display at the Oregon Handmade
Bicycle Show last month.
(Photos © J. Maus)
Portland resident Edwin Brown has been building his Sprout Cycles brand since 2005. Now he’s fighting to keep it after learning that a much larger company has registered attempted to register a trademark for ‘Sprout’ bicycle products and plans to start is considering a new line of kids bikes under the same name.
Back in October, The Coloradoan reported that Swobo — a well-known bike industry brand owned by Santa Cruz Bicycles in California — had relocated to Fort Collins, Colorado. According to The Coloradoan Swobo’s new CEO Peter Discoe has plans to rebuild the brand under the Fort Collins Bicycle Company umbrella. Among his plans for Swobo is a new line of kids bikes dubbed “Sprout.”
of Sprout Cycles.
From The Coloradoan:
“In addition to selling Swobo apparel and bicycles, the company is also planning to sell a children’s line of bikes called Sprout… Discoe said they are trying to create a “lifestyle brand” with Swobo where people are excited about owning their products.”
Brown was not contacted by anyone at Swobo or the Fort Collins Bicycle Company about using that name and only heard about it after a friend read the news in Bicycle Retailer.
Brown has contacted Portland-based intellectual property attorney Chris Tuttle (who specializes in bike industry cases) to figure out his options.
“I’m in a bad spot,” Brown told me today, “because I haven’t trademarked my name.”
According to the US Patent and Trademark Office, Sprout was officially registered applied for as a trademark on September 15, 2011 by the Fort Collins Bicycle Company. Here’s the registered mark (which is very similar to Brown’s existing wordmark)(*Please see update/correction to this below):
Swobo/Fort Collins Bicycle Company
The attorney of record for the registration is listed as Spencer Lueders. According to a bio of Lueders on the website for the 24 Hours of Booty organization, Lueders is a member of the LIVESTRONG Presidents Circle and a patent attorney who has managed legal issues and the patent portfolio for NASCAR, Inc.
at a recent bike show in Portland.
Brown now feels like he must fight for his name if he has any hope of keeping it. He plans to contact someone at Swobo to “alert them, or re-alert them that there is a trademark confusion issue here.”
When asked how he feels about his name being trademarked by someone else, Brown said he’s “distraught” and “upset.”
“When it comes down to it, when you Google ‘Sprout’ and ‘bicycle’ my site comes up first,” he told me via telephone today. “I always want to give people the benefit of the doubt… maybe they didn’t research the name first; but my fear is that they did do research and found that I hadn’t trademarked it yet.”
Brown, 29, says simply giving up his brand name isn’t an option at this point. He says he’s never pulled money out of his business to pay himself, and that he’s spent everything on marketing and going to bike shows. “My equity lies in name recognition, so redefining myself would come at a great expense.”
Brown still puts in a few shifts at a local pub, but his dream is to have Sprout be successful enough so that he could put service jobs behind him. “This is supposed to be what I’m doing for the rest of my life.”
I hope to hear back from either Spencer Lueders or Peter Discoe to learn more of their side of the story. I will post a follow up when I can.
—
UPDATE, 11/11 at 1:40 pm: Please see my follow up story here.
UPDATE: A lawyer has chimed in with a comment saying that Ft Collins Bicycle Company has only applied for the Sprout trademark. I haven’t had a chance to verify this yet, but wanted to let folks know. The comment is below:
“… Ft. Collins has not federally registered the mark, it has only filed an application to do so. The US Patent and Trademark Office hasn’t considered the application yet. Right now, the application indicates that Ft. Collins hasn’t used the SPROUT mark in commerce, which means that Ft. Collin’s rights in the mark are open to challenge (either inside the US Patent and Trademark Office, or outside, such as in court) from someone who’s used the mark prior to the Sept. 15, 2011 filing date.”
It’s business 101, trademark your brand.
There is no trademark confusion as there was no trademark.
I’m sure Swobo’s lawyers did the research with the US Patent and Trademark office, and found that there was no trademark. It doesn’t matter who’s name comes up first in google, that doesn’t make it a trademark.
