(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.
If you have questions or feedback about this site or my work, feel free to contact me at @jonathan_maus on Twitter, via email at firstname.lastname@example.org, or phone/text at 503-706-8804. Also, if you read and appreciate this site, please become a supporter.
Christ, what *******! They should be so lucky to be associated with a quality business like Epic Wheel Works. Hope the bad PR teaches them a lesson, but I guess it didn’t last time either…
Hope Gary Fisher is a little more understanding…
Thanks for the encouragement. Gary Fischer ended their trademark on “Sugar” 4 years ago!
As soon as I get the (old Raleigh Record) frame cleaned and painted, I’ll be hitting you up for another pair of wheels. “Jude made ’em” is the only part that matters.
Nobody suggested “Hey Jude Wheels?”. Oh, right…if you don’t want lawyers, don’t even think about taking on Yoko Ono.
Epic was getting the company started. Sugar describes your sweet ride to success!
Here’s to keeping the revolution turning.
Another example of evil corporations ruining the bike industry. I would quit riding before I would ride a Specialized.
AMEN! Id go back to riding next bikes from Wallyworld before going “specialized” OOps! Trademark word…dont use it
This from the people who stole the Mtn bike idea from Tom Ritchey, classic. F+
Hmm, that’s kind of lame. I know market research when choosing a name is important, but I don’t think every new shop and bike business needs to make sure every model of every bike offered by a major company doesn’t conflict with their name. Those names of bikes change so quickly and so often and especially for a generic word like “epic” that’s constantly thrown around in cycling circles (almost as much as “suffer”).
That said, I see from a trademark search their mark covers “bicycles” (which is too generic) and shows a first use of 1987, which is pretty substantial for showing use, but still, I don’t see typical buyer confusion between a wheel building shop and a model of MTB offered.
I can’t see a reasonable cyclist thinking that Specialized was building wheels in Portland. Still, the unfortunate thing about legal action is it is expensive and though I think Kirstein would have won in this, it’s not worth the insane expense of a fight.
The issue here was not people confusing Epic Wheels with Specialized. The issue comes with the branding of the product.
For example, I would venture that the vast majority of serious mountain bikers are aware of the Specialized Epic. On the same token, not many cyclists were aware of Epic Wheels. Thus, it is pretty logical to conclude that were one to see a wheel that only said “Epic” on the rim they would assume that it is a Specialized product for their Epic line of mountain bikes.
It would be the same thing if an Indie DH shop in Whistler started making T-Shirts that featured a graphic of someone hitting big air and the slogan “Superfly!” on it. People would naturally assume that it was a Trek product, and Trek would have a C&D order going out within hours of learning about this.
In fact, in the story itself Specialized didn’t object to the name of the company, merely the branding and use of the word ‘Epic’ in a way that could cause a casual observer to equate her wheels to wheel sets made by Specialized..
The purpose of trademark law is to prevent a likelihood of confusion in the marketplace regarding the source of a product or service. Instances of actual confusion are not determinative. Geography is generally irrelevant provided the senior user has obtained federal registration, and the classification isn’t as narrow as some comments might suggest. For example, the law provides that the trademark holder may expand their use of the mark, and so there is expansive flexibility in the scope of products/services. Interestingly, the trademark holder risks the narrowing or even loss of the trademark right if they fail to police it. Specialized had little option here other than to do what they did. FWIW, Specialized didn’t create the law–they are just following it. It is a little silly to hate on them for following the law.
Jude’s efforts in obtaining clarity before further investment in the brand shows her sophistication and acumen. It is better to make this determination early, and if necessary obtain a different mark. Perhaps she will consider seeking her own federal registration as something of an insurance policy on her new name and to further protect her brand going forward.
“…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.” …” bikeportland
On the wheels she built and whatever products she may have in mind to produce, Kirstein doesn’t appear to have intended to use the name ‘Epic’ in a stand alone manner, about which the lawyer for Specialized expressed concerns.
