Petition To Cancel Entrepreneur Media's Trademarks of "Entrepreneur" (Genericness and Fraud)

"Entrepreneur" is Generic With Respect to Books In The Subject Area of Entrepreneurship

Merriam-Webster's Collegiate Dictionary, Tenth Edition defines the noun "entrepreneur" as:

"(1852): one who organizes, manages, and assumes the risks of a business or enterprise--entrepreneurial …entrepreneurialism… entrepreneurially… entrepreneurship [emphasis added]."

Trademark Serial Number 76679564 lists goods and services as:

"Paper goods and printed matter, namely books, manuals, prepared reports, work books, study guides, legal and business forms, and newsletters concerning advice and information relating to the subjects of starting, running and operating a business, and individuals who succeed in business, which subjects are of interest to entrepreneurs, new and existing businesses and members of the general public; in International Class 16."

EMI refuses to disclaim proprietary ownership of the generic word "entrepreneur." Terms which are commonly descriptive of a product's genus or class are properly held to be generic.

In holding "Filipino Yellow Pages" was generic, the court said "Filipino" was generic when it was used within the dictionary definition. (Filipino Yellow Pages, Inc. v. Asian Journal Publs., Inc., 198 F.3d 1143, 1151 (9th Cir. 1999). The Federal Circuit has held "Lawyers" to be generic (In re Reed Elsevier Properties Inc., 77 USPQ2d 1649 (TTAB 2005). A case most similar to the "entrepreneur" trademark situation is the "Blinded Veterans" case. (Blinded Veterans Association v. Blinded Veterans Foundation, 872 F.2d 1035, 1041 (D.C. Cir. 1989)). The term "Blinded Veterans" was held to be generic when used to refer to Blinded Veterans.

A logo can be generic, if the logo is associated with a class of products and not with one particular producer. With respect to telephone directories, a walking finger logo was held generic because the logo was associated with phone directories in general. (BellSouth Corp. v. DataNational Corp.,60 F.3d 1565, 35 USPQ2d 1554 (Fed. Cir. 1995), aff’g, 18USPQ2d 1862 (TTAB 1991))

Even trade dress can be generic if the nature of the trade dress refers to the product's genus. SUNRISE JEWELRY MFG. CORP v. FRED S.A Fed. Cir. 98-1022 (1999) discusses the concept of "generic name" as applied to trade dress. The court concluded that "generic name" must be broadly interpreted and encompasses things that are not be considered a "name" in the colloquial sense. Citing the Supreme Court, the Sunrise court explained:

By definition, something that is generic cannot serve as a trademark because it cannot function as an indication of source. See In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 1569, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987). In Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189 (1985), the Supreme Court explained that "[a] generic term is one that refers to the genus of which the particular product is a species. . . . Generic terms are not registerable, and a registered mark may be canceled at any time on the grounds that it has become generic." [emphasis added] See id. at 194. The Court emphasized several times throughout its opinion that the registration of an incontestable mark that becomes generic may be cancelled at any time. See id. at 195, 197, 201, 202.

Our review of the Lanham Act and relevant case law persuades us that the term "generic name" as used in 15 U.S.C. 1064(3), must be read expansively to encompass anything that has the potential but fails to serve as an indicator of source, such as names, words, symbols, devices, or trade dress. [emphasis added] Any narrower interpretation of "generic name" would allow incontestable trademarks other than names that become generic to retain incontestable status despite their inability to serve as source designators. This would directly contravene the purpose of the Lanham Act. Cf. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 773 (1992) (finding no persuasive reason to apply different analysis to trademarks and trade dress under 43 of the Lanham Act because the protection of both serves the same statutory purpose).

For example, those aspects of a golf hole which are common to all golf holes (or, equivalently, commonly descriptive of all golf holes) cannot be protected as trade dress and would be deemed generic (Pebble Beach Co. v. Tour 18 Ltd., 155 F.3d 526 (5th Cir. 1998)). (Also see Ale House Management, Inc. v. Raleigh Ale House, Inc. (4th Cir. 2000) which discusses the concept of "generic" as applied to trade dress.)

Terms which are deemed to be "so highly descriptive as to be incapable of exclusive appropriation as a trademark" are also classified under "generic." See TMEP 1209.01(c)(ii). "The expression 'generic name for the goods or services' is not limited to noun forms but also includes 'generic adjectives,' that is, adjectives that refer to a genus, species, category or class of goods or services. In re Reckitt & Colman, North America Inc., 18 USPQ2d 1389 (TTAB 1991) (PERMA PRESS generic for soil and stain removers for use on permanent press products)." TMEP 1209.01(c)(ii).

The proper test to determine genericness is to first determine the genus of product or services in question. Then, if the term in question refers back to that genus, the term is generic. The genericness inquiry is made according to a two-part test: "First, what is the genus of goods or services at issue? Second, is the term sought to be registered . . . understood by the relevant public primarily to refer to that genus of goods or services?" H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 990 (Fed. Cir. 1986) (also see TMEP 1209.01(c)(i))

In the citable decision In re Rodale Inc. USPQ2d (TTAB 2006), the TTAB held NUTRITION BULLETIN generic using the established two-part genericness test and observed:

"Although we admit that we are somewhat troubled by the fact that applicant already has obtained various Supplemental Register registrations of BULLETIN marks… we nonetheless find, based on the clear evidence of genericness which is presented in this case, that NUTRITION BULLETIN is generic for the services recited in the applicant's application. Although consistency in examination is a goal of the Office, the decisions of previous Trademark Examining Attorneys are not binding on us, and we must decide each case based on the evidence presented in the record before us. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001)"

Entrepreneurship is widely accepted as the generic name classifying books related to starting and running a business. The Library of Congress recognizes it as a subject heading for books (Library of Congress Call Number HB615 corresponds to Entrepreneurship). Libraries recognize it. Amazon.com, the mega-bookseller, recognizes it. (exhibit list)

Further, when discussing EMI's books, "books about entrepreneurship" is the relevant class. EMI publishes books about entrepreneurship. EMI's own application describes it books as:

"…information relating to the subjects of starting, running and operating a business, and individuals who succeed in business, which subjects are of interest to entrepreneurs, new and existing businesses…"

EMI's books are classified under the subject named as entrepreneurship. (exhibit) It cannot be reasonably challenged that the proper class or genus for consideration of EMI's books is "books about entrepreneurship" or "entrepreneurship books." (exhibit) The class is widely recognized.

We can now turn to the second part of the genericness test. Does the term in question refer back to the genus? The term in question is the word "entrepreneur" which is the root word defining entrepreneurship. It is the word that fundamentally names and defines the class. The term "entrepreneur" clearly relates back to the class. It is commonly descriptive of the class. Thus, following the steps in the most fundamental test to determine genericness, we conclude the word "entrepreneur" is generic ab initio. The word "entrepreneur" is and has always been generic when discussing books about entrepreneurship.

Page 1078 of Merriam-Webster's Collegiate Dictionary Tenth Edition defines the common suffix -SHIP as:

-ship suffix 1: state: condition: quality <friendship> 2: office: dignity: profession <clerkship> 3: art: skill <horsemanship> 4: something showing, exhibiting, or embodying a quality or state <township> <fellowship> 5: One entitled to a (specified) rank, title, or appellation <his lordship> 6: the body of persons participating in a specified activity <readership> <listenership>

Applying the suffix to ENTREPRENEUR, we see that entrepreneurship is 1) The quality or state of being an entrepreneur 2) The profession of being an entrepreneur 3) The art and skills of being an entrepreneur 4) something showing, exhibiting or embodying the state of being an entrepreneur 5) One entitled to be called an entrepreneur and/or 6) The body of persons participating in the activity of being an entrepreneur.

Clearly under any reasonable interpretation, the word ENTREPRENEUR is intimately tied to the subject area defined today as entrepreneurship. If entrepreneurship is given the interpretation of being the body of people who participate in the activity of being an entrepreneur, this is the "entrepreneur class" as recognized as early as 1885 by F.A. Walker, in A Brief Text-Book of Political Economy. This makes the term ENTREPRENEUR fully generic when discussing the field of information defined as entrepreneurship. The entrepreneur class is synonymous with entrepreneurship.

If entrepreneurship is defined as the art and skills of being an entrepreneur, we again see the term ENTREPRENEUR is fully generic. In this interpretation, entrepreneurship is defined as the "art and skills of being an entrepreneur." The class of knowledge, skills, and the art of being an entrepreneur is inseparable from the word entrepreneur. The word "entrepreneur" intrinsically names the class.

Answers.com defines entrepreneurship:

"A subject taught in many high schools and colleges, entrepreneurship is actually defined as 'the state of being an entrepreneur.' An entrepreneur is an individual who owns, organizes, and manages a business and, in so doing, assumes the risk of either making a profit or losing the investment."

Allwords.com defines entrepreneurship as "the quality of being an entrepreneur."

EMI's own website entrepreneur.com has an "encyclopedia" which defines "Entrepreneur" as:

"Definition: Someone who assumes the financial risk of the initiation, operation, and management of a business.

In the most general sense of the word, an entrepreneur is someone who organizes a business venture and assumes the risk for it. But true entrepreneurship goes way beyond that simple definition."

A search of Microsoft's online dictionary Encarta for the term "entrepreneurship" brings up the definition of "entrepreneur." An online search of dictionary.com for "entrepreneurship" also immediate brings up the definition of "entrepreneur." The dictionary doesn't separate the definition of entrepreneurship, a recognized Library of Congress subject heading for books, from the definition of entrepreneur.

In deciding Lawyers.com was generic, the Court wrote:

"Under the circumstances we find the genus of services to be providing a web site with a database of information covering the identified topics of law, legal news and legal services and that a central and inextricably intertwined element of that genus is information about lawyers and information from lawyers. " (In re Reed Elsevier Properties Inc., 77 USPQ2d 1649 (TTAB 2005)

The United States Court of Appeals for the Federal Circuit upheld the Lawyers.com genericness conclusion and the genus categorization (In re Reed Elsevier Properties Inc. (Fed Cir. 2007)) observing:

…for better or worse, lawyers are necessarily an integral part of the information exchange about legal services.

Similarly, for information in the field of entrepreneurship (which includes writing about and for entrepreneurs), the term ENTREPRENEUR is an "inextricably intertwined element" of that genus. When providing information about the field of entrepreneurship, the term ENTREPRENEUR is generic. This makes the term generic not only with respect to books about entrepreneurship (a Library of Congress subject heading for books), but also for the genus of services defined as providing information about entrepreneurship via websites.

 

Overwhelming Generic History And Use Of "ENTREPRENEUR"

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). Generic terms are in the public domain, and may be used freely by anyone.

Types of evidence to determine whether a mark is generic include: (1) dictionary definition; (2) generic use of the term by competitors and other persons in the trade; (3) the trademark holder's own generic use; (4) generic use in the media and in customer surveys. (Pilates, Inc. v. Current Concepts, Inc. 120 F. Supp. 2d (S.D.N.Y. 2000), PILATES held generic.)

