Trademark Bullies by Zick Rubin

Trademark Bullies
by Zick Rubin

Entrepreneur (en-tre-pre-nûr') n. A person who organizes, operates, and assumes the risk for a business venture. – American Heritage Dictionary of the English Language

Entrepreneur magazine is playing hardball to stop entrepreneurs from using the word entrepreneur. – New York Times Business Day, October 7, 2004

Entrepreneur magazine has been brandishing its registered trademark at dozens of other publications that include "Entrepreneur" in their titles, in what looks at first glance like an attempt to monopolize the normal use of the English language.

What's more, Entrepreneur has had extraordinary success in its effort. Last June, a federal court of appeals upheld a trial court ruling in California that forced a publicist named Scott Smith to stop calling his company EntrepreneurPR and its quarterly publication Entrepreneur Illustrated. Entrepreneur won a $1.4 million judgment against Mr. Smith, leading him to lay off his employees and declare bankruptcy.

Entrepreneur reportedly grabbed the World Wide Web domain name entrepreneur.com by threatening the domain name's former owner with a trademark infringement lawsuit and then buying the domain name at yesterday's-bagel prices. The owner of the domain name entrepreneurs.com, who was actually sued by Entrepreneur, said he "felt like I was being mugged. They are trying to commandeer this word and remove it from the language."

When I forwarded a New York Times article about the Entrepreneur cases to some of my clients and friends, they reacted with alarm. If Entrepreneur could successfully sue Entrepreneur Illustrated, could Time sideline TimeOut? Could National Geographic (established in 1888) pull the plug on National Review (newly arrived on the scene in 1955)? Could Money close down the U.S. Mint?

Others saw a business opportunity here. "I'm going to start God® Magazine," one colleague announced. "The royalties from the world's prayers alone would be enough for my wife and me to enjoy a truly lavish retirement." Another entrepreneurial friend, John Newman, said he would be satisfied with royalties for every time that Jerry Seinfeld said "Hey, Newman!"

In truth, Entrepreneur's recent court victory was an anomaly. Although a federal trademark registration can be a valuable asset, it does not ordinarily allow a company to take an English word out of circulation. Rather, the test is always whether consumers are likely to be confused into thinking that the second user of a trademark is connected with the first.

In the California case, there was evidence that Mr. Smith had intentionally misled people into thinking that his company had a special relationship with Entrepreneur magazine. This evidence – not merely the use of the word "entrepreneur" – tipped the scales in Entrepreneur's direction.

Anomalous or not, however, businesses and other organizations can learn a few lessons – both offensive and defensive – from the Entrepreneur saga.

On the offensive side, Entrepreneur's successes demonstrate the value of obtaining a federal trademark registration. Registration can transform an ordinary word into a noun with fangs. Especially after five years – at which time the registration can become "incontestable" – the registration can sometimes prevent a Johnny-come-lately from using a similar name, even when the name comes right out of the pages of the dictionary.

On the defensive side, one can often hold the line against an overbearing trademark owner. According to the New York Times article, Entrepreneur was unable to stop Ernst & Young from publishing an Ernst & Young Entrepreneur of the Year Magazine. Entrepreneur growled, Ernst & Young held its ground, and Entrepreneur retreated.

Even small companies can stare down trademark bullies. When the Village Voice tried to scare the newly established Cape Cod Voice into changing its name, the Cape newspaper hung tough and the Village Voice slunk away. "Small places have the right to their own voice," the Cape Cod Voice's heroic editor declared.

The legal test in all of these cases is the likelihood of confusion. If readers and prospective readers of the Cape Cod Voice are unlikely to think that they are reading a Village Voice spin-off, then the Village Voice has no case.

The bottom line is that while diligently protecting one's trademark is good business, being a trademark bully can be self-defeating.

Entrepreneurs of the world, unite! You have nothing to lose but the English® language.

The Law Office of Zick Rubin, located in Newton, MA, specializes in Publishing, Copyright and Trademark Law. Zick can be reached at: . His web address is: http://www.zickrubin.com.