Kirstein’s intent apparently was to use ‘Epic’ as part of the name ‘Epic Wheel Works’, the name of her shop, which bikeportland reports, Specialized said the company was willing to continue to let her use. It would seem that use of the name ‘Epic Wheel Works’ on Kirstein’s products could have effectively avoided confusion with products simply named ‘Epic’, produced by Specialized.
The comment suggesting that using a phrase including a registered mark defeats the likelihood of confusion is misplaced. It is not possible to avoid liability for infringing a trademark by simply adding words to it.
The legal analysis of likelihood of confusion includes comparing the registered mark with the potentially infringing one to determine if they are similar. The greater the similarities, among other factors, the stronger the likelihood of confusion. If you would like to argue that “wheel works” makes “epic” dissimilar to “epic,” best of luck to you–but it is a losing argument. “Epic” is identical to “epic.”
Eric…thanks for your thoughts, today and on previous occasions.
“…If you would like to argue that “wheel works” makes “epic” dissimilar to “epic,” best of luck to you–but it is a losing argument. “Epic” is identical to “epic.” Eric Sidebotham
I’d say the phrase ‘Epic Wheel Works’ is different than simply ‘Epic’, in that it directly refers to a specific type service and associated business rather than to a bicycle produced by a different company going by an entirely different name.
Looking at each companies use of ‘Epic’ in their logos, posted above in this bikeportland story, by virtue of Sugar Wheel Works’, now, formerly Epic Wheel Works’ choice of word incorporated phrase, font and graphics, the dissimilarity between the two is readily apparent.
Noticing your forum user name is linked to a law firm website, I recognize you may be a lawyer with better knowledge than some of us reading, including myself, that don’t have law experience, that would lead you to feel strongly that such an argument would lose in court.
Sure, wsbob. It’s what I do for a living, when I am not scalping people :). What’s really interesting, from purely a trademark theory perspective, is that a lot of the comments here are very negative to Specialized even though they are simply exercising their rights–and did so in a frankly reasonable and professional manner. Specialized could have sued Jude, which would have been totally devastating for her business. And, in my experience, their offer was quite generous. Fact is, any business can protect its reputation. Indeed, that’s really all a business has. And thus they should do so.
I will concede that you make a fair point on “epic” versus “epic wheel works.” I suspect there is a case or two out there addressing this issue, and unfavorably to your position.
Interestingly, the “company name” versus “product name” distinction holds no water. Truth is, most businesses have (or could have) more than one trademark: one for the name of the company, one for the name of the product, and maybe even a tag line or two. All of them can be protected.
In terms of the difference between the look of the two logos/designs, keep in mind that you can obtain trademarks for just words, or stylized words, and each have different protection. Specialized only appears to have a registration for the word EPIC, although its use of the stylized version does afford it common law trademark rights.
Bottom line: Specialized has done nothing dastardly here. They’ve just enforced their use of the word EPIC. Jude also learned something very important about running a business–and I suspect she will seek trademark protection of her own some day. Is everyone posting here going to hate her if she does?
“…Sure, wsbob. It’s what I do for a living, when I am not scalping people :). …” Eric Sidebotham
Eric…sorry for my bold remark about scalphunters from a couple years ago. Hope you can set any offense aside. Speaking for myself, I really do appreciate the legal rationale supporting various issues presented in a matter of fact way by someone working with the law. Other people reading here, also likely appreciate your thoughts.
I expect many people find understanding much of some laws to be very overwhelming. It’s common to find examples of this in comments to bikeportland about Oregon statutes relating to road use, which from my reading of them, seem to be far easier to read and understand well than laws about copyright and trademark.
With that in mind with, it’s not a much of a surprise to me that many people would instinctively, and to the best of what’s likely to be a casual understanding of trademark rights, object strongly to the appearance created when a big corporation such as Specialized, comes down hard on a small business entrepreneur, particularly when such a person has shown no intention whatsoever of confusing their business, service or products with that of a Specialized.