1. Dictionary Definition

Webster's New Collegiate Dictionary says the noun, "Entrepreneur" originates from the French word entreprendre, which means "to undertake." Currently, Webster's New Collegiate Dictionary defines "Entrepreneur" as "one who organizes, manages, and assumes the risks of a business or enterprise. — entrepreneurial adjective; entrepreneurship noun."

Exhibit __ includes other dictionary definitions of "entrepreneur." No dictionary association is made to the company Entrepreneur Media, Inc. as the producer of informational products for entrepreneurs. Entrepreneur Media, Inc. did not invent the term "entrepreneur" which has been in use since 1852 (One hundred and twenty six years before Entrepreneur Media, Inc. existed) to refer to spirited people who begin businesses or undertake other various enterprises.

The word "entrepreneur" entered the dictionary in 1933. This basic dictionary definition hasn't changed since 1933. In fact, as Chapter 1, "The Making of The Entrepreneur," from The Rise of The Entrepreneur (Published in 1969, by J.W. Gough, Exhibit __) shows, the use of the word "entrepreneur" with the above definition predates the existence of the modern dictionary by 12 years. The dictionary, itself, is a relative upstart when compared to the word "entrepreneur."

The word "entrepreneur" was introduced from The French Language into the English Language because the English language lacked a word to name an entrepreneur. In 1901, Richard Ely, writing in An Introduction to Political Economy, in classifying and discussing the various forces at work within an economy, states:

The Entrepreneur.-- The one who manages business for himself was formerly called an undertaker or an adventurer, but the first word has been appropriated by one small class of business men, and the latter has acquired a new meaning, carrying with it the implication of rashness and even of dishonesty. We have consequently been obliged to resort to the French language for a word to designate the person who organizes and directs the productive factors, and we call such a one an entrepreneur.

In 1885, F.A. Walker, in A Brief Text-Book of Political Economy, page 60, writes that organizing the capital and labor of a business is so complex that:

"…a distinct class is called into being, in all industrially advanced communities, to undertake that function. This class is known as the employing class, or, to adopt a word from the French, the entrepreneur class."

Thus, as far back as 1885, the "entrepreneur class" was recognized as a significant subset of the entire population. As discussed, the "entrepreneur class" is synonymous with entrepreneurship.

The existence of a dictionary definition before the time Entrepreneur Media, Inc. first began using the word "entrepreneur" is sufficient to show that the word "entrepreneur" was in the public domain and was generic when used within the dictionary definition, i.e., "one who organizes, manages, and assumes the risks of a business or enterprise."

Dictionary words when used within the heartland of the word's dictionary definition are generic. One of the few cases that addresses the trademarkability of common words within their common usage was argued before the Fourth Circuit Court of Appeals (AMERICA ONLINE, INCORPORATED v. AT&T Corporation (No. 99-2138). In its published decision, the Court concluded:

"We agree with the district court that when words are used in a context that suggests only their common meaning, they are generic and may not be appropriated as exclusive property. [emphasis ours] Cf. generally 2 McCarthy on Trademark & Unfair Competition § 11:11 (4th ed.1997) (hereinafter McCarthy) (noting that "common" words may be used as trademarks when used in an arbitrary, rather than familiar context)."

The Court continued:

"At bottom, the law of trademarks intends to protect the goodwill represented by marks and the valid property interests of entrepreneurs in that goodwill against those who would appropriate it for their own use. But it likewise protects for public use those commonly used words and phrases that the public has adopted, denying to any one competitor a right to corner those words and phrases by expropriating them from the public "linguistic commons [emphasis ours]."

All dictionary evidence and the historical linguistic record overwhelmingly indicates that ENTREPRENEUR is a generic word which exists in the public domain as it is used by Entrepreneur Media, Inc.

A search of the dictionary definition of "entrepreneurship" shows this Library of Congress subject heading is intimately and intrinsically intertwined with the definition of "entrepreneur." Dictionaries do not separately define "entrepreneur" and "entrepreneurship." Both definitions are listed under the same entry.

It is proper to conclude a prospective reader seeking information about entrepreneurship and starting a business will understand the word "entrepreneur" to refer to its dictionary definition. The word will be understood to mean "somebody who starts and runs a business." Accordingly, the dictionary definition must weigh strongly, overwhelmingly, and conclusively in favor of genericness.

 

2. Generic Use By The Book Publishing Trade, Competitors, And Providers of Entrepreneurship Information To Entrepreneurs

The trade in question includes the segment of the book publishing industry publishing books about entrepreneurship, i.e., starting and running a business. In addition, there is a large for-profit and non-profit industry providing information to entrepreneurs about entrepreneurship online and through seminars. This body of information is widely known as "entrepreneurship" named by the root word entrepreneur. Within the industry of providing information about entrepreneurship to entrepreneurs, use of the term ENTREPRNEUR is overwhelmingly generic.

Representative use of the word "entrepreneur" from the book, The Theory of Economic Development: An Inquiry into Profits, Capital, Credit, Interest, and the Business Cycle by Joseph A. Schumpter, which has a copyright date of 1934, is attached (Exhibit __). Such use clearly associates "entrepreneur" with its dictionary definition when discussing starting a business.

Despite aggressive attempts of Entrepreneur Media, Inc. to prevent other upstart publishing companies from using the generic word "entrepreneur" in their name, Books In Print associated twenty-five publishing companies with a search of the generic word "entrepreneur" in 2001. (Exhibit G Attached).

EMI was not the first or the only company to incorporate the generic word "entrepreneur" into its business name. Exhibit __ shows many companies included the generic word "entrepreneur" into their business name during the time EMI claimed "substantially exclusive use" of the generic word as a proprietary source-identifier of its company. A sampling of these companies include (search made for corporations registered in Texas and California):

Entrepreneur Services, Inc. (TX corporation search, 1986)

Entrepreneur Ventures Incorporated (TX corporation search, 1980)

Entrepreneurs Inc. (TX corporation search, 1984)

Entrepreneur Island, Inc (TX corporation search, 1983)

Entrepreneurs Social Club, Inc. (TX corporation search, 1983)

Spanish American Entrepreneur, Inc. (TX corporation search, 1980)

California Small Business Entrepreneur Alliance (CA corporation, 1973)

Entrepreneur Development Agency Corp (CA corporation search, 1982)

Entrepreneur Management Group, Inc. (CA corporation, 1983)

Entrepreneur Management, Inc, (CA corporation, 1985)

Entrepreneur Imports, Inc. (CA corporation, 1984)

Entrepreneurs Trade Corporation (CA corporation, 1984)

International Marketing Entrepreneurs Corporation (CA corporation 1963)

Entrepreneur's Fraternal Exchange (CA corporation, 1976)

Bay Area Women Entrepreneurs (CA corporation, 1979)

Atlantis Entrepreneurs, Inc. (CA corporation, 1981)

Associated Entrepreneurs, Inc. (CA corporation, 1970)

4 Entrepreneur's, Inc (CA corporation 1983)

Entrepreneur's Capital Network, Inc. (CA corporation 1985)

Entrepreneur's Bookstore, Inc. (CA corporation, 1986)

Communication Entrepreneurs Corporation (CA corporation, 1980)

Entrepreneur's Development Equity (CA corporation, 1985)

It's important to clarify a possible point of confusion. The definition of entrepreneur is inherently a generic reference to a provider of goods and services. Entrepreneurs provide goods and services. This is one reason the word "entrepreneur" standing alone cannot properly refer to one unique provider of goods and services in a trademark sense. In the mind of the public, the term "entrepreneur" will often be understood to identify a source of goods, the entrepreneur. EMI seeks to seize the generic reference as a provider of goods and services and reassign it to itself. As the company listings show, EMI has no legitimate right to have claimed proprietary ownership of the term ENTREPRENEUR as its business name. Many entrepreneurial companies have quite naturally incorporated the generic word "entrepreneur" into their business name.

The word "entrepreneur" is also in common usage among book authors who write about entrepreneurship, including authors who define themselves as an "entrepreneur." When used in books, the use of the word "entrepreneur" follows the generic dictionary definition of the word. A 2001 search of Books In Print shows that 761 books are associated with the single word "entrepreneur." Of these, 56 books are published by Entrepreneur Media, Inc. A small sample of book titles making use of the word "entrepreneur" include:

(See Exhibit of Book List--Exhibit E)

In most cases, the use of the word "entrepreneur" or its variants refers to the book's target audience, as in "This book is for entrepreneurs." Equivalently, it tells the reader the book is about the field of entrepreneurship. Notice, in particular, how commonly "entrepreneur's guide" is used.

A title such as, The Entrepreneur's Guide to Business Law (Published by West Legal Studies) could be confusing as to its proprietary source, if we allow "Entrepreneur" to be accepted as the trademarked source of products by EMI. Allowing a trademark of the word "entrepreneur" by a company selling informational products to entrepreneurs would impose upon authors and publishers an unfair burden by denying them generic use of the word "entrepreneur" in writing about entrepreneurs and entrepreneurship.

EMI cannot make an adequate distinction between generic use of the word "entrepreneur" and its own claimed "proprietary" use of the word. For example, The Entrepreneur's Guide to Business Law clearly makes generic use of the word "Entrepreneur" but it is used in such a manner that it could be mistaken for the source of the guide if "entrepreneur" were deemed a valid trademark.

It is illustrative to notice how Entrepreneur Media, Inc. originally titled its own books (Exhibit F). Below are some representative examples:

The Entrepreneur Magazine Small Business Advisor (Entrepreneur Magazine (Paper))

by Inc Staff Entrepreneur Media

Entrepreneur Magazine's 184 Businesses Anyone Can Start and Make a Lot of Money

Entrepreneur Magazine: Starting an Import/Export Business

Entrepreneur Magazine's How To Become An Internet Entrepreneur

In the minds of consumers, if "entrepreneur" referred to the source of books and products for entrepreneurs by Entrepreneur Media, Inc., the use of the word "magazine" in the above book titles would be superfluous. Entrepreneur Media, Inc. must insert the word "magazine" after "entrepreneur" before potential book buyers will potentially become aware that the book is associated with Entrepreneur Magazine and/or Entrepreneur Media, Inc. This demonstrates that Entrepreneur Media, Inc., itself, recognizes "entrepreneur" as inadequate to identify Entrepreneur Media Inc. as the source of their own books. Not only does use of the word "entrepreneur" by the industry primarily refer to its dictionary usage, there is, at best, if any, a very weak association to Entrepreneur Media, Inc. when the word "entrepreneur" appears alone.

More recently (since 2001), Entrepreneur Media, Inc. appears to be trying to lose the "Magazine" qualifier on some of its products and to partially rebrand its identity as "Entrepreneur" in an attempt to capture the word "entrepreneur" from the public domain. For example, for a book published in October, 2001, Entrepreneur Media, Inc. has chosen the title Entrepreneur's Ultimate Start-Up Directory : 1,350 Great Business Ideas.