Sorry to see someone put in this position but they had the chance to trademark 5 years ago and didn’t.
You don’t understand trademark law.
Useage trumps filing for registration. It sounds strange but that’s the way it works. Not having it trademarked means the fight for the name will be more expensive, but providing that he can prove he first used the name in interstate commerce, Edwin will very likely win.
“…”When it comes down to it, when you Google ‘Sprout’ and ‘bicycle’ my site comes up first,” he told me via telephone today. “I always want to give people the benefit of the doubt… maybe they didn’t research the name first; but my fear is that they did do research and found that I hadn’t trademarked it yet.” …
Brown was not contacted by anyone at Swobo or the Fort Collins Bicycle Company about using that name and only heard about it after a friend read the news in Bicycle Retailer. …” maus/bikeportland
Is lack of money the reason that sometime during the last six years, Brown hasn’t registered ‘Sprout’ as the name for his business and his bikes?
It sucks that Swobo has apparently decided to stomp on Brown without even a ‘Hey, got any serious plans with that word ‘sprout’?, but Brown seems to have left himself extraordinarily vulnerable.
if the swobo mark is intended to be limited to children’s bikes, there might not be any confusion
Perhaps “PDX Sprout” and Swobo “FCBC Sprout” should work out a deal where Mr. Brown provides the occasional high end “custom one off” for the affluent fledgling cyclist, while they press on with the production models. Silly notion yes.. but perhaps it could work. More than likely the bigger player will win out with the cease and desist. Swobo, roundy,roundy, round it goes.
I thought that when you apply to register a trademark and send the trademark office several hundred dollars, part of the trademark office’s job is then to search the webs and elsewhere to see if that name is already in use commercially, in the same or a similar industry. If it is, that would be considered a de facto trademark and the application would be denied. Am I wrong?
You are thinking about patents, completely different animal, sadly.
Yeah, with trademarks the onus is on you, the filer, to make sure the name is not currently in use, or is being used in a separate application/industry that would not cause customer confusion if you were to register a similar mark.
Kind of, but a trademark examiner only searches the Federal Register for similar (registered) marks, not unregistered marks.
Small business owners or those of you who plan to start a small business – register your trademarks!
You can do it yourself online for $325. It can seem very confusing at first, but it’s not hard at all. Spend a few days going over the basics on the USPTO.gov website and file your marks.
A few days of research and $325 could have helped prevent the all the money that is now being spent to retain a lawyer. A very expensive lesson to be learned.
Big companies with legal departments are ruthless – take these little steps to protect your brand before it’s too late. A good ranking in Google or a Twitter name is not enough.
Actually, unless the law has changed recently, first use in commerce (selling a product) can establish a trademark. Registration is nice, but not necessary. Usage of that sort might be limited to the geographic area in which the products are sold, so that might be a problem here.
That is an interesting notion. Are there any examples or incidents of such you could direct us to?
I just did a quick research on trademark law, and found several articles that summarize the law. When I was reading the original article and some of the comments on this site, I knew there was something more than just registration that could establish a trademark, but it’s been too many years since my intellectual property class, so I took a quick look.
There are other considerations as well, such as geography. If Brown has sold bicycles nationally, he’ll have a better argument. There is potential for trademark confusion here, though, because they’re both building and selling bikes. I’m not sure that Swobo limiting to kid’s bikes is enough of a differentiator. If Swobo was selling porch swings or golf clubs, then they could both use the trademark, as long as it was clear otherwise that they were two diffierent companies, but they’re both bike manufacturers.
From what I understand it won’t establish a trademark, rather it will make it easier to defend your trademark against it being poached by another company, if he can show that he has been actually using the mark in commerce. So his lawyer should be able to file an opposition to the mark being filed by Swobo with the Trademark Trials and Appeals Board, and with enough proof block Swobo from being able to register the mark (if it has not be officially published yet – dunno what happens once the mark has been awarded, is it too late at that point?).