Whether their intent is dastardly or not, from a pr standpoint, big companies risk a very unfavorable public and consumer reception when the means used to go about protecting their trademark rights, appears hostile and aggressive.
Also, as you may agree, lawyers aren’t perfect, and they do make mistakes that can have bad results. Possibly, you’ve been reading bikeportland’s Monday Roundup of this week: http://bikeportland.org/2013/12/09/the-monday-roundup-winter-riding-tips-damascus-checkpoints-more-98241#comments … in which one of stories incidentally, is related to another trademark protection effort by Specialized. Browse through the comments, for more info on the strange course those efforts took.
For some reason, the website won’t let me reply to your last post. So I’ll reply to this one.
No worries on the comments. They teach us thick skins in lawschool. And your comment is actually quite accurate when describing several of the lawyers I know :).
Laws tend to be counter intuitive and complex. It is a set of rules that have been decided, mostly by legislators, to determine what is a ball versus a strike. It is, at some level, inherently arbitrary. But it is the rule. If you don’t like the rule, need to talk to the legislators.
Seems to me that writers such as Mr. Maur sometimes flavor stories such as these in a way to get readers excited, sometimes at the expense of being objective and accurate. They do it to sell newspapers. The consequence is rather than educate about the law, they further misimpressions. The best example of that is the McDonald’s hot coffee case. But that’s another huge topic entirely.
The internet is getting very good these days in showing how rules apply. Its just hard to know what to look for unless you know the law. And sometimes lawyers like me will comment on websites like this. It is all about education, as the law is neither easy nor straightforward.
A lot of people have negative reactions to trademarks. They have this sense that a company is trying to own a name. The reality is, they are just trying to protect their reputation. Jude may build the best wheels in the world. But unless the world knows that she does, she won’t last long in business. It is her reputation that matters, and something she (and all prudent) business folks should protect.
My sense is that the readers of this website do not like Specialized. Maybe there are reasons for that. I am not a intense biker, so I don’t get why. I do live in Morgan Hill, and know lots of people who work there. They are generally cool people. Anyway, it isn’t my business if people don’t like Specialized, or any other company. My opinion is that what they did here was actually quite decent and fair. They could have sued her, and gone after all of her profits–basically, they could have shut her down. They didn’t.
I do know that Specialized does generally enforce its Intellectual Property, and it does so against small companies. Google does the same thing. And so does Apple. All companies do, especially companies where technology is important.
You are right, though, in that there is always a PR price in enforcing one’s IP. It is monopolistic, and it is a part of our culture that anti-competitive behavior is bad. But Intellectual Property rights are special, and indeed find their source in the Constitution. It is there, because the founders thought there were bigger societal benefits to allowing certain limited-time monopolies to exist–where there is an exchange of information into the public domain. We might pay a bit more for a really cool bike part, but our society in general has been more prosperous because of it.
Issues associated with this subject are a bit too complex for good discussion in the comment sections of some weblogs. I think people generally recognize the importance of and respect trademark protections.
Associated with trademark protection, what I think many people may be having reason to react negatively against, is the extent to which incidents have shown trademark holders can and will go to, to exclude someone from use of something trademark registered, even when to the people finding themselves reacting negatively, the given use does not appear to represent the potential for confusion with the business of the trademark holder.
It’s overt, obnoxious faux pas that people object to from big companies. The big companies many people love for marvelous products they designs and produce, but that start to begin to appear to be big ugly ogres due to sloppy, means for petty reasons, by which they sometimes carry out their business matters against little people.
In this case, the little business owner sensed the odds and decided to bail before the big company began firing with both barrels. Specialized didn’t have to be as deficient in finesse as it was in investigating and pursuing a resolution to its concerns with this small business owner. In a congenial manner, it could have sought an amicable resolution, as Advanced Sports International seems to be doing with Dan Richter, owner of Cafe Roubaix Bicycle Studio in Canada, over ASI’s watch over its’ trademark registration for the name ‘Roubaix’.
