question Entrepreneur Trademark

[magnificentdomains]

Have any of you been contacted regarding domain TM issues by Entrepreneur Magazine? Evidently they somehow have the keyword "entrepreneur" trademarked. Yes, just the single word. Evidently this can extend to any domain containing the keyword, entrepreneur.

 

[Janoss]

Surprised to see a company trying to own the word but trademark rights can be complicated.

 

[magnificentdomains]

In my case a few months ago a lawyer representing them contacted me regarding the name entrepreneur followed by a descriptive word dot com. They claimed rights to it based on the entrepreneur tm. They have not filed a udrp and I do still own the domain.

I have a large portfolio and just checked and have 6 other domains containing the keyword entepreneur. So far I have not been contacted about the others. I rarely ever get contacted regarding legal issues on a domain and was very surprised to see a TM on the keyword entrepreneur.

 

[Janoss]

Do you think they will try UDRP it? I wonder how a panel would decide the use of the word in a domain if it ever comes to that.

 

[jberryhill]

There has never been a UDRP containing the word "entrepreneur".

That's because they don't file UDRPs. They file lawsuits instead. And they've been at it very aggressively for a long time...

2:1998cv03607	Entrepreneur Media v. Scott Smith, et al	California Central District Court	05/08/1998	07/09/2003
2:1999cv04392	Entrepreneur Media v. Robert Chandler, et al	California Central District Court	04/23/1999	10/13/1999
8:2003cv01479	Entrepreneur Media v. E-Spirit Holdings, et al	California Central District Court	10/14/2003	04/05/2004
8:1995cv00035	Entrepreneur Media v. Surplus Agents, et al	California Central District Court	01/17/1995	06/16/1995
8:1997cv00945	Entrepreneur Media v. Jenkins Group Inc, et al	California Central District Court	11/21/1997	02/09/1998
8:1997cv01062	Entrepreneur Media v. Small Business Adv	California Central District Court	12/30/1997	02/13/1998
8:1998cv00495	Entrepreneur Media v. Stardock Systems Inc, et al	California Central District Court	06/08/1998	09/24/1999
8:1999cv00470	Entrepreneur Media v. Kidsway Inc, et al	California Central District Court	03/15/1999	07/07/1999
8:1999cv00720	Entrepreneur Media v. Jeff Busche, et al	California Central District Court	05/25/1999	07/07/1999
8:1999cv00721	Entrepreneur Media v. Greg McLemore, et al	California Central District Court	05/25/1999	07/12/1999
8:2005cv00749	Entrepreneur Media Inc v. Kurt M Markva et al	California Central District Court	08/01/2005	12/28/2005
8:2008cv00608	Entrepreneur Media Inc v. Eygn Limited Ernst & Young LLP et al	California Central District Court	06/02/2008	01/29/2009
8:2008cv01066	Entrepreneur Media Inc v. Rieva Lesonsky et al	California Central District Court	09/24/2008	12/17/2008
8:2011cv00722	Entrepreneur Media Inc v. American City Business Journals Inc et al	California Central District Court	05/11/2011	07/15/2011
8:2011cv01366	Entrepreneur Media Inc v. Light Point Holdings Corporation et al	California Central District Court	09/08/2011	11/02/2011
8:2011cv01368	Entrepreneur Media Inc v. Lawrence Capital Management LLC	California Central District Court	09/08/2011	10/20/2011
8:2011cv01765	Entrepreneur Media Inc v. Nikhil Vaidya et al	California Central District Court	11/16/2011	01/20/2012
8:2013cv00248	Entrepreneur Media Inc v. Nashville Entrepreneur Center	California Central District Court	02/12/2013	07/19/2013
8:2013cv00885	Entrepreneur Media Inc v. D. Nicole Enterprises LLC et al	California Central District Court	06/11/2013	02/20/2014
2:1994cv03386	Entrepreneur Media v. William A Griser	California Central District Court	05/24/1994	03/22/1995
3:2019cv05078	Entrepreneur Media Inc v. Hobley et al	Washington Western District Court	01/28/2019	04/16/2019
