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Entrepreneur Magazine's Trademark Hypocrisy

Ernst & Young sent Entrepreneur Magazine (EMI) a cease-and-desist letter demanding EMI not call their entrepreneur of the year contest "Entrepreneur of the Year." Entrepreneur Magazine filed for declaratory judgment against Ernst & Young (2008) claiming that Entrepreneur Magazine has the right to use the expression "Entrepreneur of The Year" because the expression is generic (which, of course, it is). Ernst & Young holds an incontestable trademark for "Entrepreneur of The Year."

Entrepreneur Magazine didn't mention its own "entrepreneur" trademarks are generic uses of the word "entrepreneur" which should also be canceled.

In 1990, EMI's attorney Henry M. Bissell sent a cease-and-desist letter to a company adopting the name "Entrepreneurs' Guild." The letter in part read:

…Entrepreneur, Inc. publishes a series of Guides and has pending or issued applications to register the following marks:

ENTREPRENEURS GUIDE TO BUSINESS START-UPS

ENTREPRENEURS GUIDE TO HOMEBASED BUSINESSES

ENTREPRENEURS GUIDE TO FRANCHISE & BUSINESS OPPORTUNITIES

According to advertising of your business in a booklet I received from the Sears-IBM tele-marketing venture called Prodigy,

The Entrepreneurs' Guild provides the latest business strategies through books, software, audiocassettes, and vidocassettes to help you manage your business more profitably, plus the monthly newsletter, ENTREPRENEURS' ALERT.

We consider that this activity constitutes a direct infringement of the trademark rights of our client. The goods appear to be identical in many respects and your use of the term "Entrepreneurs' Guild" creates an impression among members of the public that your business is another venture of Entrepreneur, Inc. or is somehow affiliated with or authorized by our client. In addition, there is very little discernible difference between our client's Entrepreneurs Guides and your term Entrepreneurs' Guild. [emphasis added]

We therefore demand that you terminate your use of the terms ENTREPRENEURS' GUILD, ENTREPRENEURS ALERT and any other terms which may be considered confusingly similar to our client's marks. We ask that you deliver up to us for destruction all products bearing the offending term, including promotional literature, books, software, audio cassettes, video cassettes, newsletters, and any other literature or similar products, together with the printer's mats, plates, and other items which are or may be used in the production of infringing products. In addition, you must immediately initiate action to change the listing of your venture in materials published by PRODIGY computer access service.

And, yes, Entrepreneur Magazine also sent a cease-and-desist letter to a publisher with the audacity to publish a series of books titled "Entrepreneur's Guide…" Another very generic use.

A cease-and-desist letter sent out by EMI's attorney Henry Bissell to the California Institute of Technology (Caltech) clearly demonstrates the overlap between EMI's use of the word "entrepreneur" and the generic use of the word. Bissell writes:

"We have become aware of a workshop called the THIRD ANNUAL ENTREPRENEUR'S WORKSHOP being promoted by Caltech to be held September 19, 1992 on the California Institute of Technology Campus. A copy of an ad which appeared in the IEEE Bulletin is enclosed for read reference.

We request that steps be taken immediately to change the name of this workshop. "ENTREPRENEUR" is a dictionary word and is free for the use of anyone in the non-trademark sense. However, as used in this advertising, it is a trademark use and it suggests that our client is somehow affiliated with or has authorized Caltech's activities regarding this workshop.

Our client would have no objection to your referring to the THIRD ANNUAL WORKSHOP FOR ENTREPRENEURS. As it is presently used, it constitutes an infringement of our client's rights and we will have no choice but to take action to stop any further infringement."

While necessarily taking a much less strident tone against Caltech than in its cease-and-desist letters to smaller legally-defenseless entrepreneurs, Bissell's letter fundamentally misrepresents the nature of trademark law with self-serving, but deeply flawed, logic. Within an industry, "trademark" and "generic" are mutually exclusive. There is no trademark sense and "non-trademark sense" of a word in the same industry. (A generic term which is in common, generic use within an industry cannot also be a trademark within that industry. "The terms `generic' and `trademark' are mutually exclusive." J. Thomas McCarthy, 1 McCarthy on Trademarks and Unfair Competition § 12.01[1], at 12-3 (3rd ed., Release #3, 1994).)

Are we seriously to believe that entrepreneurs would understand they could hold a "workshop for entrepreneurs" but that an "entrepreneur's workshop" would be verboten by Entrepreneur Magazine's trademark rights? This letter shows EMI uses ENTREPRENEUR within the heartland of the word's dictionary definition and generically.

In registering "American Entrepreneurs' Association," (TM Registration 1343166) Bissell strenuously objected to the demanded disclaimer of "Entrepreneurs Association" which the examining attorney correctly identified as an unregisterable term. Using his modus operandi, Bissell vociferously and essentially argued that no disclaimer was required for "entrepreneurs" because he had managed to get other registrations past other trademark examining attorneys without the proper disclaimers.

Clearly, if you're an "entrepreneur's association," you're an "entrepreneur's association." To Michigan Entrepreneur's Association, Bissell wrote: "We demand that you immediately discontinue all use of the term MICHIGAN ENTREPRENEUR'S ASSOCIATION or any other confusingly similar term in connection with goods and services in the fields occupied by our client."

EMI at one time or another has claimed exclusive rights to "Entrepreneur's Guide," Entrepreneur's Association, and Entrepreneur's Workshop. Me thinks Entrepreneur Magazine is the pot calling the kettle black.