Trademarks need to be registered to receive them. Copyrights, on the other hand, are automatically granted at the time of product creation (such as an automatic copyright on a photo at the time it was taken, or on an article when it was written.)
I could be wrong, though! This is just what I understand from doing this sort of stuff (trademarks) for my small business. I’m not a lawyer, yadda yadda…
First use, mo-fo’s. Step off or pay up.
That might work if you have more $$$ for better lawyers than your opponent. Otherwise, you are screwed.
Jonathan — your facts are a little inaccurate regarding the trademark “registration.” Ft. Collins has not federally registered the mark, it has only filed an application to do so. The US Patent and Trademark Office hasn’t considered the application yet. Right now, the application indicates that Ft. Collins hasn’t used the SPROUT mark in commerce, which means that Ft. Collin’s rights in the mark are open to challenge (either inside the US Patent and Trademark Office, or outside, such as in court) from someone who’s used the mark prior to the Sept. 15, 2011 filing date.
Thanks for that Tim. I’ve added your comment to the story and will look into that more when I can.
Absolutely. I should also mention that both of us got the date wrong, too — the filing date was Sept 5, rather than Sept. 15.
So in fact, Swobo/Ft. Collins actually hasn’t actually yet been granted trademark status for the word ‘Sprout’. It’s not a done deal, and Brown may have a fair chance of preventing the name he’s been using for his company and bikes for the last 6 years from being taken over by Swobo/Ft. Collins.
At least to the extent to which Brown has established unregistered, or “common-law,” trademark rights, I’d say so. A lot depends on how Brown has been using the SPROUT mark.
Back down Swobo! I personally think Swobo should avoid the bummer life and choose another name like Tadpole or Guppy or something. Look around, Swobo, see what people in the industry are already doing. Edwin hasn’t exactly been hiding in his garage for five years. Geez. And yes, Little Package is registered — you can’t have it.
We race ride and Love Your Sprout Bikes! Blow it up like a celebrity romance!!!
Love You Friend,
Mike
Come on Swobo, do the right thing. I’ve always liked your stuff. Don’t get yourselves a lot of bad press.
Edwin
If you have unique business name, trademark it. It costs $400. It is not that hard.
While it would be nice if the Colorado company backed down, don’t count on it.
Edwin, hopefully you learn from this, and anyone else who has a small business with a unique and trademarkable (sic) name.
Once you get your mark, the only strength it has is the money that you have to pay expensive attorneys to defend it.
As much as I want to feel sorry for you, it is your fault. Be prepared to move on if you do not have the money for a trademark fight.
Bon chance.
Tuttle is the man for the job.
Tim is correct. There is no federal trademark registration for SPROUT in the bicycle industry, just an application that has not even been examined yet. The application could easily be rejected based on Edwin’s prior use of the trademark. Even if that doesn’t happen, Edwin will have an opportunity to oppose the registration, because the federal registration process includes a 30-day opposition period after the USPTO initially decides to allow the registration. I can’t speak for Chris Tuttle, but I will volunteer to help Edwin with an opposition at no charge, if it comes to that.
Shawn Kolitch
shawn@khpatent.com
Shawn, would you recommend that Brown also file his own use-based federal application for SPROUT?
Kenan,
Sorry for the delayed response – I haven’t kept up with these comments. The answer to your question depends on many factors. If money were no object (which is apparently not the case), then I would say definitely yes, Brown should pursue his own federal registration for SPROUT. Even with tight finances, the answer might be yes if Brown has plans or realistic hopes to expand the SPROUT brand outside of his existing geographic commercial territory. Feel free to contact me directly if you want to discuss this further.
Best,
Shawn
shawn@khpatent.com
I’m going to go out on a limb and say that without Sky Yaeger, Swobo is no longer anything to write home about.
This PTO booklet clarifies a lot of these issues.
http://www.uspto.gov/trademarks/basics/BasicFacts_with_correct_links.pdf
It seems like the first thing he should do is to add “TM” to his logo and in his sproutcycles.com copy right now (as visually unappealing as that may be), according to this booklet:
“When can I use the trademark symbols TM, SM, and ®?