3:2013mc00005	Entrepreneur Media Inc. v. Smith d/b/a ENTREPRENEURPR	Virginia Eastern District Court	05/01/2013	05/02/2013
2:2018cv01083	Entrepreneur Media Incorporated v. Avatar Engineering Corporation et al	Arizona District Court	04/09/2018	07/13/2018
8:2007cv01077	Entrepreneur Media, Inc v. The Wall Street Journal et al	California Central District Court	09/14/2007	01/09/2008
8:2017cv01341	Entrepreneur Media, Inc v. Entrepreneurs Opportunities LLC et al	California Central District Court	08/02/2017	04/03/2018
8:2012cv02168	Entrepreneur Media, Inc. v. Ariadne Capital Limited et al	California Central District Court	12/14/2012	09/16/2014
8:2016cv00759	Entrepreneur Media, Inc. v. Karla Sandoval	California Central District Court	04/21/2016	09/21/2016
8:2017cv00973	Entrepreneur Media, Inc. v. Kim Flynn et al	California Central District Court	06/06/2017	09/22/2017
8:2017cv01070	Entrepreneur Media, Inc. v. O2E Brands, Inc. et al	California Central District Court	06/20/2017	10/12/2017
8:2017cv01084	Entrepreneur Media, Inc. v. The Entrepreneurs Workshop, Inc. et al	California Central District Court	06/22/2017	08/11/2017
8:2017cv02137	Entrepreneur Media, Inc v. Beyond Buzz, Inc. et al	California Central District Court	12/07/2017	01/25/2018
8:2017cv02261	Entrepreneur Media, Inc. v. The Innovation Initiative et al	California Central District Court	12/28/2017	09/07/2018
8:2018cv00341	Entrepreneur Media, Inc. v. Eric M. Dye et al	California Central District Court	02/28/2018	09/13/2018
8:2018cv01058	Entrepreneur Media, Inc. v. Darren Casey et al	California Central District Court	06/13/2018	02/22/2019
8:2018cv01182	Entrepreneur Media, Inc. v. Matthew Teresi et al	California Central District Court	07/05/2018	09/20/2018
8:2018cv01336	Entrepreneur Media, Inc. v. Kizzi Nkwocha et al	California Central District Court	08/01/2018	05/06/2019
8:2018cv01562	Entrepreneur Media, Inc. v. Michael Dermer et al	California Central District Court	08/31/2018	10/22/2019
8:2018cv02239	Entrepreneur Media, Inc. v. Emily Utter et al	California Central District Court	12/18/2018	04/01/2019
8:2019cv00729	Entrepreneur Media, Inc. v. Ronald Lee Pitsenbarger et al	California Central District Court	04/19/2019	03/01/2021
8:2019cv00967	Entrepreneur Media, Inc. v. Donald Bishop Stewart et al	California Central District Court	05/21/2019	12/05/2019
8:2019cv01706	Entrepreneur Media, Inc. v. John Doe et al	California Central District Court	09/06/2019	11/02/2020
8:2019cv01798	Entrepreneur Media, Inc. v. Katherine Ulanov et al	California Central District Court	09/19/2019	01/07/2020
8:2020cv01174	Entrepreneur Media, Inc. v. Erica Swallow, et al	California Central District Court	07/01/2020	09/30/2020
8:2020cv01690	Entrepreneur Media, Inc. v. Kelly Roach et al	California Central District Court	09/04/2020	11/09/2021
8:2020cv02226	Entrepreneur Media, Inc. v. Zavious J.Robbins et al	California Central District Court	11/23/2020	02/09/2021
8:2021cv00390	Entrepreneur Media, Inc. v. Rugged Entrepreneur, LLC et al	California Central District Court	03/01/2021	12/20/2021
8:2021cv00644	Entrepreneur Media, Inc. v. Anthony J. Alfonso et al	California Central District Court	04/06/2021	07/12/2021
2:2010mc00055	Entrepreneur Media Inc. v. Smith	California Eastern District Court	05/14/2010
5:2010mc80188	Entrepreneur Media, Inc. v. Smith	California Northern District Court	07/28/2010	07/28/2010
5:2011cv06140	Entrepreneur Media, Inc. v. Yeung	California Northern District Court	12/06/2011	02/27/2012
3:2012mc80236	Entrepreneur Media, Inc. v. Smith	California Northern District Court	10/04/2012
3:2015cv01415	Entrepreneur Media, Inc. v. Kirton Communications Group Limited et al	California Northern District Court	03/27/2015	09/22/2015
1:2017cv01637	Entrepreneur Media, Inc. v. Spencer et al	Colorado District Court	07/05/2017	12/15/2017
3:2013cv01819	Entrepreneur Media, Inc. v. Whitehill et al	Connecticut District Court	12/09/2013	08/27/2015