In this most recent incident, the least that should be able to be expected of Specialized’s legal staff, before it goes about pursuing little people for what it fears are their violation of its’ trademark names, is knowing whether they have authority to do so in a given geographical area. In this instance, the didn’t and so again there’s egg on the face of Specialized.
Wow-Jude has acted with nothing but class. Sad that copyright and information law have so much to catch up to in this age.
Oy, not again.
I cherish my Epic SonDelux wheel.
Trying to remain rational about this BS.
This just makes me want to start Epic Rock Stumps Bicycles.
Well, it is kind of a bummer. But the lawyers are just doing their job and I think that the compromise that they offered, even though is was rejected by Jude, was surprisingly reasonable.
Hate Specialized if you will, but the real, true motivation for protecting their ownership of the “Epic” name was stated in one of their emails: “Without such action, Specialized is vulnerable to loss, or at least narrowing, of its rights in the Epic brand.”
The keyword there is “narrowing.” If Specialized DOESN’T go after every possible, potential infringer of their brand, then a precedent will set and their rights to the word “Epic” will slowly erode.
That’s the ugly truth of the matter. Warts and all.
That said, I think the new name is awesome! (I like it better than “epic.”) How often will folks ride the wheels and exclaim “Sweet!” Yep– That’s Sugar. Go Jude!
@gabriel Nagmay, yeah anyone who followed their behavior on the stumptown name would have known that they weren’t going to play nice.
Thanks for the support. As Jonathan mentioned in the article, the Specialized law team was pleasant throughout the process. We cited several examples where Epic was used in the bicycle industry but to no avail. We’re not looking back…we love our new *Sweet* name.
Kudos To Jude for being proactive and not just keeping her fingers crossed. Shame on S for taking the cowardly legal route. It’s a colloquial term, not something that S fabricated for ef’s sake! What’s next, someone going to demand royalties whenever “Happy Birthday” is sung in a public setting? Ohhh, wait…Geeze 🙁
It’s not cowardly to protect what’s legally yours.
When it’s not necessary and it’s a word that they did not create? Then yes it is. Cowardly may not be the best word, but I think “owning” a word that is in common vocabulary relating to the product and demanding that nobody else can use it for an entirely different product is complete and total BS. I’d be more sympathetic if a bike builder named one of their bikes Epic, but c’mon! This is a stretch.
I don’t think Specialized owns the word “Epic”. If Jude had deep pockets, she woud have prevailed since no reasonable person (there is a reasonable person standard) would confuse her company with Specialized. So cowardly fits. Bullies are cowards.
You are correct in that Specialized does not own the word “epic,” but they do have the right to prevent the likelihood of confusion in the marketplace. Contrary to what you suggest, there is no “reasonable person” standard to determine trademark infringement. And it is not dispositive as to whether such a “reasonable person” would confuse Jude’s business for Specialized. This is not an equity issue.
Courts have determined a multi pronged test to make this determination. Google “likelihood of confusion factors” if you are interested in knowing the rule.
If you apply the facts as set forth in this article to that test, it is very likely that Specialized would have prevailed.
Can you sue when Specialized discontinues their Epic model? I must admit I do like ‘Sugar Wheel Works’ better tho. Keep your fingers crossed Sugar Laboratories salon on Broadway doesn’t catch wind of your new name 😉
Since this is trademark law, Specialized has to do whatever they can to quash unauthorized use of their trademark. Otherwise there is a potential that the trademark will become invalid. Sure they could “license” the trademark, however then there is a value placed on the trademark that could affect future necessary litigation.
Bummer to see this happen, but I really do like the Sugar Wheel Works moniker better for sure. Best of luck to Jude and Sugar in the new space!
