The story of the behemoth bicycle manufacturer trying to punk a little Canadian bike shop out of its name caught fire last week, spreading rapidly across every cycling website and social media outlet there is. Amongst the plethora of anti-Specialized memes and endless comment threads, there was a lively debate about trademark law. Arguments went from blaming Specialized’s actions on the American copyright system (both the bike shop and trademark-at-issue are Canadian) to asserting that the names of cities cannot be trademarked. Something had to be said.
First, a quick Intellectual Property 101. Copyrights, trademarks, and patents are all different types of intellectual property, each governed by a separate and distinct body of law. Copyright protects creative works such as art, literature, and music, trademarks protect brand names of products and services, and patents protect inventions. The terms are not interchangeable.
Now then. If you thought that the name of a city can’t be trademarked, you were right – kind of. Geographic locations cannot be protected by trademark, except for when they can. A good article on Red Kite Prayer helps me illustrate my point:
I have to admit that my thoughts don’t automatically turn to the commune located in the Nord department of France between Lille and Tourconig. I don’t even think of the famous velodrome there in that little industrial town. No, the first thing that springs to mind for me is pavé, mud, brutal conditions and that great, great quote from Theo de Rooy, “It’s bollocks, this race! You’re working like an animal; you don’t have time to piss; you wet your pants. You’re riding in mud like this; you’re slipping. It’s a piece of shit …” said de Rooy, quickly adding that he fully expected to do it again because “it’s the most beautiful race in the world.”
To any self-respecting cyclist, “Roubaix” is synonymous with the pain, the challenge, and the beauty that is cycling. It has a meaning apart from being a geographic location.
Under U.S. trademark law, geographic locations are not protectable unless the name signifies something more than just a place on a map. This happens when consumers begin to use it to identify who sells a product or service rather than just the physical location it comes from. A name acquires secondary meaning simply by being used in commerce. For instance, Fuji has owned the Roubaix trademark in the United States since 1992, but had used the mark since 1987, giving it time to acquire secondary meaning before registering the mark.
Specialized and Fuji aren’t alone. Trek Bicycles owned Alpe d’Huez until 2011. Santa Cruz and Marin are bike companies named after locations in California. Businesses within all industries have been trademarking the names of cities for generations. Trademarks are not monopolies on words. They are identifiers that enable consumers to distinguish between sources of products and services. It is not trademark law that is the problem, but over-zealous companies that ruthlessly enforce it and cavalier businesses that neglect it.