We can compare the above title by Entrepreneur Media, Inc. to non-Entrepreneur Media, Inc. titles such as:

The Entrepreneur's Handbook, by Joseph Mancuso, which was published by Artech House in 1974, four years before Entrepreneur Media, Inc. existed.

Entrepreneur's Guide by Deaver Brown, published by Macmillan Publishing Company in 1980, two years before Entrepreneur Media, Inc. trademarked "entrepreneur."

The Entrepreneur's Guide to Restaurant Expansion published by Lebhar-Friedman Books in 1982, the year of the first Entrepreneur Media, Inc. trademark of "entrepreneur."

The Entrepreneur's Planning Handbook published by Entrepreneurial Education Foundation in 1997.

The Entrepreneur's Guide to Capital: More Than 40 Techniques for Capitalizing & Refinancing New & Growing Businesses, published by McGraw-Hill Education Group.

The Entrepreneur's Guide to Starting a Successful Business by James Halloran, published by McGraw-Hill Companies in 1992.

Entrepreneur's Complete Self-Assessment Guide: How to Accurately Determine Your Potential for Success by Doug Gray, published by Self-Counsel Press, Incorporated in 1990.

The Entrepreneur's Guide: How to Start & Succeed in Your Own Business by Philip Holland, published by Penguin Putnam Books for Young Readers in 1985.

Entrepreneur's Marketing Guide by Roger Smith, published by Prentice Hall PTR in 1984.

The Entrepreneur's Master Planning Guide: How to Launch A Successful New Business by John Welsh, published by Prentice Hall PTR in 1983.

Entrepreneur's Survival Guide: One Hundred One Tips for Managing in Good Times & Bad by John Cullinane, published by McGraw-Hill Education Group in 1992.

Entrepreneur's Information Sourcebook by Johanna Bafaro, published by Entrepreneurs Productions in 1985.

Entrepreneur's Home School by Lamp Light Press in 1993.


Is it reasonable to assume that Entrepreneur Media, Inc.'s use of "entrepreneur's" is adequate to distinguish Entrepreneur Media, Inc.'s book, Entrepreneur's Ultimate Start-Up Directory, from the above competitors' titles which use "entrepreneur's" in its common, generic sense? As The Entrepreneur's Handbook, by Joseph Mancuso shows, such generic use when selling to entrepreneurs predates the existence of Entrepreneur Media, Inc.

We have to ask ourselves the question: Does Entrepreneur Media, Inc. intend for "Entrepreneur's" in the above title to refer to the dictionary definition of "entrepreneur" or is it intended to refer to Entrepreneur Media, Inc. by the proprietary, trademarked reference of "entrepreneur"?

If Entrepreneur Media, Inc.'s use is purely generic, it is clear that Entrepreneur Media, Inc. is attempting to benefit from the widespread understanding of the generic word "entrepreneur" in regard to promoting its products to entrepreneurs, while simultaneously trying to deny and restrict other companies and competitors from using the generic word "entrepreneur" within the heartland of the word's public domain definition. This indicates "entrepreneur" is a generic word within Entrepreneur Media, Inc.'s industry and, thus, Entrepreneur Media, Inc.'s trademarks of "entrepreneur" should be cancelled.

If Entrepreneur Media, Inc.'s use of "Entrepreneur's" in the above book is intended to be along a proprietary usage, we can conclude the following: Entrepreneur Media's non-generic use of the word "entrepreneur" overlaps 100% with the heartland, generic definition and is indistinguishable from it, and, thus, Entrepreneur Media, Inc.'s trademarks of "entrepreneur" should be cancelled due to genericness.

Entrepreneur Media, Inc.'s title, Entrepreneur's Ultimate Start-Up Directory, clearly shows the inappropriateness of Entrepreneur Media, Inc. holding a trademark of the generic word "entrepreneur" with respect to print publications. Claimed non-generic use and generic use are the same.

We also reiterate that once a word is established within the public domain it cannot be captured as a trademark by a company promoting the word as a proprietary reference when the word is used within its heartland definition. Hence, any association that Entrepreneur Media, Inc. is able to create between the sole word "entrepreneur" and itself is irrelevant as evidence of claimed non-genericness of "entrepreneur." Any such association cannot be protected by a trademark and would need to be classified as "de facto secondary meaning." The word already existed and was in common generic use within the industry providing informational services to entrepreneurs. "Trademark" and "generic" are mutually exclusive. EMI's book titles fundamentally violate this basic tenet of trademark law.

In 1992, Entrepreneur Media, Inc. sent a cease-and-desist letter to Probus Publishing Company because the company was publishing a series of books using the expression "Entrepreneur's Guide" in the title. (Exhibit) The letter demanded that Probus "immediately discontinue all infringing use of the term and cease distribution of all publications containing any designation of 'Entrepreneur's Guide Series' in association with printed matter."

Any publisher has the right to publish a title (or a series of titles) "Entrepreneur's Guide to …" EMI not only didn't invent the word "entrepreneur," EMI wasn't the first company to publish an "entrepreneur's guide." Generically, "entrepreneur's guide" clearly means a guide for entrepreneurs or, equivalently, a guide about entrepreneurship. When discussing books, the guide clearly falls in the class "entrepreneurship books." This two-word expression "Entrepreneur's Guide" should be available to all competitors providing information about entrepreneurship. It fundamentally cannot serve as a trademark.

EMI's assertion EMI is the only company with the right to publish a series titled "Entrepreneur's Guide" is the height of arrogance, anti-competitive behavior, and trademark misuse. It is a shining example of why trademark protection is denied to generic terms. It also clearly demonstrates EMI's "mark" of ENTREPRENEUR is generic.

The term "Entrepreneur's Guide" is commonly descriptive of the genus we would name "Books about entrepreneurship" or "Entrepreneurship books." Most reasonable people, seeing the expression "Entrepreneur's Guide" would instantly recognize that the guide in question was about the subject of entrepreneurship. Equivalently, it is a guide for entrepreneurs. The two-word combination refers back to the genus and is therefore commonly descriptive of the genus (i.e., the term is generic).

EMI also objected to the web domain entrepreneurshipbooks.com as a book review website reviewing books about entrepreneurship (Exhibit). The Library of Congress subject area known as "entrepreneurship" is widely recognized. This again, is the height of arrogance and trademark misuse. EMI wants to prevent an entrepreneur from using the word entrepreneurship when discussing the field of information known as entrepreneurship. The purpose of trademark law has never been to allow such nonsense. If it were not for the real harm done to entrepreneurs, EMI's claims would be laughable.

Other examples of generic usage by the trade today include:

Generic uses of the word "entrepreneur" in domain names, titles, and sections of websites (see exhibit D for more complete list):

Using the search engine http://searchenginez.com/whois_nameboy.html which allows searching for given words appearing in registered domain names, as of October 13, 2001, there are 2905 websites in which the word "entrepreneur" appears. 1112 websites begin with the word "entrepreneur."

Bloomberg.com has a website section entitled Entrepreneur Network, taken to mean an organization of entrepreneurs. (www.bloomberg.com/business/advisor.html). No association exists between this network and Entrepreneur Media, Inc., except that Entrepreneur Media, Inc. advertises on bloomberg.com's Entrepreneur Network. We will discuss the significance of this later.


Exhibit D provides a representative list of websites using "entrepreneur"

The websites in Exhibit D is representative to how the words "entrepreneur" and "entrepreneurs" are used in the trade. While typically referring to individuals who start a business, the use of the word "entrepreneur" has also come to be used as a popular adjective to modify other nouns. When modifying a noun, "entrepreneur" usually means "entrepreneurial" as in venturesome or "for entrepreneurs" or "composed of an entrepreneurial class" depending upon the specific context.

EMI's Generic Use of ENTREPRENEUR

We can make further mockery of EMI's claimed trademark use of "entrepreneur" by examining a book published by EMI with the title "Weekend Entrepreneur." The book is described as "Thousands of people have found a way to live the lifestyle of your dreams--and now you can, too. Over a hundred weekend entrepreneurs share their secrets. …"

While clearly using the phrase "weekend entrepreneur" generically, under the word "entrepreneur" is a trademark symbol. So, we are to assume EMI intends a trademark use of "entrepreneur." What would a "weekend Toyota" or a "weekend Nabisco" mean? Nothing. A "weekend" trademark has no meaning. A trademark does not fail to serve as a mark Monday through Friday. Trademarks do not take days off. "Trademark" and "generic" are mutually exclusive. EMI's use of the word "entrepreneur" is generic.

EMI was not even the first publisher to publish a book for "weekend entrepreneurs." How to Be a Weekend Entrepreneur: Making Money at Craft and Trade Shows was published by Marketing Methods Press in 1991.

It is implicit to the concept of trademark that there "...is a requirement that there be direct association between the mark . . . and the services specified in the application, i.e. that it be used in such a manner that it would be readily perceived as identifying such services." In re Moody's Investor Serv., Inc., 13 U.S.P.Q.2d 2043, 2047 (T.T.A.B. 1989); see 15 U.S.C. S 1127; In re Advertising & Marketing Dev., Inc., 821 F.2d 614, 620 (Fed. Cir. 1987)

Entrepreneur Media, Inc.'s use of "Entrepreneur's" in Entrepreneur's Ultimate Start-Up Directory clearly violates the above principle. Entrepreneur Media, Inc.'s use of a trademark symbol in the title "Weekend Entrepreneur" violates this principle. "Entrepreneur" alone cannot proprietarily refer to a specific company providing goods and services when "entrepreneur" is a generic label for all small business providers of goods and services.

EMI published the book title The Entrepreneur's Almanac in 2007 described as "…The Entrepreneur's Almanac. Inside, entrepreneurs will find fundamentals, facts and figures necessary to run and grow a business." Again, EMI uses "entrepreneur" generically in the book title and in promoting the book.

Jumping on The Millionaire Next Door bandwagon, EMI published The Entrepreneur Next Door: Discover the Secrets to Financial Independence. The book is about entrepreneurship. Again, EMI uses "entrepreneur" generically.

EMI's website entrepreneurpress.com describes EMI's "Entrepreneur Press" as "Entrepreneur Press provides small business owners with the vital information, inspiration and guidance they need to be successful. …Entrepreneur Press' offerings span every topic that affects entrepreneurs, from startup and business planning to advertising and marketing advice to expanding into a global marketplace." Again, EMI makes generic use of "entrepreneur."

EMI's websites make frequent generic use of the word "entrepreneur" when discussing information about entrepreneurship. To help promote its own legitimacy, in 2007, EMI published "Top 50 Entrepreneurial Colleges." Entrepreneurship is a recognized field of study at many universities. Entrepreneurship refers to the body of information about starting and running a business. Entrepreneurship is the common name of this body of information.

On entrepreneur.com, in referring to this article, on one webpage alone, we find the following statements:

"Click here for a listing of more schools that offer entrepreneurship programs."

"Why Study Entrepreneurship?"