Entrepreneur Media, Inc. v. Kingsley Consulting, LLC et al	Delaware District Court	06/28/2018	10/23/2018
6:2013cv01843	Entrepreneur Media, Inc. v. Trades of Hope, LLC et al	Florida Middle District Court	11/26/2013	02/19/2014
6:2018cv02067	Entrepreneur Media, Inc. v. Mijan, LLC et al	Florida Middle District Court	11/30/2018	03/07/2019
3:2021cv00784	Entrepreneur Media, Inc. v. Rugged Entrepreneur, LLC, et al	Florida Middle District Court	08/12/2021	05/27/2022
1:2019cv00597	Entrepreneur Media, Inc. v. May et al	Illinois Northern District Court	01/29/2019	03/26/2019
1:2018cv07488	Entrepreneur Media, Inc. v. Scrutchens et al	Illinois Northern District Court	11/12/2018	10/16/2019
1:2009cv00342	ENTREPRENEUR MEDIA, INC. v. FINNEY	Indiana Southern District Court	03/19/2009	07/21/2009
1:2012cv01970	Entrepreneur Media, Inc. v. McLean-Deloatch	Maryland District Court	07/02/2012	04/07/2014
8:2013cv02130	Entrepreneur Media, Inc. v. Creel et al	Maryland District Court	07/23/2013	11/22/2013
0:2018cv01957	Entrepreneur Media, Inc. v. Brimacomb & Associates et al	Minnesota District Court	07/12/2018	01/23/2019
2:2012cv01346	ENTREPRENEUR MEDIA, INC. v. GRAY et al	New Jersey District Court	03/05/2012	10/22/2012
2:2012cv00483	Entrepreneur Media, Inc. v. Mitchell Schlimer et al	New York Eastern District Court	02/01/2012	06/08/2012
1:2016cv02640	Entrepreneur Media, Inc. v. The Roos Cohen Group, LLC	New York Eastern District Court	05/24/2016	10/24/2016
2:2021cv04162	Entrepreneur Media, Inc. v. BoxDrop, LLC. et al	Ohio Southern District Court	08/12/2021
2:2021cv05868	Entrepreneur Media, Inc. v. Rugged Entrepreneur, LLC et al	Ohio Southern District Court	12/22/2021
2:2022cv02292	Entrepreneur Media, Inc. v. Rugged Entrepreneur, LLC, et al	Ohio Southern District Court	05/27/2022
2:1998cv04987	ENTREPRENEUR MEDIA v. GRISER, et al	Pennsylvania Eastern District Court	09/18/1998	07/02/1999
2:1999cv01267	ENTREPRENEUR MEDIA v. GRISER, et al	Pennsylvania Western District Court	08/09/1999	09/10/2002
1:2011cv00315	Entrepreneur Media, Inc. v. e-entrepreneur-magazine.com et al	Virginia Eastern District Court	03/28/2011	04/22/2011
1:2011cv00409	Entrepreneur Media, Inc. v. SEATTLEENTREPRENEUR.COM et al	Virginia Eastern District Court	04/15/2011	12/06/2011
1:2011cv00583	Entrepreneur Media, Inc. v. B-Entrepreneur.com et al	Virginia Eastern District Court	05/27/2011	04/26/2012
1:2011cv00584	Entrepreneur Media, Inc. v. Entrepreneur.com	Virginia Eastern District Court	05/27/2011	01/12/2012
1:2011cv00807	Entrepreneur Media, Inc. v. entrepreneur-magazine.info et al	Virginia Eastern District Court	08/02/2011	04/20/2012
1:2012cv01375	Entrepreneur Media, Inc. v. ENTREPRENEURSSTARTUP.COM	Virginia Eastern District Court	11/29/2012	05/06/2013
3:2019cv00008	Entrepreneur Media, Inc. v. VIDA Group LLC et al	Virginia Western District Court	02/01/2019	07/23/2019

