case. for starters, her epic logo differed greatly from any use specialized had made of the word and it seems highly unlikely that anyone would confuse her handbuilt wheels with that of a carbon bicycle, particularly when specialized's own wheel brand is known as roval. and though i believe it pertains solely to legal matters in north america, the reliance of the judiciary upon the so-called dupont factors would appear, from my cursory investigations, to have sided in her favour. of course, it's now all water under the bridge, but the big boys seem still to spend what might be considered an inordinate amount of time worrying about potential trademark infringement.
the most recent case of which i'm aware, this time concerned the other manufacturing monolith, the trek bicycle company. an application to register ranger trek as a trademark for use on products (not bicycles) sold throughout america's national parks had been challenged by trek bicycles on the basis that they too sold backpacks, sports bags and the like, and there was a high possibility of the two being confused by potential customers. however, the trademark trial and appeal board, upheld the ranger trek registration after careful consideration of the previously mentioned dupont factors, a link to which i have posted below in case you're as intrigued as was i.
the applicant for the ranger trek trademark, having spent the past six years defending her application, has stated that had she realised trek bicycle was likely to be quite so belligerent, she'd never have included the word 'trek' in the first place.
it turns out that trek bicycle ranks at number four on a list of trademark bullies, sitting in line behind kellogs, apple and monster energy. legal experts have explained that trek has to continually to protect its trademark due to the common use of the word in many different situations. it reminds of mick and andy at prendas who, after years of research, offered a reproduction of the colnago casquette as worn by wesley snipes in the movie 'white men can't jump'. only a matter of days after placing it online, colnago came a calling with their own cease and desist order.
somewhat naive and confused about the situation, i contacted windwave, the uk colnago distributor, to enquire as to what the problem might be? surely the worst that could happen was that more people bought a colnago? the qualifying response pointed out that, while colnago had no particular problem with the prendas cycle cap, if they were seen to grant clemency to mick and andy, it could prejudice any future situation where more serious infractions of trademark law could prove harder to defend based on their previous leniency.
it's a funny old world.
thursday 23 november 2023
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