Frank Castiglione is frustrated.
The owner the two Sports Cut hairstyle locations in North Bay says he is feeling the heat from a competitor he believes shouldn’t be operating in Canada under its current name.
You see, Castiglione started Sports Cut here in North Bay back in 1998 and followed protocol by trademarking the name in Canada back in 2004.
In 2012, Sports Clips out of Texas, made its way into Canada and since then the franchise has been expanding across North America and even into locations as close as Collingwood, Ontario.
The affable barber was made aware of that when he lost one of his hair stylists to the competitor with the similar name.
“My biggest fear now is that it won’t allow me to expand. I’m worried if they come towards North Bay then that could kibosh my business that I started. And I did all the right things trade-marking myself to protect myself and now I look at situations like this where I hired my first two girls I’ve ever hired for Sports Cut at a new location, and one of them has now left to go work for Sport Clips. It’s effecting my business,” said Castiglione.
Castiglione says he was originally contacted by a Sport Clips attorney more than 10 years ago when he was initially going through the trademark process.
“Basically right out of the blue I got a call from a lawyer from their company, and he basically introduced himself as a lawyer for Sport Clips, and he mentioned to me that they were starting to franchise in the U.S. and were thinking about coming to Canada down the road but they saw that I was in the middle of being trademarked,” Castiglione recalled.
“From what I gather they had assumed there was already a conflict there if they were trying to come to Canada.
“So he basically mentioned to me on the phone that down the road, if I was interested, would I be willing to waive my trademark for X amount of dollars or join their team and work with them. So me, being young at that time, I didn’t even know what was going on so I said I would call them back.”
Castiglione followed up that call with the Gordon Logan, owner and founder of Sport Clips.
“I called them directly, spoke to the owner of Sport Clips in the U.S. and that’s where him and I chatted on the phone. I said to him if you are ever willing to sit down and talk I’d be willing to talk and he said they were doing well in the States and that’s where they were going to stay. That’s when I stopped hearing from them.”
That was the last time he heard from Sport Clips until he found out they had moved into Canada four years ago.
“That’s when I realized Sport Clips had already been trademarked in Canada and they started to expand this way north of the border,” said Castiglione.
“That’s when I contacted my trademark lawyer in Toronto and she sent them a letter saying you are infringing on our trademark and they basically wrote back and said we never heard of Sports Cut, so therefore just take us to court.”
BayToday.ca reached out to Sport Clips head office on Wednesday and shared the Castiglione’s concerns.
"Due diligence has been important for Sport Clips since it was founded in the early 1990’s,” Martha England, VP of Marketing for Sport Clips Haircuts stated in an email.
They said they would get back to BayToday.ca soon.
Castiglione followed up with the Trademark department as well, only to find out yet another company with a similar name, Ultimate Sport Cuts - based in Winnipeg - was able get trademarked too.
“I would like to get to the bottom of this and figure out why I was not protected properly when I did all the right things,” said Castiglione noting he spent between $4,000 to $6,000 to trademark his company name.
“When I called on this one I spoke to another [trademark] examiner who was completely stunned that the Winnipeg trademark got through. She had no answers for me. She basically apologized profusely on the phone saying, ‘I’m very sorry, I don’t know how that happened,’ but it had already been trademarked so there’s nothing we can do.”
BayToday.ca left a message for a trademark examiner who has dealt with Castiglione in the past, but the call has not been returned before our publication deadline.
Castiglione got another scare last summer when he had a visit to his Worthington location by a man who was looking at purchasing a Sport Clips franchise and open one location in North Bay and two others in Sudbury.
It was around that time that Castiglione knew he had to open his second sports themed business north of the city.
He hopes that expansion will protect him from the big American company from pushing into his hometown.
Bottom line is he knows trying to fight Sport Clips in court would be a battle he couldn’t win.
“I would be crazy to fight it in court because it’s David versus Goliath, it’s me against a big company,” said Castiglione.
“My lawyer basically told me straight out that they will try to drown you in court. So it’s not worth losing my livelihood that way but there’s still an opportunity I could lose my livelihood if they decide to come this way and that kind of stuff brings me tremendous anxiety even thinking about it because I have a little family here and it’s a scary thought.”
Castiglione hopes that going public with his story will perhaps lead to an investigation as to how a company with such a similar name and brand would be able to get through the trademark department.
“An American company with a similar name and similar concept from another country should have to negotiate with me to determine where we go from here,” said Castiglione.
“We could have worked out a deal or I could have joined their team and worked with them on this and expand in Canada since I was the first one in Canada with this awesome idea as well - working out a deal with my name or theirs."