 

[MadAboutDomains]

@jberryhill would love to hear your thoughts on their trademark being "descriptive" or "generic" and that it has slipped through the net as others are suggesting?

 

[jberryhill]

that it has slipped through the net

It's a fairly heavily-litigated mark, as you can tell from the chart above. My thoughts are not as interesting as the conclusions that various courts have reached, such as the US Court of Appeals for the Ninth Circuit...

https://caselaw.findlaw.com/us-9th-circuit/1232894.html

I'd suggest you start reading at "a. The Strength of EMI's Mark"

“The strength of a mark is determined by its placement on a continuum of marks.”  E. & J. Gallo, 967 F.2d at 1291 (citation and internal quotation marks omitted).   The strongest marks-that is, those which receive the maximum trademark protection-are “arbitrary” or “fanciful.”  Id. The weakest marks, entitled to no trademark protection, are “generic.”  Id. In between lie “suggestive” and “descriptive” marks;  suggestive marks have the greater strength of the two.  Id. The issue here is whether EMI's mark “ENTREPRENEUR” falls within the suggestive or descriptive category.

...

On the record before us, it is apparent that the mark “ENTREPRENEUR” as applied to EMI's magazine and to computer programs and manuals falls within the descriptive category.3  The word “entrepreneur” describes both the subject matter and the intended audience of the magazine and programs;  an entirely unimaginative, literal-minded person would understand the significance of the reference.   As such, the word “describes the qualities or characteristics” of EMI's products, and is not merely suggestive.

...

We recognize, however, that “[a]lthough a suggestive or descriptive mark ․ is inherently a weak mark, it ‘may be strengthened by such factors as extensive advertising, length of exclusive use, public recognition․’ ” American Int'l Group, 926 F.2d at 832 (quoting Accuride Int'l, Inc. v. Accuride Corp., 871 F.2d 1531, 1536 (9th Cir.1989)).   The record indicates that EMI has used the trademark ENTREPRENEUR to identify its magazine since 1978 and that EMI sells more than a half million copies of Entrepreneur magazine monthly, with the total number of readers over two million monthly.

 

[Mize]

To me, this seems like a good example of what happens when an error is made, and a descriptive mark is registered (and why descriptive marks should not be allowed to be registered). To me, it also shows why errors should be corrected as quickly as possible instead of allowed to exist.

https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-1200d1e7074.html
(1209.01(b) Merely Descriptive Marks)
"The examining attorney is not required to prove that others have used the mark at issue or that they need to use it; the correct test is whether the mark conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods."

"It is not necessary that a term describe all of the purposes, functions, characteristics, or features of a product to be considered merely descriptive; it is enough if the term describes one significant function, attribute, or property."

