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EntrepreneurPR's Viewpoint
Last week, we included an editorial about
Entrepreneur Magazine winning a judgment against Scott Smith and his company, EntrepreneurPR. After reading the story, Mr. Smith contacted us and asked for the chance to express his thoughts on the lawsuit. His comments follow.

Judge Rules 'Entrepreneur'
No Longer Part of Public Domain

by Scott Smith

Does your company use commonly-used words as part of any trademarks or websites? If so, you may find yourself at the wrong end of a very costly trademark infringement lawsuit. I know what you're thinking, "you can't trademark commonly-used words such as 'money,' 'teacher,' and 'entrepreneur'"!

Believe it or not, it can happen, and on June 25th, 2003, federal judge Florence-Marie Cooper ruled that Entrepreneur Magazine's "entrepreneur" trademark, "is a strong distinctive mark, deserving of significant protection."

In other words, when hearing or seeing the word "entrepreneur," Judge Cooper believes most people first think of Entrepreneur Magazine, and not of its widely-accepted dictionary definition of being, "a person who organizes, operates, and assumes the risk of a business venture." Judge Cooper's strange ruling defies common sense, evidence presented at trial, and contradicts U.S. intellectual property laws. Companies are not supposed to be able to so easily gain ownership of commonly-used words or phrases. What's next, Golf magazine suing Golf Illustrated, Hispanic magazine suing Hispanic PR Wire, or Money magazine suing Money.net?

This ruling could give Entrepreneur Magazine the strongest trademark rights ever granted to a magazine named after a very commonly-used word. In fact, anyone using "entrepreneur" as part of a trademark or website, is now at tremendous risk of being sued and ordered to pay substantial damages to Entrepreneur Magazine -- even though there is no synonym for the word "entrepreneur." For example, Judge Cooper ruled that EntrepreneurPR must pay Entrepreneur Magazine a whopping $669,656 in damages, plus attorneys fees that may be in the "high six figures."

How could one company be granted control of such a commonly-used word as "entrepreneur"? This was a judge trial, not a jury trial, and as stated by a leading intellectual property attorney, "the judge seems biased and may have distorted the evidence presented." Indeed, in February 2002, a three judge panel of the higher ranking Ninth Circuit U.S. Court of Appeals, unanimously overturned Judge Cooper's earlier June 2000 ruling on this same case. The appellate court's ruling stated that, "[Entrepreneur Magazine's] mark is weak -- descriptive of both its subject matter and intended audience…the common and necessary uses of the word 'entrepreneur' provide strong evidence that [Entrepreneur Magazine] cannot have the exclusive right to use the word 'entrepreneur'…there is also a broad societal interest in preserving common, useful words for the public domain. We do not want to prevent the commercial use of descriptive words to name products, as straightforward names are often the most useful identifiers."

Judge Cooper continuously ignores evidence against Entrepreneur Magazine's claims of having extensive trademark rights to the word "entrepreneur." Countless companies use "entrepreneur" as part of their trademarks, websites and publications -- people from Entrepreneur Magazine even freely admitted under oath to this indisputable fact (i.e. Ernst & Young's "Entrepreneur of the Year" awards, The Entrepreneur's Source, Minority Business Entrepreneur magazine, etc).

This ruling is additionally troubling because Judge Cooper also relies on testimony from a handful of former EntrepreneurPR clients who all admitted to having a history of significant payment problems with EntrepreneurPR. The appellate court already ruled that payment disputes are a credibility issue, and some of these companies admitted that other courts have already granted EntrepreneurPR large default judgments against them, some for in excess of $10,000. We don't know what incentives, if any, Entrepreneur Magazine may have offered these companies, however, we do know that Entrepreneur Magazine is increasingly desperate to win its first protracted legal battle over the word "entrepreneur." We also know that none of these companies could explain why they never mentioned their supposedly long-held confusion between EntrepreneurPR and Entrepreneur Magazine -- until after years of being relentlessly pursued by Entrepreneur Magazine's attorneys (Entrepreneur Magazine's attorneys also went after EntrepreneurPR's thousands of media contacts, and every staff member they could find, but none testified to any confusion between EntrepreneurPR and Entrepreneur Magazine).

What's next for "entrepreneur"? Although it has already cost in excess of $100,000, and over five years, we are not about to give up. In fact, we have already started working on again appealing this judge. We have also started an Entrepreneur Legal Defense Fund, so all "entrepreneurs" can help stop Entrepreneur Magazine's efforts to hijack the word "entrepreneur" (for additional information, email me at: scott@entrepreneurpr.com).

~ Scott Smith

Resources:
U.S. Patent & Trademark Office: search trademark section to see how many companies besides Entrepreneur Magazine have trademarks that incorporate the word "entrepreneur." Also see if any of your company's trademarks might be similar to other trademarks.
Whois.net: use "search by domain name or keyword" function to see how many domain names include the word "entrepreneur."
Female Entrepreneur magazine: new magazine Entrepreneur Magazine has also threatened for using "entrepreneur" as part of its name.
Entrepreneurs.com: somewhat outdated site, but good for reviewing Entrepreneur Magazine's efforts to own the word "entrepreneur."
The MicroEnterprise Journal: a weekly business news periodical that has written several articles about Entrepreneur Magazine's lawsuits over the word entrepreneur.
YouMayBeNext.com: website by several small companies that have been attacked by Pangea Intellectual Properties, LLC (PanIP), a company that has been filing patent infringement lawsuits against several small businesses around the country, claiming licensing fees of $30,000 a year from each of them for their use of their allegedly patented e-commerce system (source: microenterprisejournal.com).


Scott Smith is the founder and president of EntrepreneurPR, a firm that provides national public relations services for newsworthy entrepreneurs. Scott's clients and services have been featured by a number of leading media organizations, including Businessweek, The Wall Street Journal, and CNN.

 

 

 

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