"10 Essential Elements of an Entrepreneurship Program"

"…we surveyed more than 900 undergraduate and graduate schools about their offerings in entrepreneurship…"

"…we asked schools if they offer an entrepreneurship major and/or minor."

"we asked schools what percentage of their total student body was formally enrolled in their entrepreneurship programs…"

"… in the area of entrepreneurship education."

In a related article on entrepreneur.com titled "2007 Top Colleges for Entrepreneurs" we find these generic uses:

"…top 50 entrepreneurship programs…"

"… an education in entrepreneurship--one of today's hottest fields of study"

"…what you want out of your entrepreneurship program…"

"Some programs help students launch businesses; others teach how to become an entrepreneur."

"Entrepreneurship is a hot topic…"

"…graduate entrepreneurship program."

"…Entrepreneurial studies…"

"…entrepreneurship courses…"

"It helps that many of the professors are veteran entrepreneurs themselves."

"…credits his entrepreneurial education…"

"…entrepreneurial program…"

"Interested in social entrepreneurship?"

"Social entrepreneurship classes…"

"Entrepreneurship professors…"

"…entrepreneurial leadership…"

"Entrepreneurship is the heartbeat of this school."

"… a great training ground for entrepreneurship."

"These successful entrepreneurs…"

"Teaching entrepreneurship…"

"…close to 50 percent of Harvard Business School alumni become entrepreneurs."

"… Boasts one of the largest Collegiate Entrepreneurs Organization chapters…"

"Entrepreneurs guide students in building their businesses…"

On entrepreneur.com, EMI's Senior Vice President and Editorial Director Rieva Lesonsky is described as "… a well-respected entrepreneurship expert."

Another 2005 article by EMI's Lesonsky:

"Where you one of those 'born to be an entrepreneur' types?"

"Since the average age of Entrepreneur readers is 39, most of you didn't have the option of studying entrepreneurship in college--there simply weren't a lot of options. Today, all that has changed--there are hundreds of colleges and universities offering entrepreneurial programs."

EMI makes frequent generic use of the common, dictionary word "entrepreneur" in its book titles and on its websites. Thus, EMI's own use of ENTREPRENEUR must weigh strongly in favor of genericness.

For the sake of completeness, it should be noted the common word "entrepreneurial" is a variation of the word "entrepreneur" which also derives its meaning from the word "entrepreneur." The definition of "entrepreneurial" is included in the definition of "entrepreneur" in the dictionary.

In suing the creator of the computer game Entrepreneur, EMI expounded on how the mark of "entrepreneur" was "incorporated" into their use of the word "entrepreneurial":

"Plaintiff's mark ENTREPRENEUR has also been incorporated in other trademarks and service marks of plaintiff, such as the magazine title ENTREPRENEURIAL WOMAN."

EMI has some unique theories about its trademark rights, but they all revolve around claiming ownership of the generic word ENTREPRENEUR when used within the heartland of the word's dictionary definition. Most individuals would understand "entrepreneurial" in its dictionary sense. It is the common suffix -IAL appended to the word "entrepreneur." To EMI, the word "entrepreneurial" is a variation of its mark!

In deciding "Blinded Veterans" was a generic term when referring to formerly sighted members of the armed forces, the Court observed:

Indeed, BVA's own witnesses and exhibits effectively demonstrated the genericness of "blinded veterans," for they employed the term repeatedly to denote formerly sighted former warriors. E.g., J.A. at 75-76, 189-90, 337-38; see Reese Publishing, 620 F.2d at 11-12 (such usage is probative of genericness); McCARTHY § 12:2 at 529 & n. 12 (same). The district court itself, we note, used the term generically. E.g., 680 F.Supp. at 444 (observing the BAVF's founders "are themselves blinded veterans" and reporting that BAVF mailed recorded readings of the Constitution to "17,500 blinded veterans").

In a footnote, the Court observed:

The district court took pains to refer to blinded veterans by other terms, e.g., "sightless former servicepeople" and "blinded former U.S. service personnel." 680 F. Supp. at 444, 445. We, too, have endeavored to employ other terms in this opinion. See supra p. 1041, infra p. 1041. The awkwardness of the alternate terminology reinforces our conclusion that the public uses "blinded veterans" generically.

Blinded veterans have the right to use the term generically to refer to themselves. They have the right to use the term generically in the names of organizations serving blinded veterans. Everyone has equal right to use BLINDED VETERANS in referring to blinded veterans. Allowing one company or organization to monopolize such a generic use of language is inappropriate. The same is true for the term ENTREPRENEUR. There is no other word in the English language to name an "entrepreneur." All entrepreneurs have an equal and legitimate right to call themselves entrepreneurs and to incorporate the word or variations of it into their company name or organization. All entrepreneurs have the equal right to use the term ENTREPRENEUR when providing information about entrepreneurship to entrepreneurs. All entrepreneurs have the right to address entrepreneurs by their generic name. Just as "Blinded Veterans" is generic, so to is "Entrepreneur."

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.

Bissell's demand letter is actually inaccurate and misleading. A search of USPTO records shows EMI did not have "pending or issued applications" for ENTREPRENEURS GUIDE TO BUSINESS START-UPS nor ENTREPRENEURS GUIDE TO HOMEBASED BUSINESSES. The marks, as filed by Henry Bissell, himself, were actually for ENTREPRENEUR MAGAZINE'S GUIDE TO BUSINESS START-UPS (TM serial number 73760387) and ENTRPERNEUR MAGAZINE'S GUIDE TO HOMEBASED BUSINESSES (TM serial number 74020886). Also, it appears no pending or issued application existed for the exact phrase ENTREPRENEURS GUIDE TO FRANCHISE & BUSINESS OPPORTUNITIES. In 1988, Bissell did attempt to register "GUIDE TO FRANCHISE & BUSINESS OPPORTUNITIES" sans the word "entrepreneur" (TM serial number 73760471) and also the expression NEW BUSINESS OPPORTUNITIES (TM serial number 73753861). It appears both marks were quickly abandoned. In 1991, Bissell managed to register NEW BUSINESS OPPORTUNITIES on the Supplemental trademark register with no disclaimers of any of the wording (TM serial number 74219528). In 1991, Bissell registered ENTREPRENUR'S FRANCHISE & BUSINESS OPPORTUNITIES (TM serial number 74216327). In 1993, Bissell succeeded in registering BUSINESS START-UPS sans the word "entrepreneur" (TM serial number 74361101) with no disclaimer of any of the wording.

A cease-and-desist letter sent out by 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 (Exhibit __). 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. An apple grower can't trademark the word "Apple" and claim the word has two unique uses within the apple industry; one, as a generic term for apples; and two, as a source-identifying reference to one particular apple grower. EMI's use of "entrepreneur" is not arbitrary.

Examining the above letter, 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 trademark rights? This letter shows EMI uses ENTREPRENEUR within the heartland of the word's dictionary definition and generically.

In registering "American Entrepreneurs Association," (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 sneak other registrations past other trademark examining attorneys without the proper disclaimers.

Quoting In re Hunter Publishing Company, 204 USPQ 957, 961 (TTAB 1979), the examining attorney wrote:

it is also well settled "that each case msut (sic) be determined on its own facts, the registrability of each mark poses a separate and individual determination, and therefore the regisrability of a particular mark cannot be bottomed by what marks have been held to be or not to be descriptive of the particular goods or services in connection with which they have been used." [in the application, it seems Bissell and the examining attorney each used and understood "descriptive" to mean "commonly descriptive" and not "merely descriptive."]

Clearly, if you're an "entrepreneurs association," you're an "entrepreneurs association." You might be "The American Entrepreneurs Association" or the "Michigan Entrepreneurs Association" or some college's "student entrepreneurs association," but you're basically an "entrepreneurs association." The term names you. The term is generic. Just as all Blinded Veterans have the right to use the common generic term which refers to themselves, all entrepreneurs who form an association for entrepreneurs must have the right to call themselves by their generic name, an "entrepreneurs association."

The evidence that EMI uses ENTREPRENUR generically and that it has tried to assert its trademark against generic use of the word ENTREPRENEUR is overwhelming. Consequently, EMI's own use of ENTREPRENEUR proves the term is generic.

De Facto Secondary Meaning Of A Generic Term Cannot Receive Trademark Protection

While we firmly believe any honest secondary meaning was lacking when EMI originally filed for its trademarks of the word ENTREPRENEUR, and that the trademarks were only acquired via fraud [discussed later], any current evidence of secondary meaning between EMI and the word "entrepreneur" must be dismissed given the overwhelming case made for genericness of the word "entrepreneur" when discussing the body of information named as "entrepreneurship" and when used to refer to individuals named as entrepreneurs. Generic terms are denied trademark protection.

In re Half Price Books, Records, Magazines, Inc., 225 USPQ 219, 222 (TTAB 1984) (HALF PRICE BOOKS RECORDS MAGAZINES for retail book and record store services "is incapable of designating origin and any evidence of secondary meaning can only be viewed as ‘de facto’ in import and incapable of altering the inability of the subject matter for registration to function as a service mark").

Reese Publ'g v. Hampton Int'l Communications, 620 F.2d 7, 12 n.2 (2nd Cir. 1980) (Evidence of secondary meaning "at most could have established 'de facto secondary meaning,' which cannot suffice to convert a generic term into a trademark"); Surgicenters, 601 F.2d at 1016 (A generic word "cannot be validly registered as a trademark even if there is proof of secondary meaning").

[A]s to some words and shapes the courts will never apply the "secondary meaning" doctrine so as to create monopoly rights. The true basis of such holdings is not that they cannot or do not indicate source to the purchasing public but that there is an overriding public policy of preventing their monopolization, of preserving the public right to copy."

In re Deister Concentrator Co., 289 F2d 496 504 (C.C.P.A. 1961)

"While it is always distressing to contemplate a situation in which money has been invested in a promotion in the mistaken belief that trademark rights of value are being created, merchants act at their peril in attempting, by advertising, to convert common descriptive names, which belong to the public, to their own exclusive use. Even though they succeed in the creation of de facto secondary meaning, due to lack of competition or other happenstance, the law respecting registration will not give it any effect." (Weiss Noodle Co. v. Golden Cracknel and Specialty Co., 290 F.2d 845, 129 USPQ 411, 414 (1961))

Conclusion: The word "Entrepreneur" is Generic

We have shown overwhelming evidence that consumers when seeing or hearing the word "entrepreneur" when discussing books or information in the field known as entrepreneurship will understand the word "entrepreneur" to have its common, generic dictionary definition and will understand the word to intrinsically refer back to the genus of books and information in the field of entrepreneurship. Thus, Entrepreneur Media, Inc.'s use of the word "entrepreneur" is generic. EMI's Trademark Registration Number 1,453,968 must be cancelled and considered void ab initio.

