While threatening legal action may be an effective way to protect trademarks, it may be equally as effective at igniting social media disaster in which thousands of loyal customers (and potential ones) are at stake.
Late this summer, Specialized sent a cease and desist order to Canadian bike-shop owner Dan Richter to tell him to stop using the name “Roubaix” for his shop and custom-made wheels.
While Specialized owns the trademark in Canada, it is also a town in France known in the bike community for hosting the 117-year-old Paris-Roubaix race, which is where Richter was first inspired to use the name.
The letter was first sent to Richter late in the summer and he has only recently decided to go public with it. Shortly (as in within hours) of doing so, a social media whirlwind ensued. Let’s take a look at what happened.
2007 – Specialized’s trademark for the word “Roubaix” gets approved in Canada
2012 – Dan Richter Medically Released by Canadian Army with PTSD at the rank of Captain
Spring 2013 – Richter Opens Café Roubaix (named after Roubaix, France)
Summer 2013 – Richter Receives Cease and Desist Letter from Ontario law firm representing Specialized
December 7, 7:36 AM – Tom Babin of The Calgary Herald Publishes Interview with Richter
December 7, 8:20 AM – Brad Sohner, popular race announcer Tweets with link to Herald story
December 7, 11:59 PM – By day’s end, there have been over 6,161 Tweets mentioning @iamspecialized
December 8 – More Articles have gone viral
December 8 – Specialized’s Wikipedia page gets updated to include a new item under “Litigation”
December 9, 8:04 AM – Richter announces that “we are now back in discussions with the other party”
December 8, 11:59 PM – Every recent post on Specialized’s Facebook Page has a fan-written comment with links to the Calgary Herald article. Removing comments is futile at this point as hundreds of people are posting links to the article
December 10 – 12:02 PM (CST) – Richter announces “things will be working out fine” after Specialized relents and agrees to license the name for use by the shop.
“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,” Pat Cunnane, the CEO of ASI, told Bicycle Retailer and Industry News.
We imagine that this series of events will be long studied by brands navigating the murky waters of social media crisis management and how not to fall out of favor from fans.
—Yoon Kim