I must be missing something or not understanding something correctly. Maybe the requirements were different when they got their trademark registered?

Thank you John for providing: "We recognize, however, that “[a]lthough a suggestive or descriptive mark ․ is inherently a weak mark, it ‘may be strengthened by such factors as extensive advertising, length of exclusive use, public recognition․’ ” American Int'l Group, 926 F.2d at 832 (quoting Accuride Int'l, Inc. v. Accuride Corp., 871 F.2d 1531, 1536 (9th Cir.1989)).   The record indicates that EMI has used the trademark ENTREPRENEUR to identify its magazine since 1978 and that EMI sells more than a half million copies of Entrepreneur magazine monthly, with the total number of readers over two million monthly."
The paragraph after that states:
"Nonetheless, EMI has not demonstrated that it has so strengthened its mark as to weigh this factor in favor of finding likely confusion.   At trial, EMI will have the opportunity to prove that its mark is stronger than it currently appears.   For present purposes-that is, for assessing whether EMI was entitled to summary judgment as to the likelihood of confusion-we credit the “ENTREPRENEUR” mark with only descriptive strength, because on this record EMI has demonstrated no more."
-----------------------------------

Help me understand how this is not an error....that continues to cause unnecessary problems.

 

[magnificentdomains]

Do you think they will try UDRP it? I wonder how a panel would decide the use of the word in a domain if it ever comes to that.

I'm not sure but the domain isnt high value (gev 2k). It currently has a for sale lander but I have given it some thought and have decided to release it to entrepreneur mag. Not because I agree with them. I just don't feel like I can sell it in good faith knowing this domain is on their radar and they may harass any future buyer.

I also sell a lot of names wholesale and wouldn't want another investor to get this domain in a batch sale by accident.

 

[Mize]

@jberryhill I looked at a few of the cases you provided.
Do you see a way to prevent the complainant from prevailing in those cases?

 

[Me83]

If all English words will be trademarks, lawyers will be happy.

There will be a needs to starting some new language or even total new way of communication.

 

[Me83]

Have any of you been contacted regarding domain TM issues by Entrepreneur Magazine? Evidently they somehow have the keyword "entrepreneur" trademarked. Yes, just the single word. Evidently this can extend to any domain containing the keyword, entrepreneur.

Why are you asking such questions? Have you been contacted, or do you have some entrepreneur domain to promote?

 

[Mize]

Have any of you been contacted regarding domain TM issues by Entrepreneur Magazine? Evidently they somehow have the keyword "entrepreneur" trademarked. Yes, just the single word. Evidently this can extend to any domain containing the keyword, entrepreneur.

I'm not sure but the domain isnt high value (gev 2k). It currently has a for sale lander but I have given it some thought and have decided to release it to entrepreneur mag. Not because I agree with them. I just don't feel like I can sell it in good faith knowing this domain is on their radar and they may harass any future buyer.

I also sell a lot of names wholesale and wouldn't want another investor to get this domain in a batch sale by accident.

This described your scenario well:

"Under the current trademark system, competitors cannot adequately predict the outcome of a threatened infringement action based on contested rights in a descriptive mark. Therefore, there is a significant risk that competitors will simply refrain from using descriptive terms after another business claims exclusive trademark rights in them via a trademark registration, trademark symbols, a strongly-worded cease and desist letter, or a complaint. Defending a trademark lawsuit is expensive and time consuming. Competitors who cannot afford to litigate will be forced to give up their right to use descriptive words in the public domain because there is a chance, however slight, that one business has exclusive rights to a descriptive term under current trademark law."

Which is from: Descriptive Trademarks and the First Amendment , 2005, Lisa P. Ramsey, University of San Diego School of Law

 

[Mize]

If a descriptive word is not registerable as a trademark and it is only allowed to be registered due to gaining secondary meaning:
It would seem, only the secondary meaning part (the additional meaning part) should be enforceable.

Anyone have any thoughts on this?