Specifically, we have shown: 1) The dictionary definition and linguistic history overwhelmingly shows the genericness of the word "entrepreneur." 2) Use by competitors and the media overwhelmingly shows "entrepreneur" to have its common generic dictionary definition within the trade. 3) EMI depends on regular generic use of the word entrepreneur. EMI's own use of ENTREPRENEUR shows the term to have its generic definition. 4) Although EMI has never provided any independent surveys or objective evidence indicating that the term ENTREPRENEUR has secondary meaning, even if EMI could show such evidence, that would be immaterial because the overwhelming case has been made that the term ENTREPRENUR is generic. Thus, any secondary meaning established by EMI must be classified as de facto secondary meaning and is unprotectable under trademark law.

Fraud Issues/ Illegitimate Registration of ENTREPRENEUR

We will now show how EMI managed to trademark the generic word ENTREPRENEUR. As we will see, EMI intentionally and knowingly committed fraud against the USPTO and American entrepreneurs to secure trademarks of the generic word ENTREPRENEUR.

We will show Entrepreneur Media, Inc., (EMI), acted with a reckless disregard for the truth in seeking to register the commonly descriptive word "entrepreneur" as a trademark applicable to informational products about entrepreneurship sold to entrepreneurs (Trademark Registration Number 1,453,968). Thus all trademarks of the single word "entrepreneur" held by Entrepreneur Media, Inc., and spawned by the original illegitimate registration should be cancelled.

The landmark case Medinol Ltd. v. Neuro Vasx, Inc., 67 U.S.P.Q.2d (BNA) 1205, 1209-10 (T.T.A.B. 2003) sought to protect the integrity of the trademark register by clarifying what constitutes fraud during trademark registrations and helping assure inappropriate registrations can be removed from the register.

The Board concluded an applicant or registrant commits fraud in procuring or maintaining a registration when it makes material misrepresentations of fact concerning use of the mark, which it knew or should have known to be false or misleading, and acts in a "reckless disregard for the truth." A finding of fraud, even as to one of the items listed in an application or registration, will render an entire application void and registration invalid.

The Board held:

"…If fraud can be shown in the procurement of a registration, the entire resulting registration is void. General Car and Truck Leasing Systems, Inc. v. General Rent-A-Car Inc., 17 USPQ2d 1398, 1401 (S.D. Fla. 1990), aff'g General Rent-A-Car Inc. v. General Leaseways, Inc., Canc. No. 14,870 (TTAB May 2, 1998)."

The Board held:

"…A trademark applicant commits fraud in procuring a registration when it makes material representations of fact in its declaration which it knows or should know to be false or misleading. Torres v. Cantine Torresella S.r.l., 808 F 2d 46, 1 USPQ2d 1483, 1484-85 (Fed Cir. 1986)"

In the Medinol Case, Neurovasx filed an intent-to-use trademark application for "medical devices, namely, neurological stents and catheters." After using the mark with respect to catheters, Neurovasx filed a statement of use asserting their mark was now in use. Neurovasx filled in the standard box with an "x" that stated "The Goods/services identified in the Notice of Allowance of this Application." This implied the mark was in use with respect to both stents and catheters. Neurovasx argued it merely overlooked the inclusion of "stents" as being in-use of the mark; it expressed a willingness to amend the application to exclude "stents" from trademark protection; It argued that there was no intent to deceive the Trademark Board. The Board held this potential oversight was reason enough to cancel Neurovasx's entire trademark because of fraudulent registration.

The Board held:

"The appropriate inquiry is …not into the registrant's subjective intent, but rather into objective manifestations of that intent. 'We recognize that it is difficult, if not impossible, to prove what occurs in a person's mind, and that intent must often be inferred from the circumstances and related statement made by that person.' First Int'l Serv. Corp. v. Chuckles Inc., 5 USPQ2d 1628, 1636 (TTAB 1988). See Torres, 1 USPQ2d at 1484-85; General Car and Truck, 17 USPQ2d at 1400 ('proof of specific intent to commit fraud is not required, rather, fraud occurs when an applicant or registrant makes a false material representation that the applicant or registrant knew or should have known was false'); Western Farmers Ass'n v. Loblaw Inc., 180 USPQ 345 (TTAB 1973)"

Entrepreneur Magazine was founded by Chase Revel. The original trademarks of the word "Entrepreneur" were filed by Revel's company and his attorney Henery M. Bissell and were accepted by the USPTO based upon assertions made by Revel's company and his attorney. Bissell still operates as a trademark attorney for Entrepreneur Media, Inc., and has filed many trademark applications for EMI for variations of the word "entrepreneur." Throughout his life, Revel has gone far beyond a "reckless disregard for the truth."

Before adopting the name Chase Revel, Revel was known as John Leonard Burke (see Enclosed Los Angeles Times Article). Revel also used the aliases Charles Hudson, Jacques Victor Baron, Rio Sabor, and Marcus Wellbourne, among others. During his early career, Revel was an innovative bank robber.

Appearing before the Texas Employment Commission, Revel said he wanted to employ four men with cars. Paying them $2 per hour, and telling them he was an electrical contractor, named Charles Hudson, who wired banks, Revel told the men it was their job to pick up his company's payroll. Each man was to ask for and approach a specific bank teller, who was responsible for handling the payroll issues. Each man was to hand the teller a sealed envelope and a bag to hold the payroll. According to news reports, Revel had previously posed as a telephone survey-taker to learn the names of the children of several of the bank tellers.

Inside each envelope was actually a threatening note. One note read:

"Keep calm. We have your son Mahlon, Jr., whom we picked up at school on the pretext you were hurt in an accident. Don't warn anyone of this. The safety of your son is at stake. Fill the bag with 100s, 50s, 20s, 10s, 5s and give the bag to the man. Then go to the bathroom and wait 15 minutes before telling anyone. Remember, do you want your son's life on your conscience? We don't care."

Revel showed a general disregard for the truth by lying to both his temporary employees and to the bank tellers. Revel was sentenced to four years in prison for his entrepreneurial bank robbery attempt. Revel's behavior was not a youthful indiscretion. He would exhibit a pattern of cleverly devious behavior throughout his life that showed a persistent disregard for the truth.

After prison, Revel, then adopting the alias Jacques Victor Baron, started "Aetna Express" which was promoted as "the West's most dependable shipping agents." (exhibit) Revel pleaded guilty to mail fraud in 1973 when it was exposed Revel was sending people letters falsely claiming "Aetna Express" was holding packages for them and asked them to send Aetna Express money to forward the package. Revel showed a disregard for the truth by falsely claiming Aetna Express was holding non-existent packages in an attempt to get people to send him money.

In 1994, Revel and his company "LaserVision" settled with the FTC and paid $425,000 for consumer redress for making unsubstantiated claims that using "pinhole eyeglasses" could correct vision defects including farsightedness, nearsightedness, and astigmatism. Consumers were told to send their orders to the "American Eye Research Institute" which was represented as a legitimate research institution focusing on vision research.

In 2006, The Federal Trade Commission (FTC) settled another suit against Chase Revel. While Revel admitted no wrongdoing and claimed he was just honestly providing facts and operating as a copywriter, the FTC had a different view. The FTC felt he was using deceptive advertising, fake endorsements, and fake "experts" to sell health supplements.

The FTC alleged that Revel and his associates created a magazine ("New Life Nutrition Magazine") and pretended the magazine was an independent health magazine, which endorsed the products. The magazine was actually advertising copy written to sell the products. The products won awards too. The products were bestowed "Golden Nutrition Awards" by "The Council on Natural Nutrition." The group selling the health supplements owned "The Council on Natural Nutrition." The impression created was that the award-winning products had been favorably endorsed by the independent magazine.

What were the products? "Lung Support Formula" supposedly "cured" respiratory ills like asthma and emphysema. Another product, "Antibetic Pancreas Tonic" allegedly fought diabetes. The marketing preyed on the sick, the elderly, and those desperate for better health. And, you could have better health for just $29.95 a bottle. Yearly costs for the tonics could total over $200 per year.

The FTC Suit against Revel lists Revel as "Chase Revel a/k/a Marcus Welbourne. The alias Marcus Welbourne appears to be an attempt to trade off the public goodwill associated with TV doctor Marcus Welby, M.D. An Internet search of the name Marcus Welbourne, turns up a 1998 article, The great age of snake-oil by James R. Rosenfield.

Under the headline "Don't Wait Until Your Memory Gets Worse! Clinical Tests Show The Condition Can Be Reversed!" is the byline of "Marcus Welbourne." He's not the TV doctor but described as "Senior Science Editor." As Rosenfield questions, "'Senior Science Editor' of what [?]" The company selling the memory potion is the same company the FTC brought suit against. There were no "Clinical Tests."

Entrepreneur Magazine was founded by Revel as a vehicle to sell franchise business "opportunities." Originally, the company publishing Entrepreneur Magazine was named "Chase Revel, Inc." Revel's company changed its name to "Entrepreneur, Inc." before finally settling into the name "Entrepreneur Media, Inc." By 1985, the magazine would sell business start-up kits claiming to offer specialized information relative to starting a specific business. It could be argued the start-up kits were high in price but short in meaningful, specific information to justify the price.

For example, Trademark Registration Number 1,453,968 shows that in 1985 one business start-up kit offered by Revel's company would show purchasers how to operate an Adult-Only Motel. The publication states:

"Adult motels appeal to a significant segment of our population. Motels are sold at a price based on how much they earn. The trick here is to buy one that is losing money (at a low price), convert it to adults only with adult movies on TV, waterbeds, mirrored ceilings, etc. Then charge double normal motel rates. You not only earn a lot of money, but if you decide to sell, the price you'll get is amazing. Complete instructions and source are included in our manual. Order Manual No. X1040 'Adults-only Motel.' The special member price is just $19.50; nonmembers $24.50."

Across from the short ad is the message, "Confused? Call one of AEA's business advisors now. They'll help you choose the business that's right for you--the one that will open the door to financial freedom." AEA referred to Revel's "American Entrepreneurs Association." This was an expression Revel trademarked to sell his products (American Entrepreneurs Association, trademark serial number 73287003; American Entrepreneurs Association, trademark serial number 73230893). Not sufficiently happy to consider himself representing only American entrepreneurs, Revel previously trademarked "International Entrepreneurs' Association."

These were not honest associations that collectively represented entrepreneurs, they were marketing names to sell Entrepreneur, Inc.'s early products. The names made it appear that an "association" representing entrepreneurs stood behind the products. In reality, Revel was an association of one. These were misdescriptive trademarks, designed to intentionally give false credibility to Revel's products. Revel misused the USPTO to perpetrate his fraud against American entrepreneurs.

In the July 1979 issue of Entrepreneur Magazine, the perpetrators wrote:

"IEA, Inc. will devote all of its activities to public service [emphasis ours]. …IEA will continue to expose business opportunity frauds and publish its findings… Also IEA will continue to organize, finance and produce its Small Business Seminars in a major city each month. These seminars are not profit-making functions [emphasis ours] and are priced very low so that the largest number of people can be served….AEA has been organized as a member-supported trade association [emphasis ours] for entrepreneurs and will continue to provide the other informational services formerly sponsored by IEA such as this magazine, etc."

