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In the fall of 2006, Smith finally found some support from the legal system when U.S. Bankruptcy Court Judge Brett Dorian issued an Order to Show Cause demanding that Entrepreneur magazine—and their attorneys—substantiate their claims, or pay $10,000,000.00 in sanctions.For an update on what has transpired since then, see Scott Smith's April 26, 2008 news release here. He has filed a second trademark fraud case against Entrepreneur Media Inc. (EMI), publisher of Entrepreneur magazine. Smith's latest case alleges that EMI defrauded the U.S. Patent & Trademark Office (PTO) by making "willful false statements" in an elaborate scheme to acquire "Entrepreneur Expo" trademarks.
FOR MORE BACKGROUND INFO . . .You can find all the court documents related to this case at Entrepreneur.net.
Judge Rules "Entrepreneur"
by Scott Smith
Does your company use commonly-used words as part of any trademarks or Web sites? 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 25, 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 Web site, 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, Web sites 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 and The Entrepreneur's Source, 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 firstname.lastname@example.org.)
ResourcesU.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:A new magazine Entrepreneur Magazine has also threatened for using "entrepreneur" as part of its name. (UPDATE: The magazine ultimately changed its name and Web site to "Fem-Preneur," but the link to that Web site has now gone bad.)
Entrepreneurs.com: somewhat outdated site, but good for reviewing Entrepreneur Magazine's efforts to own the word "entrepreneur."
Due to Entrepreneur Magazine's aggressive efforts to monopolize the word "entrepreneur," "EntrepreneurPR" was forced to change its name to "BizStarz" in June 2000 and again in July 2003 (despite a February 2002 unanimous ruling by the 9th Circuit U.S. Court of Appeals, that Entrepreneur Magazine's trademark is "weak" and that it does not have exclusive rights to the word "entrepreneur"). BizStarz is again appealing to the 9th Circuit U.S. Court of Appeals to rule that Entrepreneur Magazine does not have exclusive rights to the word "entrepreneur."
June 2004 UPDATE: Smith lost round three of this battle when a ninth circuit Federal Appeals Court ruled in favor of EMI. Down but not yet out, Smith still has some options to pursue, including a request for a re-hearing or a possible Supreme Court appeal. At the moment, small business owners longing to provide goods and services to small business owners are also losers here because they cannot legally use the word "entrepreneur" in reference to the products and services being offered to this market. For more information on the latest ruling, visit the following sites or Web pages:
Entrepreneur.net - This site now includes an audio file of the federal appeals court hearing, and a lawsuit Entrepreneur magazine filed against Female Entrepreneur Magazine).