You can’t blame Specialized. They had to do it. If you give the little guys (or gals) a pass to be “cool,” then you will lose the protection of your mark. Jude did the right/smart thing. Can’t wait to get some new wheels from her, too.
The new tires I picked up yesterday are rolling pretty ‘SWEET’ Jude, I will send everyone I know your way when they need anything wheel related, no matter the name of your business. Can’t wait to get a “Sugar Wheel Works” sticker for my bike!
This will all go toward the story of your business. A great company, with character, integrity and exceptional service.
Jonathan thanks for continuing to report on this topic. It is a situation that will only grow in frequency within the bike industry and in Portland.
In my experience…New product companies have to basically pick a ‘name’ based on non existing words – in most major languages. The Internet and our connected world makes it so. Or they have to lawyer up.
Jude remains uber-classy in outlook and practice and I look forward to needing her services someday.
Meanwhile, this reminds me of the naming calisthenics Grant Peterson has had to go through when naming his various Rivendell products. As far as I know, Tolkein’s estate never sent him a C & D letter for the Rivendell branding; but to be on the safe side he’s come up with some pretty interesting almost–but-not-quite-real model names (Betty Foy and Hunquapilar immediately come to mind).
One thing about the legal-shmegal stuff; it really shows you who can think creatively and fast on their feet.
All the best to Jude in her new location!
Beth, funny you mention Tolkein’s estate because it is the latest in a long series of Streisand-effect kerfuffles.
IMO, Jude should have been making contingency plans to play her own Streisand-effect judo against Specialized should their lawyers ever contact her.
But, hey it’s her business and to each their own.
Once made aware that someone else is using their trademark, I think maybe they *have* to tell her to stop, or, as they said, risk losing (voluntarily relinquishing?) trademark rights (what I think of such exclusive trademark rights is a separate matter). It’s a pretty clear case, especially what with it all being bicycle stuff.
What’s wrong with something like “Kirstein Wheel Works”? Cute names don’t make a wheel any better.
Way to stay resiliant, Jude! I like sugar… a little too much.
Brian, Dan O and others regarding the defense of Specialized:
For this reason, we have been cooperative. We have seen their point of view though it’s not quite as black/white as it appears. We want to respect what they have spent 25 years creating. Our stance, however, was that there are several bike shops with the name Epic already and we operate very much like a bike shop but exclusively for wheels. So, the exchange with Specialized was always cordial and with an understanding with all perspectives. I also believe that this wasn’t what they necessarily wanted to do but I do believe there were other options. Anyhow, I just wanted to address that perspective. Thanks for your input!
As I said in reply to Beth, I think you would have been better served making plans for the possibility of Specialized initiating contact with you by being ready to do some Streisand-effect judo on their butts. That’s the kind of publicity that can’t be bought.
Anyway, best of luck.
Specialized claims a date of first use of EPIC on 10/25/1987–26 years ago. If other bike shops used prior to that, they may be entitled to local area exception. If not, it is likely that Specialized does not know of them…yet.
“… 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.” a lawyer representing Specialized
There’s my laugh for the day. A lot of nice sounding, blabby words meaning nothing in reality. Minuscule entrepreneurial business, formerly known as Epic Wheel Works, was somehow going to cause giant Specialized to lose something, unspecified as it was? Losing rights? What rights? Specialized right to use the word ‘Epic’ to name its bike was in no way threatened by this gals business.
Scalphunting is what lawyers like this one practice.
“”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. … a lawyer representing Specialized
Had wheel-building business entrepreneur Jude Kirstein even used the word ‘Epic’ as a standalone, on her wheels or anywhere else in the business? So it’s grasping for the big S’s lawyer to imply without saying, that she has not right to use the full phrase ‘Epic Wheel Works’ on her stuff.
So the scalphunter lawyers win again.
I wonder how it works when the free to use name a small business uses for their products, is unceremoniously appropriated by a big outfit like S. There of course, the little guy would lose again, because unless their case was super strong, they couldn’t risk the legal fees unless a firm felt they could take it on pro bono.