These statements were untrue. IEA was never a public service. IEA and its seminars were always intended to make Revel a profit. AEA was not an entrepreneur trade association. Revel did discover the value of advertising for Entrepreneur Magazine. Revel was not alone in wanting to sell gullible people "business opportunities." Revel developed a proprietary view toward these gullible people. Entrepreneur Magazine became a gateway for other hawkers of franchise business opportunities. Appearing objective, Entrepreneur Magazine began raking franchise business opportunities. This would become Entrepreneur Magazine's Franchise 500 (TM Serial Number 73533433).

What better way to convince consumers your products and those you endorse are legitimate than to pretend to be a "public service" which fights business opportunity fraud? Revel authored a small booklet titled "Business Opportunity Frauds" published in 1979 which was described as being "Provided as a Public Service." Rieva Lesonsky, EMI's senior Vice President, was listed as a contributor.

In the introduction, Revel's booklet opined:

Today, because of the growth and sophistication of our communication and transportation systems, increased population, giant technological strides, more inventive financing techniques including government loan programs and changes in consumer attitude and education, the budding entrepreneur has a better chance than ever.

But, clever crooks are still waiting in the bushes with new techniques of robbing the entrepreneur of his capital before he even has a chance to put it to constructive use.

Thank God, though, that through concerted efforts of consumer protection agencies, better business bureaus, legislators, law enforcement agencies and International Entrepreneurs' Association, we have been able to reduce the crooks number and have hamstrung their efforts. This giant effort has not eliminated the problem. As clever as we are in thwarting crooks' methods, a few scattered here and there are equally ingenious in devising new ones.

When a competing magazine named "Business Opportunities Digest" truthfully reported that AEA entered bankruptcy in 1982, Revel attacked the publication, was sued, and lost a defamation lawsuit (Straw v Chase Revel, Inc. 813 F.2d 356 (11th Cir. 1987). No research went into Entrepreneur Magazine's article smearing the competitor. Revel again displayed a reckless disregard for the truth.

It's ironic that while the primary purpose of trademark law is to protect consumers against fraudulent goods and services and to prevent wily and morally-challenged competitors from "palming off" their inferior goods as the creation of the quality company, that a trademark to the generic word defining the entrepreneurial producer of goods and services would be obtained by a con man who would use his trademarks to perpetuate deception upon those seeking information about entrepreneurial business opportunities.

Revel trademarked the root word defining and naming the field of information known as entrepreneurship. EMI would then claimed exclusive rights to use the word when promoting information about starting a business. Holding trademarks of "International Entrepreneurs' Association" and "American Entrepreneurs' Association" EMI would seek to shut down legitimate representative entrepreneur organizations.

While a trademark to the generic word "entrepreneur" when used within the heartland of the word's dictionary definition should never have been allowed on the Supplemental Trademark Register, we'll examine the knowingly false assertions made to move the word "entrepreneur" from the Supplemental Register to the Primary Trademark Register.

The false statements made are these:

1) The CEO of Entrepreneur Magazine asserted the word "entrepreneur" had become distinctive of Chase Revel's products. The application to move the mark to the Primary Trademark register had been reviewed by Revel's company's legal council. These false statements occur in trademark Registration Number 1,453,968.

CEO Wellington A. Ewen declared:

" … Applicant believes that the mark has become distinctive as applied to applicant's goods, by reason of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years next preceding May 14, 1985, the filing date of the subject application.

I declare that all statements made herein of my own knowledge are true and that all statements made on information and belief are believed to be true; and further that these statements were made with the knowledge that willful false statements and the like so made are punishable by fine or imprisonment, or both, under Section 1001 of Title 18 of the United States Code and that such willful false statements may jeopardize the validity of the application or any registration issuing thereon.

Dated: January 8, 1986 …"

Wellington A. Ewen is asserting the mark has become "distinctive" or equivalently has attained "acquired distinctiveness," also known as Secondary Meaning. The understanding of "acquired distinctiveness" is that the mark in question is commonly understood by the target market as primarily referring to the company claiming ownership of the mark. To have acquired secondary meaning, "in the minds of the public, the primary significance of a product feature or term [must be] to identify the source of the product rather than the product itself." Inwood Labs., Inc. v. Ives Labs., Inc. , 456 U.S. 844, 851 n.11, 102 S. Ct. 2182, 2187 n.11 (1982) (dicta).

It's important to clarify a possible point of confusion. The definition of entrepreneur is inherently a generic reference to a provider of goods and services. Entrepreneurs provide goods and services. This is one reason the word "entrepreneur" standing alone cannot properly refer to one unique provider of goods and services in a trademark sense. In the mind of the public, the term "entrepreneur" will often be understood to identify a source of goods, the entrepreneur. This is not equivalent to claiming the word has secondary meaning relative to any one company which is universally understood by an entire market. EMI has tried to capitalize on this misunderstanding, seeking to seize the generic reference as a provider of goods and services and reassign it to itself.

Entrepreneur Magazine's CEO was saying he believed that among the entire world of entrepreneurs and potential entrepreneurs considering business opportunities, when they saw or heard the word "entrepreneur" standing alone, the majority instantly thought of Entrepreneur Magazine or Revel's company and not the dictionary definition. Such an assertion was ludicrous and false. Wellington Ewen knew or should have known that the majority of entrepreneurs or potential entrepreneurs seeking information about entrepreneurship (i.e. information about starting and running a business, e.g. an adult motel) would primarily understand the word "entrepreneur" to imply its dictionary definition.

Suppose a prospective entrepreneur walked into a bookstore and saw a copy of Entrepreneur Magazine in 1986. If the prospective entrepreneur's primary reaction was "this is a magazine for entrepreneurs" or "this is a magazine about entrepreneurship" or "I might like this magazine, because I'm an entrepreneur" then the use of "entrepreneur" was understood generically. The prospective entrepreneur would need to think to himself, "this is that entrepreneur magazine" (that I've heard so much about, that has such a high-quality reputation, that I know comes from a trusted source, etc.) for the term to have acquired distinctiveness. For acquired distinctiveness to exist, the mark "ENTREPRENEUR" would have to supplant the dictionary definition of "entrepreneur" in the mind of the consumer at the time the consumer contemplated the purchase.

It's important to point out that "Secondary Meaning" doesn't mean "secondary in understanding" or "secondary in importance" but rather a meaning that evolved after the first meaning. The new meaning occurs secondary in time.

Wellington Ewen was rather vague about the goods with respect to which the mark "entrepreneur" had become distinctive, declaring: "Applicant believes that the mark has become distinctive as applied to applicant's goods." Because "BOOKS" are expressly listed as among the goods and services in the registration, Wellington Ewen is asserting he honestly believes that mark "ENTREPRENEUR" has supplanted good-old dictionary word "entrepreneur" when the goods in question are "BOOKS" relating to business opportunities.

Frankly, what the CEO of EMI says he believes has little evidentiary value. If the CEO of EMI said he believed he was God, is this reason enough for everyone else to bow down and worship him? Isn't it reasonable to demand some level of proof for his fantastic assertion? Part a sea. Part a small bucket of water. Give us something. For such a highly descriptive, if not generic, word, EMI provided no evidence of secondary meaning. There is only the CEO's unbelievable assertion of his belief that dictionary word "entrepreneur" has morphed into mark "ENTREPRENEUR" in the minds of consumers by 1986.

By 1986, Entrepreneur Magazine was a little known and struggling magazine, which current CEO Peter Shea admitted had only a subscriber base of 35,000 (admitted during an interview on Entrepreneur's Guide To The Galaxy radio show. Shea said he purchased Entrepreneur Magazine because he liked the magazine. It didn’t hurt the magazine was a valuable tool for promoting his "Stained Glass Overlay" franchises which, as advertised in the August 1989 issue of Entrepreneur Magazine, required an investment of $45,000 to $60,000. Exhibit ___)

2) Wellington Ewen asserted that Entrepreneur Magazine's use of the word had been "substantially exclusive" in his industry as of 1986. This is blatantly false. The word was in common, widespread use within the industry providing information to entrepreneurs about entrepreneurship at the time this assertion was made.

Other magazines incorporated the commonly descriptive word "entrepreneur" into their title at the time. The magazine Big Farm Entrepreneur was published between 1980 and 1983. Minority Business Entrepreneur magazine began in 1984 and continues publication to this day.

Many books related to entrepreneurship and business incorporated the "mark" of "entrepreneur" into their title:

The Entrepreneur's Handbook, by Joseph Mancuso, which was published by Artech House in 1974, four years before Entrepreneur Media, Inc. existed;

The Entrepreneur's Manual: Business Start-Ups, Spin-Offs, and Innovative Management, published by Chilton Book in 1977;

Entrepreneur's Guide by Deaver Brown, published by Macmillan Publishing Company in 1980, two years before Entrepreneur Media, Inc. trademarked "entrepreneur" on the supplemental register;

The Entrepreneur's Guide to Restaurant Expansion published by Lebhar-Friedman Books in 1982;

Entrepreneur's Information Sourcebook by Johanna Bafaro, published by Entrepreneurs Productions in 1985.

In 1984, the company "The Entrepreneur's Source" entered the market of providing information about business opportunities and franchising. The Entrepreneur's Source would become a regular advertiser in Entrepreneur Magazine.

Many companies incorporated the generic word "entrepreneur" into their business name at the time. A sampling of these companies included (search made for corporations registered in Texas and California):

Entrepreneur Services, Inc. (TX corporation search, 1986)

Entrepreneur Ventures Incorporated (TX corporation search, 1980)

Entrepreneurs Inc. (TX corporation search, 1984)

Entrepreneur Island, Inc (TX corporation search, 1983)

Entrepreneurs Social Club, Inc. (TX corporation search, 1983)

Spanish American Entrepreneur, Inc. (TX corporation search, 1980)

California Small Business Entrepreneur Alliance (CA corporation, 1973)

Entrepreneur Development Agency Corp (CA corporation search, 1982)

Entrepreneur Management Group, Inc. (CA corporation, 1983)

Entrepreneur Management, Inc, (CA corporation, 1985)

Entrepreneur Imports, Inc. (CA corporation, 1984)

Entrepreneurs Trade Corporation (CA corporation, 1984)

International Marketing Entrepreneurs Corporation (CA corporation 1963)

Entrepreneur's Fraternal Exchange (CA corporation, 1976)

Bay Area Women Entrepreneurs (CA corporation, 1979)

Atlantis Entrepreneurs, Inc. (CA corporation, 1981)

Associated Entrepreneurs, Inc. (CA corporation, 1970)

4 Entrepreneur's, Inc (CA corporation 1983)

Entrepreneur's Capital Network, Inc. (CA corporation 1985)

Entrepreneur's Bookstore, Inc. (CA corporation, 1986)

Communication Entrepreneurs Corporation (CA corporation, 1980)

Entrepreneur's Development Equity (CA corporation, 1985)

Despite the widespread use of the generic word "entrepreneur," attorney Henry Bissell sent out threatening cease-and-desist letters demanding a handful of organizations cease using the word "entrepreneur":

The Aurora Small Business Entrepreneur

(cease and desist letter sent to the Aurora Chamber of Commerce,

dated 1984)

Big Farmer Entrepreneur

(publication) (cease and desist letter dated 1980)

Entrepreneurs Unlimited

(company name, cease and desist letter dated 1980)

Las Vegas Entrepreneurs Association

(cease and desist letter dated 1982)

Michigan Entrepreneur's Association

(cease and desist letter dated 1981)

Entrepreneur Association

(cease and desist letter sent to the Graduate School of Management

at University of California, 1980)

Examining Henry Bissell's letter to the Michigan Entrepreneur's Association is instructive. Having filed for the trademark of "American Entrepreneurs Association" (trademark registration number 1343166), Henry Bissell should have been familiar with the demanded disclaimer "No claim is made to the exclusive right to use the words 'Entrepreneurs Association,' apart from the mark as shown."

