Posted by Jonathan Maus (Publisher/Editor) on March 10th, 2011 at 9:17 am
(Photos © Russ Roca)
Portlander Jude Kirstein, who has spent two years making Epic Wheel Works a successful wheel building business, has decided to change the name of her company after finding out that Specialized Bicycle Components would enforce its trademark rights based on their use of the "Epic" brand.
Kirstein launched her wheel building business in 2009 out of a tiny, 64 square-foot shop in Southeast Portland. Despite a daunting economy and the niche focus of her business, her hard work was starting to pay off. Kirstein recently made her first hire and with a growing customer list, she has long outgrown her tiny space. In a big move for a small business, she plans to move into a new storefront in the coming weeks.
A few months ago, when a lawyer asked if she needed help with anything for her growing business, she politely declined. But the offer stuck in her head because she knew the "Epic" part of her name — which she chose as an homage to a memorable bike ride she took through South America years ago — was also the name of a bicycle sold by Specialized.
"Having to Cease and Desist isn't beneficial for me, it's heart breaking, and will set my business back considerably financially."
— Jude Kirstein, in an email to a lawyer representing Specialized
Kirstein was also well aware that Specialized is vigilant about protecting their trademarks. She remembers when they threatened Portland-based Mountain Cycle with a lawsuit over that company's popular "Stumptown" bike model (they felt it was too close to their "Stumpjumper" brand). She also knew of a small bike bag maker in Alaska formerly known as "Epic Bags" that received a Cease and Desist letter from Specialized. In response, that company decided to change its name to Revelate Designs.
With trademarks and Specialized's formidable legal team in the back of mind, Kirstein decided to be proactive about the matter. In a move she describes as "brave," Kirstein contacted Specialized's legal team to let them know about her company. "I truthfully didn't anticipate there being a problem because I am simply a bike shop for wheels," Kirstein told us.
Although Specialized's lawyers appreciated that Kirstein reached out to them, they replied to her stating clearly that she must stop using the Epic name.
BikePortland obtained emails and letters exchanged between Kirstein and a lawyer representing Specialized.
In a letter dated January 7th, a lawyer representing Specialized wrote:
"... We have come to the conclusion that your use of "Epic" is likely to cause confusion with and/or threaten Specialized's trademark rights... Notwithstanding the small size of your business, Specialized must take action to prevent your continued use of Epic. Without such action, Specialized is vulnerable to loss, or at least narrowing, of its rights in the Epic brand."
this 64 square-foot space in Southeast Portland.
Kirstein said the decision by Specialized was "heart breaking." In an email to the lawyer, she wrote the legal action, "will set my business back considerably financially." Hoping the "Big S" (as the company is known in the industry) might consider a compromise, Kirstein proposed purchasing a lease on the name. Kirstein told them she wanted, "the opportunity to collaborate with Specialized on a mutually beneficial and negotiable solution. I also believe my business, and the intention of my business, is not and has not ever been confused with any Specialized product."
Specialized said they'd be willing to let Kirstein continue calling her business Epic Wheel Works, but only if she'd agree to no longer put the word "Epic" on any of her products. Specialized's concern was confusion. Here's an excerpt from a January 21st letter by the lawyer:
"Such use of "Epic" standing alone on a product is highly likely to create consumer confusion because of the close relationship between a bicycle and, for example, a bicycle wheel. For that reason, Specialized cannot allow the use of "Epic" on bicycle wheels, bicycle components or other bicycle-related products to continue."
Not comfortable with that offer, Kirstein decided to make a clean break from the situation and establish a new name before investing any more into the Epic Wheel Works brand. When she opens her new storefront on N. Williams Avenue in the coming weeks (stay tuned for details on that), her business will be known as Sugar Wheel Works. (Ironically, the new location is in the new building that stands where Kinesis/Mountain Cycle once was before moving to Seattle in 2006.)
In the end, Kirstein will chalk this all up to a learning experience. She's an eternal optimist who has a boundless positive perspective on life and business. Kirstein isn't angry at Specialized and her communication with them (and theirs to her) has been very cordial and cooperative.
"Looking back on all of this," she wrote to us via email earlier this week, "could I have done something differently or ignored the situation? I don't know; but I didn't want to run my business in fear that a large corporation could later claim rights to my name."
— For another look at how a trademark rights case played out between Specialized and a Portland bike company, see our extensive coverage of the "Stumptown Saga" that played out in 2006.