What rights? Uhm…trademark rights. Trademark rights give you a right to prevent a likelihood of confusion regarding the origin/source of goods/services. It protects reputation, and it is a law that been around for centuries.
If Jude’s use of EPIC cause a likelihood of confusion and Specialized chose to do nothing about it, then the next person using EPIC could argue that Specialized gave up the right as to that particular area or that the mark was generally weakened given other users for similar goods/services.
Interestingly, size is not the deciding factor here. Switch the facts–say Jude started her business in 1986 and obtained a registered trademark, she could force Specialized to stop using it if were causing confusion in the marketplace.
Hope that helps clarify. Now back to my “scalphunting” :).
Well if Ford can sure Ferrari over the name of their formula 1 racing machine [the F150th] being confused with the Ford F-150 pick up truck then why not? Gotta love owning words.
Good luck to the wheelbuilders!
Jude has built me 3 wheels over the years, all still solid and true. Note to specialized: I will continue to buy wheels from her, but not bikes from you.
One more reason I’ll never knowingly purchase another item from Specialized. This from someone who has owned Specialized both road and mountain bikes as well as countless Specialized products over the years (seats, gloves, tires, components, etc.)
(I made this declaration after the Stumptown debacle and I have and will continue to stand by it)
Odd that they’re not going after http://www.cape-epic.com/, isn’t it?
It is because they are in Africa.
Specialized continues their name hording and intimidation. I will never have anything to do with this company. These practices made this years mountain bike purchase much easier.
used to be Epic Bags
Sad, so Sorry Jude. I find it hard to believe they came after you since you are a service business and not a manufacturer. That is the real meat and potatoes of this. For those on here defending Specialized the question is this: are you going to find Jude’s non existent branded hubs in a bike shop? No! There is no ground for customer confusion here.
Boo hoo Specialized. Stop the madness and stop making a bad name for yourself.
Sorry, Eric, there is no hall pass for infringing a trademark by claiming that you are offering a service and not a product. Trademarks apply to both. Besides, based on what the article says, you may be incorrect. It appears as though Jude sells wheels, which are a product.
Specialized owns the name “Epic” as it relates to bicycles, period. They not only have the legal right to do what they did, but it’s their job to protect themselves from potential competition of the name and it’s simply good for both sides to eliminate confusion between companies.
Any of us that know Jude realizes she’s running a great business and is an upstanding individual. But we don’t know how big her awesome little business might get someday. We can only hope it’s successful enough for Specialized to look back and say, “glad we took care of that in 2011…”
When I worked for Surly Bikes, we owned the name “Surly” as it related to clothing. So when a brewery in the same neighborhood successfully opened up nearby named Surly Brewing Company, there was immediate confusion between in the public when I walked around town with a Surly (Bikes) t-shirt. In the end, they print all their apparel “Surly Brewing Company” and it mostly took care of the confusion. Both companies employees became friends and we shared each others goods.
My point is, this can help both companies in the long term. Whether or not you think the Big S is wrong for doing so, it’s good to look at both sides of the story.
“Specialized owns the name “Epic” as it relates to bicycles, period. …” Nick
Do they? That would be a very comprehensive range of coverage. I wonder what the contract says, and whether the courts would support that view. The intricacies and subtleties of copyright law… . Lawyers and courts could spend many hours and large amounts of money identifying the limits of Specialized’s rights with that particular name.
But we don’t know how big her awesome little business might get someday. …” Nick
Jude Kirstein didn’t name her business ‘Specialized’. She named it ‘Epic Wheel Works’. Kirstein didn’t build a line of bikes to sell them under the name ‘Epic’. She only builds wheels. Someday, maybe she will build bikes for sale. If she named them ‘Epic’, Specialized would have reason for concern, but not in the situation that recently transpired.
