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Dan Richter is a Canadian veteran of the Afghanistan war who operates a boutique bicycle shop, Caf Roubaix Bicycle Studio in Cochrane Alberta, where he

  • Dan Richter is a Canadian veteran of the Afghanistan war who operates a boutique bicycle shop, Caf Roubaix Bicycle Studio in Cochrane Alberta, where he produces custom-made wheels and sells bicycles.
  • In 2013, he received acease and desistletter from one of the biggest bicycle manufacturers in the industry, "Specialized Bicycle Components" (Specialized) threatening a lawsuit by Specialized and claiming that the use of "Roubaix" name infringed Specialized's trademark for a product line of bicycles. Roubaix is a city in France associated with the famous Paris-Roubaix bicycle race.
  • Richter could not afford the legal fees to fight the potential lawsuit, and the Calgary Herald picked up the story. Following an immediate media and public backlash, Advanced Sports International (ASI), the owner of the Roubaix trademark, advised Richter that he could continue using the name under a license from ASI.

How would you have advised Richter on the following questions if he had come to you for guidance?

1. Does every case of trademark infringement warrant legal action? Why or why not? Explain your answer.

2. What legal and ethical obligations should trademark owners consider before asserting trademark rights?

3. What could Richter have done to avoid being in breach of a trademark before naming his business?

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