We are very proud and excited this month to finally let the cat out of the bag; it’s regarding something coming to fruition that we have been working toward for a very long time. As of February 1st, 2013, GayCalgary is a registered trademark!
In layman’s terms, to have our trademark registered means that we have proven ownership of the name GayCalgary and our logo design, and have exclusive rights to their use. It means we have proven to the Canadian Intellectual Property Office (CIPO) that we have distinguished the name as uniquely describing our business, enough that it cannot mean another company and is not vernacular. This affords us additional legal protection if our trademark is infringed upon, imitated, tampered with by altering or removing it from wares or print materials where it belongs, used or implied without permission, etc. Of course, it also prevents others from registering or using the same or a similar sounding name or trademark anywhere across Canada.
We’ve already started rolling out the new version of our logo with the (R) in place of the TM. However, because of our wide reach, our logo is out there in so many places that we anticipate it will take a few months before we are able to flush out every outdated instance (perhaps longer in some cases). We ask that any businesses or groups who have older digital copies of our logo on file, to please discard these copies and request the new logo from us as needed prior to using it on any new materials. It is still acceptable for our older logos to be displayed within images of the cover or content from past editions of the magazine.
It’s hopefully a little known fact until now, that a competing LGBT publication once registered www.gaycalgary.net and www.gaycalgary.org to direct internet traffic to their own website, even though they were fully aware we had been using the GayCalgary name for nearly 10 years at the time. We had documented occurrences of this same publication censoring our logo with black squares when it appeared in ads they were publishing for events that we sponsored. These acts were blatant attempts to cause confusion between our two products and brands – perhaps with the intention of poaching readers and advertisers, or simply blotting us out of existence in their world. We had a messy battle that ended with the other company underhandedly (in the middle of lawsuit proceedings, without informing their own lawyer) selling the assets of their magazine to a new owner so that we would have nothing to sue them for. As they did this, they also transferred ownership of the two domains to a company in India where Canadian law had no jurisdiction to demand they be given back to us. At the point the lawsuit was moot - they had already cut off their own foot - so we didn’t proceed. We eventually did get both domains back after their registration period lapsed and their company out in India didn’t renew. Having our trademark registered at this time would have ended the whole situation swiftly and in our favour.
Meanwhile in Winnipeg, Manitoba, we were aware of Swerve Magazine (now Outwords Magazine) being forced to change their name, despite having used it for many years, due to the Calgary Herald launching their own "Swerve Magazine". It was an accidental naming collision but, being run by a non-profit organization, the smaller Manitoba publication did not have the resources to take on the larger Calgary paper legally.
Horrors like these motivated us to take measures to protect our name and brand. Even though the price was steep to initiate a trademark application, we felt it was worth the investment. However, getting our trademark registered was no easy matter – in fact it was quite an ordeal. The process took nearly 5 years from start to finish.
At first we had a third-party company handle the filing of the application, but they bailed out at the first sign of trouble. Because the name GayCalgary didn’t directly describe the products that we offer through our business, it was necessary to make special case arguments. But we knew such a trade mark had to be obtainable because other companies had succeeded in registering trademarks such as GayCanada® and GayVancouver®.
I spent many nights studying application guidelines and trying to make sense of the reasons given for their initial rejections of our application. We went through several iterations where I would adjust our application, resubmit, wait for several weeks for CIPO to get back to us with objections, and then I would adjust further. With how busy we were just running the magazine, there were several times when we cut it close, or had to ask for extensions on our deadlines for responding to their concerns. It was nerve wracking with the threat looming of our investment going down the toilet if we didn’t succeed.
What didn’t help is that, initially, we were paired up with a trademark representative who was of the mind that we should be paying a trademark lawyer the big bucks to handle everything. As a result, he seemed reluctant to explain to us clearly what we needed to do to handle this ourselves.
Nevertheless, we were able to knock down the objections one by one, until we got to the juncture where we were required to prepare evidence to prove our trademark was recognized across Canada. After another dissatisfying conversation with our trademark rep about what this entailed, and our next deadline to respond or forfeit approaching fast, Steve finally managed to get a new rep to help us out. Thankfully it was a night and day difference – the tone of the conversation went from "I doubt you’ll pull this off, but try if you like" to "there’s no reason why you can’t do this". The new rep was glad to explain to us what constituted evidence of use, and what other information they were interested in, in order to satisfy their requirements. He also told us what we needed to do to request an extension, which we did.