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."

As previously discussed, the trademark of "American Entrepreneurs Association" was misdescriptive and designed as a fraud against American entrepreneurs. EMI, having no proprietary claim to the expression "Entrepreneurs Association," this cease-and-desist letter was entirely unjustified. This would become typical trademark behavior of EMI. EMI would assert rights far beyond what even its fraudulently acquired trademarks gave it. How many entrepreneurs have been harmed by the fraudulent trademark filings of Entrepreneur Media is impossible to ascertain. But, every entrepreneur seeking honest help and guidance who was hindered from finding a true, honest, and legitimate "Entrepreneur Association" has been injured by EMI.

EMI would not litigate until after EMI's trademarks became "incontestable" many years later. Had EMI tried to seriously "enforce" its trademarks of the generic word "entrepreneur" before the mark became "incontestable," EMI would have been forced to prove honest secondary meaning. This it could not do. Ownership of the misdescriptive trademark "American Entrepreneurs Association" would be used to threaten legitimate entrepreneur associations associated with universities and chambers of commerce.

Wellington Ewen knew or should have known about the widespread use of the word "entrepreneur" within his own industry and generically. Thus, his claim of "substantially exclusive" use is fraudulent. From the trademark application (Registration Number 1,453,968), no other evidence was ever provided to demonstrate secondary meaning.

These assertions are materially significant to the original registration. Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1403, 222 USPQ 940-41 (Fed. Cir. 1984) concluded "[w]hen the record shows that purchasers are confronted with more than one (let alone numerous) independent users of a term or device, an application for registration under Section 2(f) cannot be successful, for distinctiveness on which purchasers may rely is lacking under such circumstances."

Entrepreneur Media's original registration on the primary register clearly should have been denied with respect to Class 16 goods and services, but for the false assertions made by Wellington Ewen. Consequently, the entire trademark Registration Number 1,453,968 should be cancelled. The registration is and was void ab initio.

Incidentally, even with the false assertions made by Entrepreneur Media's CEO, a trademark of the word entrepreneur should have been denied as being at best merely descriptive. (Note: many generic terms and expressions deemed to be too descriptive to be expropriated as a trademark are often rejected on the grounds of being "merely descriptive.") A declaration of substantially exclusive and continuous use as a mark for five years is insufficient in and of itself to support registrability under Section 2(f) where the term sought to be registered is highly descriptive of the identified goods or services. See In re Synergistics Research Corporation, 218 USPQ 165 (TTAB 1983). Also See In re Kalmbach Publishing Co., 14 USPQ2d 1490 (TTAB 1989) (applicant’s sole evidence of acquired distinctiveness, a claim of use since 1975, held insufficient to establish that the highly descriptive, if not generic, designation RADIO CONTROL BUYERS GUIDE had become distinctive of applicant’s magazines).

The evidence required to show acquired distinctiveness is directly proportional to the degree of non-distinctiveness of the mark at issue. Yamaha, 840 F.2d at 1581, 6 U.S.P.Q.2d at 1008. In re Bongrain International Corp., 894 F.2d 1316, 13 USPQ2d 1727, 1728 n. 4 (Fed. Cir. 1990): "the greater the degree of description a term has, the heavier the burden to prove it has attained secondary meaning." Some marks are deemed to be "so highly descriptive," they are denied trademark protection and are called "generic."

The mark "entrepreneur" if not generic, which we believe it is, is so highly, highly, highly descriptive of the field of entrepreneurship that Entrepreneur Media, Inc., could never have met the burden of showing acquired distinctiveness in 1986. The word "entrepreneur" names and describes the market of entrepreneurs; it is the root word of entrepreneurship, the name of information related to starting and running a business entrepreneurially, and it is a generic reference to a provider of goods and services known as an entrepreneur.

It's instructive to note EMI's "trademark empire" is built on these declarations Wellington Ewen made that the mark had obtained acquired distinctiveness and that the mark's use had been "substantially exclusive." From the trademark application (Registration Number 1,453,968), it appears no other evidence was ever provided to demonstrate acquired distinctiveness of EMI's products in Class 16. EMI would use the existence of trademark Registration Number 1,453,968 as the means of grabbing other registrations to the word "entrepreneur."

3) In seeking a trademark of "entrepreneur" with respect to Class 009 products, i.e., computer programs, Entrepreneur, Inc., made materially false representations. EMI claimed the word "entrepreneur" was not descriptive of its software, but inherently distinctive. Clearly, the word "entrepreneur," if not generic, is at best highly descriptive of software for entrepreneurs.

In ENTREPRENEUR MEDIA, INC. v. SCOTT SMITH, the appeals court reasoned:

"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 (emphasis ours) 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. Park`N Fly, 469 U.S. at 194; Kendall-Jackson Winery, 150 F.3d at 1047 n.8; see also McGraw-Hill Publ'g Co. v. American Aviation Assocs., 117 F.2d 293, 295 (D.C. Cir. 1940) (discussing the magazine "Aviation": "It is difficult to conceive of a term that would be more descriptive of the contents of the plaintiff's magazine. The plaintiff suggests that a descriptive word designates some physical characteristic. But that magazines may be described by their subject matter is too clear to be doubted.") (citations omitted); Scholastic, Inc. v. Macmillan, Inc. , 650 F. Supp. 866, 871 (S.D.N.Y. 1987) ("The Court finds that `Classroom' is no more than a descriptive trademark. . . . A consumer of ordinary intelligence would immediately and inevitably conclude

that a magazine called `Classroom' dealt with the instruction of students.")

According to the Ninth Circuit, the mark of "entrepreneur" was descriptive and not suggestive, when those two categories were considered. We believe the Court didn't properly consider that the mark was, in fact, generic (i.e., it wasn't a valid trademark to begin with). The word "entrepreneur" not only "describes" the "subject matter" of Entrepreneur Magazine, as the Court noted, but the word is the root word of "entrepreneurship" which is the commonly descriptive name of the body of information related to starting and running a business. (The citable decision only considers likelihood of confusion as the issue before the Court. The issue of mark strength then arises as one of the Sleekcraft factors to examine.) In any case, this ruling supports the obvious conclusion that EMI's use of the word "entrepreneur" to describe software for entrepreneurs is, at best, descriptive.

For Class 009 goods, Entrepreneur Media, Inc., originally described its goods as "Class 9: Electrical and Scientific Apparatus, Namely Magnetic Media Bearing Recorded Computer Programs …" (page 146 of Trademark Registration number 1,453,968) The classification of Entrepreneur Media, Inc.'s product as "Electrical and Scientific Apparatus…" is highly misleading. Entrepreneur Media is not the creator of "Electrical and Scientific Apparatus." Entrepreneur Media amended its application to Class 9 described as "Computer Programs and programs user manuals all sold as a unit."

Arguing for Entrepreneur Media, Inc., Henry M. Bissell wrote: "Applicant's mark ENTREPRENUR cannot reasonably be considered merely descriptive of the goods in Class 9, as now amended, with which it is associated. Applicant's mark ENTREPRENUR is no more descriptive (nay, even suggestive) of it's amended list of goods in Class 9 than was either of the marks ENTREPRENUR of Strategic Management Group, Inc., or Harvard Associates, Incorporated, as the case may be, with the respectively associated lists of goods."

The trademark examining attorney again refused registration on the grounds the word "entrepreneur" with respect to Entrepreneur Media's use on Class 009 goods was merely descriptive of Entrepreneur Media's products. The examining attorney noted: "Applicant's prima facie, Section 2(f) claim in this case for the identical mark in Class 16 is an evidentiary admission of mere descriptiveness. Applicant then argues suddenly that for Class 9 software program merchandise specifically tailored for the individual business entrepreneur's usage that Entrepreneur is inherently distinctive. The undersigned, examining attorney does not accept this proposition."

Bissell responded: "The Trademark Attorney's comments regarding mere descriptiveness of ENTREPRENEUR as registered in Registration No. 1,187,239 can only be applicable to the goods of Class 16. Applicant respectfully traverses the statement in the Office Action to the effect that applicant's computer programs highlight and pertain directly to the activities and aspirations of the individual business entrepreneur. This is an erroneous conclusion without basis in fact. …" (page 50)

Traverses means denies. It means to formally deny. Entrepreneur Media's attorney denied their software pertains to "the activities and aspirations of the individual business entrepreneur." To obtain this registration in class 009, Entrepreneur Media claimed their use of the word "entrepreneur" wasn't descriptive (nay, even suggestive?). Entrepreneur Media appears to imply their use of "entrepreneur" is an arbitrary use of the word "entrepreneur."

Bissell argues the examining trademark attorney has made a gross error in concluding EMI's software "highlight and pertain to the activities and aspirations of the individual business entrepreneur." This is a false statement, which Bissell knew or should have known to be false. EMI's market is entrepreneurs and potential entrepreneurs, as is clearly demonstrated by its other products. Entrepreneur Media, Inc.'s software has always been primarily marketed to entrepreneurs.

The possibility that somebody who doesn't see themselves as an entrepreneur could possibly purchase a computer program sold by Entrepreneur Media, Inc., doesn't invalidate the reality that EMI's use of the word "entrepreneur" is at best highly descriptive.

The specimen provided by Bissell to demonstrate EMI's use of the word "entrepreneur" in Class 009 was a photocopy of an advertisement for "The Entrepreneur Software Series" which was described as "The high-tech tool for insuring entrepreneurial success!" (see exhibit) The advertisement continued, "Now You Can Easily Prepare a Custom Business Plan on a Microcomputer." EMI's "software" was a basic spreadsheet template that was used on VisiCalc software. The spreadsheet helps entrepreneurs prepare a business plan. Technically, EMI's product was not really even software. But it certainly did "highlight and pertain to the activities and aspirations of the individual business entrepreneur."

Real business plan software is software that helps entrepreneurs prepare a business plan for a new potential entrepreneurial venture. It helps them plan their business. It helps them make financial projections for their proposed products. It helps them estimate startup costs. It helps them estimate cash flow. And, it often helps in preparing a written business plan which can be used to seek funding for a new business. It is ludicrous to claim such software does not "highlight and pertain to the activities and aspirations of the individual business entrepreneur."