Specialized is allowing itself to become the greedy giant, throwing its weight around. It’s contract scalp hunter lawyers eat this up to meet their trademark infringement quota. This was an easy one for them, because being an extra conscientious business owner, she initiated the contact, rather than wait to let them track her down. I wonder if any execs at Specialized are even aware of how this situation wound out.
Well, technically, they have the right to prevent a likelihood of confusion in the marketplace regarding the origin of their goods/services. There can be a Specialized Bakery, and no likelihood of confusion. Nick’s comment is otherwise likely the most accurate of all.
BTW, it is not important that she didn’t name her business Specialized. That said, if she did name her business Specialized Wheel Works, the same thing would have happened.
I was always curious if there was any correlation between the 2 businesses so close to each other too!
I appreciate the balanced look at the situation by everyone. We aren’t victims of anything. We’re going to joyfully continue doing what we love doing most: working with people to get them a *Sweet* ride!
Quick, trademark that tag line!
Welp, quite frankly its a game of intimidation. When we have money to defend ourselves, we should seek to protect OUR trademarks from greed corporate bullies.
Specialized did not trademark their company as Epic. Stecialized trademarked a ‘frame’ as Epic. Lots of things are named Epic. Roller skates, clothing (yes, that could be worn riding), stationary bikes (see link below). Jude has the good fortune of having named her company Epic, which does not produce bike frames. The look of the word is different. The product is totally different.
A trademark is not a word. A trademark is the look of the word and the context in which it is used, as well as historical use. No one can own a word. Especially a word like ‘Epic’ that has been around as long as I have been.
“Wrongful or groundless threats of infringement: Various jurisdictions have laws which are designed to prevent trademark owners from making wrongful threats of trademark infringement action against other parties. These laws are intended to prevent large or powerful companies from intimidating or harassing smaller companies.
Where one party makes a threat to sue another for trademark infringement, but does not have a genuine basis or intention to carry out that threat, or does not carry out the threat at all within a certain period, the threat may itself become a basis for legal action. In this situation, the party receiving such a threat may seek from the Court a declaratory judgment; also known as a declaratory ruling.”
You’re not making frames. You’re not making “Special Epic” wheels. Your company is Epic Wheels. As the name implies, you have a totally different purpose and look. I would fight this issue for ya if I could!
No Specialized products for me anymore, thank you. Oh, huh, and also I bet none of my friends will
Just for fun:
Epic Wheels! Epic This! Epic That! Epic Epic Epic…. Epic Rides…. Epic Lives….
Have an Epic Day.
Brad- you should consider having specialized write a letter to Clement for using “crusade” for their tires. I’m sure you could make a buck or two. If not you could have them change the name. Specialized… No love!
I feel like this isn’t the first time I have read things about Specialized’s meanspirited bike copyright practices that have left a decidedly nasty taste in my mouth.
I’m looking into purchasing my first ever road bike this April. My $2000 definitely WON’T be going to Specialized. Uugh.
I’ll be giving Specialized a call about this to tell them that they’ll never be getting my money on future bike purchases because of continued behavior like this. “Epic” is in the common lexicon and particularly when it comes to endurance sports. Trying to claim that any use of “epic” as an infringement likely to create consumer confusion indicated spending too much money on lawyers and not enough time on a bike.
Specialized: Can you hear me? Will your fancy legal team be contacting me next time I return from an “epic” ride? There is no potential consumer confusion and you all know it, your company is being nothing but a bully.
We love you, Jude! Sugar Wheel Works it is.
If they’re really worried about their Epic brand they should up their SEO game! At least 4 “Epic Bike” businesses come up before Specialized… http://www.google.com/search?q=epic+bike
This is corporate bullying at it’s worst. Remember, Specialized sued over the name “Stumptown” that’s been a nickname for PDX for almost 100 years.
Jude! You’re awesome! Thanks for continuing to sponsor Portobello Bicycle Racing with your “epic” wheels. I just got off a ride from my Chris King r45’s laced to DT Swiss rims…so smooooooth!