For this next step in the process, it paid off to have "the archives". This is what we call the shelves full of boxes in our basement where we keep past editions of other publications, plus program guides, posters, catalogs and pamphlets from past events, concerts, and conferences. Our job was to sort through and catalog every occurrence that we could find of our logo appearing in publications across Canada (other than our own), as well as to document the estimated size and reach of audience that those print materials had received. Another catch was that we could only submit evidence from things that were published before our initial trademark application.
Ironically, the very publication that had tried to screw us became evidence in proving our trademark use across Canada. Because of our broad community involvement over the years, they had no choice but to let through numerous instances of our logo in ads that they published. We were able to feign ignorance and go with the print and distribution quantities that they claimed to advertisers, no matter how overinflated we knew them to be. They weren’t the keystone to our argument - we had a wide enough variety of other evidence that established our brand across Canada that we might have done without them – but they still worked in our favour. It felt satisfying on a karmic level to use the momentum from their own punches to trip them up in a way.
The guidelines for formatting the evidence that we provided to the trademark office were pretty loose, so we still did some nail biting as we waited to hear back from them on our submission. When we didn’t hear anything for several months, Steve finally phoned our rep to check if everything was alright.
Happily, our rep told us that our evidence was accepted, and that our trademark would be moving forward. Furthermore, he expressed that he was very impressed with the way we had prepared and organized the evidence – apparently a better job than he has seen paid trademark lawyers do.
This was very exciting news for us to hear, however we needed to wait through additional formalities before we could truly register the trademark. Once accepted, a trademark is published in a list for a period of 3 months, during which time anyone across Canada who can prove their own use of a conflicting trademark may raise objection, or if not, forever hold their peace. This was not an issue for our trademark, so the 3 months passed by uneventfully.
Finally, last month we paid an invoice for a nominal fee to finalize the registration of GayCalgary® as our trademark for the next 15 years. It was anti-climatic, but we were over the hump and this particular struggle was now in the past.
What a relief: one less thing on the back burners, and some peace of mind that we have earned exclusive rights to use the name GayCalgary, thus better enabling us to protect our brand by legal means should we ever need to.
January 2013
We hosted the memorial for our friend Don Turgeon at the Backlot, as mentioned in last month’s Publisher’s column. Many of his close friends from Calgary, and some even from Red Deer stopped by to pay their respects and reminisce with others at the function. We compiled a slide presentation of photos that we had from Don’s life, and played some of the mix CDs that we found amongst the stuff of his that we inherited. At one point in the evening, we all gathered around the room and took turns sharing our memories about Don. Even the people he clashed with back in the Boyztown/Rekroom days were able to look back on those times with a certain fondness. We’d like to thank the Backlot for hosting this event, East Village Café for catering, and La Fleur for providing flowers.
On a happier note, Cowboys Nightclub hosted an amazing event last month in partnership with OUTtv and GayCalgary Magazine that featured RuPaul’s Drag Race season 4 winner, Sharon Needles. While Sharon took to the stage for a few numbers, the focus was on selecting Calgary’s next drag superstar! A selection of contestants who applied for the competition were given the opportunity to perform and receive feedback from the panel of judges, which included Sharon. The contestants brought their A-game to the stage (including Ruby Hymen who used a disc grinder to shoot sparks from her belt buckle), making for a very entertaining night. At the end of the show, the judges selected their top 3 contestants, and the audience selected a winner by applause. Deva Dave came out the victor for her glamorous performance. Following the show, patrons lined up for the opportunity to meet Sharon and get their photo taken with her. Cowboys was so busy that it was hard to move, and all in all it sounded like the people who attended had a really fun time – on a Wednesday night, to boot!
On a general note about Cowboys Nightclub, I have to say it’s refreshing to see how friendly and helpful the staff have been toward their newfound LGBT clientele. One of the security staff came to help me up the stairs as I was overburdened with our coats, camera, tripod, and a bag of things. It was so kind and unexpected that it caught me a little off guard, but it was appreciated nonetheless.
This Month
Only a few days before press with this edition, FLASH Nightclub in Edmonton announced on their Facebook page that they are shutting down after February 23rd. Another bar is already slated to take its place after some renovations. This will leave Edmonton with only 2 gay bars still standing: Buddys and Woodys, on different floors of the same building along Jasper Avenue. Steamworks, the only remaining gay bathhouse in Edmonton, is next door to the two bars.