If you claim rights to use a mark, you may use the “TM” (trademark) or “SM” (service mark)
designation to alert the public to your claim of ownership of the mark, regardless of whether you
have filed an application with the United States Patent and Trademark Office (USPTO).”
Thanks to Doug Morgan for alerting me to this.
First, let me say that neither Mr. Brown nor Mr. Maus has contacted me about this. Unfortunately, the Coloradan was incorrect in it’s reporting that Fort Collins Bicycle Company is starting a new brand to compete with Mr. Brown. You’ll note also it claims me as the Founder of Swobo. Something that I am not. The fact is, what was printed was a misconstrued comment regarding a possible model name for a youth model. Let me be clear…a possible model name. As to the reason we applied for the trademark in that category of children’s bicycle, as has been stated several times here, it part of prudent business practices. We are applying for several names of products, current and potential. Important to note as Mr. Whalen noted, applying is just part of the process and does not guarantee acquisition.
Mr. Maus, please feel free to contact me the next time you’d like to do a story on us. Unfortunately, I think a quick call or email beforehand could have helped retained accuracy in your story and I’m happy to help you in the regard in the future. Edwin, please feel free to contact me, peter@focobikes.com if you’d like to. Rest easy, FCBC has no intention to start a brand to compete with your efforts nor are we committed to using “Sprout” as a model name. If fact, if you’re interested in doing some prototype work in 2012, do reach out. Using folks of your talent is something we often do for help in the initial stages of design and if we can help you achieve your goals in the bike industry as we’re working on achieving, we’re happy to do so.
“…As to the reason we applied for the trademark in that category of children’s bicycle, as has been stated several times here, it part of prudent business practices. …” Peter Discoe
Mr. Discoe…what you haven’t said, is whether, before your company included the name ‘Sprout’ in your trademark registration application, it had done a bit of research…you know, something very simple like googling the names, which people seem to be doing with questions of their own about this or that, several billion times a day…to see if someone else might have been already using the name ‘Sprout’ associated with ‘bicycles’.
According to Edwin Brown, owner of Sprout Bicycles, if you had done so, his name would have popped right up to the top of the google list of bicycle related items associated with that name. Seeing it, maybe you’re company would have decided right then and there: ‘Nope…that names off the list…somebody’s already using it.’, and you could have thus save people a whole lot of stress and wasted time.
Peter, this is standard practice for Maus. Thus all the “updates” and “corrections” to his stories. He’s just a blogger, not a real journalist, so you got to cut him a little slack.
Someday he will get in trouble for it, and may tighten his game up then, until then, we get what we get.
Besides, rumors and conjecture are fun! (not)
Gee thanks Harvey! I do my best. Not sure how you think I’ll get in “trouble” for doing this, but whatever.
And btw, I am a blogger and proud of it. It’s a style that is different than “real journalist” and I like it. That being said, I never intend for my stories to spread rumor or conjecture and I report what I know at the time of publication. Yes, there are always more calls that can be made but I work quickly… that’s just the nature of this beast.
Thanks for your feedback.
Cheers.
I was not complaining Jonathan, just telling it like it is. Thanks for doing what you do, it’s a fun read, you should be proud.
I think the “trouble” Harvey is eluding to is libel and basic defamation law. That is why you need to be more careful with your writing – with all the attorney’s piping in on this blog, maybe they can chime in. Would be curious if Swobo has a case.
I’m confused at what sort of case they’d have. Did you read my story or just Discoe’s statement/opinion of my story? The only very minor mistake I made was saying that FCBC had registered the trademark when they had just applied for a trademark.
It’s not about this specific case Jonathan, it is about your history of a rush to post information that has not been confirmed or vetted.
The fact that you admitted that you are not a journalist and enjoy the method of reporting that you currently subscribe to (not doing basic fact checking on your stories before they are published), has established a pattern of reckless reporting (in the eyes of a nasty lawyer) that will help any libel case that is brought against you.
But like I said before I like what you do, but would hate to see you go down for it.
H