Once again, bulldog Specialized going after stupid stuff. You would think they would get it and all bicycle related stuff is good. The whole Stumptown thing really soured me on Specialized, and now this is even worse. I say everyone boycott ***** corporations like this. I for one will not be buying anything Specialized. ***********
And now I hope that Trek/Gary Fisher doesn’t track this down and try to sue, since they have the “Sugar” line of mountain bikes…
A few things are not advisable in the US:
1) Doing anything to one of the ruling class (government employees).
2) Doing anything to a corporation (they are protected by the ruling class).
The ruling class can do ANYTHING to a tax payer (local police shootings of unarmed people are just one example). It is a felony to spit on, urinate on, etc one of the ruling class.
You can’t make this stuff up.
By the way: Stumptown was stumptown decades before stumpjumper ever existed.
Jude did the right thing. In legal fights the lawyers are typically the only ones to win.
I’m always amazed at the creative names people come up with for their businesses. Sugar Wheel Works sounds good to me.
There is a bike shop in Eugene named “Wheel Works” but I guess “wheel works” is like “automobile shop” or “tire repair” – it’s generic.
For all of you that are saying that they are not going to buy another specialized product because Specialized was protecting their name are all lame.
S went through the trademark process and they deserve the right to the Word “Epic” as it pertains to bicycles. Regardless whether or not Epic Wheels is a direct threat to Specialized’s business is not an issue. Its the fact that Epic Wheels had a name that Specialized owns the rights to in regards to bicycles.
If you all had a product that you owned the trademark for the name, and a small start up in your industry opens up with a name that you already own the rights for you would take action. If you wouldnt take action why go through the process of being in business and trademarking the name?
Like Jude said, there is no ill will, they are doing what their legal obligation is owning rights to a name. Besides, Sugar is a far superior name that actually relates better to what she is doing. Making Sweet Wheels.
Really? Doesn’t it remain to be seen whether or not the courts would support such a broad protection of the trademark on any use of the word ‘epic’ in cycling?
Specialized’s EPIC frame is paying tribute to a very old term from the cycling lexicon, and also as a more recently coined term for that style of trail riding and common trail bike market segment. A term that has broad use and many different meanings. I personally think specialized is lame for trying to corner the market and prevent any other cycling company from using a word that has so many meanings and is so common in bike culture. shame on them. There simply is no explainable level of confusion from the customer’s standpoint. All-mountain trail bikes vs. a tiny custom wheel builder. This isn’t rocket-surgery. This won’t detract from intermediate/advanced cyclists shopping for a $2500-$5000 5″ travel, lean trail bike. And for newbies walking into a shop to start learning about trail bikes, or poking around the internet, there’s just no viable explanation as to how this would confuse or detract form S’s sales in this segment.
There’s a lot of good and creative ways to build a brand, protect your brand, and to generally spread good will and be a responsible member of the business community, marketplace, and cycling world. There are a lot of brands that if they were people, I’d like to hang out with. Specialized definitely isn’t one of them. People have a right to voice their opinion and make themselves heard by placing their dollars elsewhere.
My hat is off to Ms. Kirstein for taking this whole thing with a teaspoon of sugar.
Re: Defenders of S: Loss? My guess is that the loss of revenue from potential confusion of a product from a small “specialty” shop (potential) is miniscule compared to the loss of sales due to the negative impact of behaving like a corporate bully (real). Did the behemoth not calculate this? The creeping corporatization of every aspect of our lives makes me ill. Add my name to the second group. BTW, isn’t “S**********” a pretty incogruous moniker? Hopefully they have “Unspecialized” trademarked and waiting in the corporate bullpen.
Personally, I think Jude handled this with a lot of class, and I admire that.
I think I like the name Sugar better anyway, personally!
What’s next, suing schools who have specialized degree programs?