The trademark examining attorney's conclusion of mere descriptiveness was correct. Having filed many trademarks for Entrepreneur Media, Inc., Bissell knew or should have known EMI's use of the word "entrepreneur" was descriptive of EMI's products. If Bissell glanced at the "computer program" specimen he submitted, it should have been immediately clear the word "entrepreneur" was merely descriptive of EMI's computer software.

With Bissell's false assertion, the mark of ENTREPRENEUR was accepted as "inherently distinctive" which flatly contradicts the evaluation of the Ninth Circuit Appeals Court, which observed that the mark of "ENTREPRENEUR" was obviously descriptive (at best) to even an "unimaginative" person. Bissell's assertion is material. Without this knowingly false assertion, the registration would have been denied in Class 009 as merely descriptive. Thus, Trademark Registration Number 1,453,968 should be cancelled and considered void ab initio due to fraudulent registration.

To maintain an honest trademark register, a certain level of honesty is demanded by trademark applicants, who are expected to accurately and correctly elucidate their goods and services so that the trademark examining attorney can make an appropriate decision regarding registration. Not all companies are entitled to all possible trademarks.

In re IP Carrier Consulting Group (Serial No. 78542726, Serial No. 78542734):

"Whether a particular term is merely descriptive is determined in relation to the services for which registration is sought and the context in which the term is used, not in the abstract or on the basis of guesswork. In re Abcor Development Corp., 588 F.2d 811,

200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). In other words, the issue is whether someone who knows what the services are will understand the mark to convey information about the services. In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-1317 (TTAB 2002); In re Patent & Trademark Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998); In re Home Builders Association of Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990); In re American Greetings Corp., 226 UPSQ 365, 366 (TTAB 1985)."

Consider the word Apple. Apple Computer company, a clear provider of computer software, can register the mark "APPLE" and use the word as a trademark, as long as the word's use is far removed from the heartland of the word's dictionary definition. This is an arbitrary trademark, which is deemed to be inherently distinctive and strong.

But, what if "Apple Computer" were a company providing computer systems and software specifically tailored to the apple orchard industry? The company's claim to the word would then be much more dubious, and if the word's use clearly implied its commonly descriptive dictionary definition, the trademark should be denied. A company providing products or services to the apple industry would not be allowed to prevent competitors from honestly describing their goods and services. This is why commonly descriptive words when used within the heartland of the word's dictionary definition are denied trademark protection.

Similarly, if a software company were to adopt the name "Entrepreneur Software" but only sell software far removed from the field of entrepreneurship, for example, selling educational software for children, then the company could argue it's use of the word entrepreneur were arbitrary. The Trademark examining attorney would need to decide if such a use was appropriate. If the hypothetical "Entrepreneur Software" instantly began creating software for entrepreneurs, such as business plan software, it appears clear a certain level of deceit was involved in securing the trademark. The Medinol case allows the trademark register to be corrected from this sort of shenanigan.

In seeking to register "entrepreneur" as a trademark with respect to Class 009 goods, Entrepreneur Media, Inc., needed to cancel two trademarks of the word entrepreneur that already existed in Class 009. Whether or not those particular marks should have been granted registration is questionable. What is clear is that there were multiple companies using the word "entrepreneur" with respect to software. Thus, any claim of acquired distinctiveness, if the mark had been deemed to be descriptive, would almost certainly have failed. The existence of these trademarks in no way excuses Bissell from making the knowingly false statement that the word "entrepreneur" when applied to EMI's computer programs did not "highlight and pertain directly to the activities and aspirations of the individual business entrepreneur."

In light of the fraudulent statements made in obtaining Trademark Registration number 1,453,968, the mark should be cancelled. Because this trademark was used as a justification to register EMI's other trademarks of the generic word "entrepreneur," those registrations should also be cancelled. A fraudulently filed registration conveys no rights to secure other registrations of the same mark using the fraudulent filing as the basis of the newer registration.

We have demonstrated three blatantly false and materially significant statements were made to obtain Trademark Registration Number 1,453,968. We have shown that for each of those statements, the CEO of Entrepreneur Media, Inc., or its attorney, who made the statement, knew or should have known the statement made to be false. According to Medinol, any one of those three statements is sufficient grounds to entirely cancel Registration Number 1,453,968. The entire registration should be voided ab initio.

ENTREPRENEUR on the Supplemental Register: The Real "Entrepreneur Press"

Although the trademark registration 1187239 of ENTREPRENEUR on the Supplemental Register is dead, it was used to justify Registration 1,453,968, thus an examination of that registration is appropriate. We will focus on the G&S of "BOOKS."

Registration 1187239 was granted partly on the knowingly false declaration of Chase Revel dated 6-25-1979; partly on the submission of current use of the mark in commerce as of that date; and partly on assertions and representations of Revel's attorney Henry M. Bissell.

Examining the current-use specimens submitted, we see one page advertising several books for sale from the "International Entrepreneurs' Association." (Exhibit __) No use of ENTREPRENEUR as a mark appears anywhere on that page. The page is misleading, because it looks like EMI published these books. Examining the books listed more closely we see the titles are:

1) How To Self-Publish Your Own Book & Make It A Best Seller by Ted Nicolas

2) Dollars In Your Mailbox: The Beginner's Guide to Selling Information By Mail by Earnest P. Weckesser

3) 1001 Ways To Be Your Own Boss by Vivo Bennell and Cricket Clagett

4) How To Start, Operate and Promote A Consulting Business by Steve Nowlin

5) How To Build A Second-Income Fortune in Your Spare Time by Tyler Hicks

6) How To Make Big Money At Home in Your Spare Time by Scott Witt.

7) How To Be Self-Employed by Bert Fregly

8) How To Borrow Your Way To A Great Fortune by Tyler G. Hicks.

9) How To Make A Quick Fortune: New Ways To Build Wealth Fast by Tyler G. Hicks.

The mark of ENTREPRENEUR could not have appeared on any of these books because none of these books was published by Revel's company.

How To Self-Publish Your Own Book & Make It A Best Seller was initially published (or self-published) by Enterprise Publishing (ISBN 0913864110; Exhibit __) in 1975; Dollars In Your Mailbox: The Beginner's Guide to Selling Information was published by Green Tree Press in 1977 (ISBN ; Exhibit __); 1001 Ways To Be Your Own Boss was published by Prentice Hall in 1976 (ISBN ; Exhibit __); How To Start, Operate and Promote A Consulting Business was published by Hamilton Publishing in 1977 (ISBN ; Exhibit __); How To Build A Second-Income Fortune in Your Spare Time was published by Parker Publishing Company in 1965; How To Make Big Money At Home in Your Spare Time was published by Prentice Hall in 1971; How To Be Self-Employed was published by ETC Publications in 1977; How To Borrow Your Way To A Great Fortune was published by Prentice Hall Trade in 1974; How To Make A Quick Fortune was published by Prentice Hall in 1978 (ISBN 013423376X ; Exhibit __) and was originally published by at least 1974 by Parker Publishing.

Revel and Bissell knew or should have known it was a misrepresentation to use this page as an exhibit of EMI's mark of ENTREPRENEUR with respect to the production of BOOKS. Exhibit ___ submitted by Chase Revel, Inc., shows that goods were initially described as "Printed Publications and Periodical Reports, Namely Magazines and Business Reports."

Chase Revel, Inc., did advertise other publisher's books in Entrepreneur Magazine and offered them for sale through mail order from "The International Entrepreneurs' Association" (Exhibit __[page 60 Feb 79 issue]). Revel's company also published short reports using as the publisher the names "International Entrepreneurs' Association" and "American Entrepreneurs' Association."

The February 1979 issue of Entrepreneur Magazine (Exhibit ___ [page 60 Feb 79]) is highly informative. Among the titles listed for sale from the IEA was Winning the Money Game by Don Dible, which was distributed by Hawthorn Books in 1975 (Exhibit __) and published by "The Entrepreneur Press." Entrepreneur Magazine's description reads: "Dible's famous $75, two-day seminar condensed into an easy to follow format." Up Your Own Organization, published by "The Entrepreneur Press" was listed. Entrepreneur's Manual by Richard M. White Jr. was listed.

A search of the word "entrepreneur" in publisher names from 1950 to 1980 (Exhibit __) shows that Winning the Money Game is associated with "The Entrepreneur Press." Titles published by "The Entrepreneur Press" include:

Winning The Money Game by Don Dible, Published by "The Entrepreneur Press" in 1975. (ISBN 0882050044)

Up Your Own Organization by Don Dible (ISBN 0882050028; published by "The Entrepreneur Press" in 1971)

Small Business Success Secrets by Don Dible (ISBN 0882050222) published by "The Entrepreneur Press" in 1980.

How To Make A Fortune In Import/Export by Howard Goldsmith (ISBN 0882050133; published by Entrepreneur Press in 1980 (Exhibit amazon page for book)

As the 1971 publication date of Up Your Own Organization shows, the use of "Entrepreneur Press" and "The Entrepreneur Press" predates the existence of Revel's entry into newsletter publishing in 1973 and Revel's use of "Entrepreneur" as a magazine title in 1978. Publication of these book titles under "Entrepreneur Press" is totally unrelated to Revel's company, except that Revel sold some of these titles through mail order along with titles from other publishers. (exhibit showing pages from Up Your Own Organization with publisher data). "The Entrepreneur Press" was originally started by Donald Dible.

Revel was or should have been aware of these other money gurus whose books were associated with "The Entrepreneur Press" or "Entrepreneur Press." Exhibit __ [page submitted with Supplemental] shows that Revel's company sold cassettes and transcripts from seminars by Don Dible and Howard Goldsmith.

Because Revel sold titles from the third-party Entrepreneur Press, and Revel was aware of the work of other money-making gurus who were published by the third-party Entrepreneur Press, when Revel declared: "…to the best of his knowledge and belief no other person, firm, corporation or association has the right to use said mark in commerce, either in identical form or in such near resemblance thereto….", his declaration showed a reckless disregard for the truth (Exhibit __ his declaration). A book imprint known as "The Entrepreneur Press," and sometimes referred to as "Entrepreneur Press," had already been established by another party.

Further evidence of Revel's lack of any association to The Entrepreneur Press is provided by the fact that searches of used books which include the word "entrepreneur" in the publisher name turn up absolutely no titles published by Entrepreneur Press which were authored by Revel. Revel's report titles were all published by the auspices of "The International Entrepreneurs' Association" and "The American Entrepreneurs' Association." (These names were selected to add undeserved credibility to Revel's products.)

When Revel authored BOOKS during that time (1979 to 1980), they were either published by third-party book publishers or Revel's "BaronBrook Publishing." "BaronBrook Publishing" was the name Revel adopted in 1979 to self-publish his business books (Exhibit __ CA registration Baronbrook). For example, Revel's title The Truth About Business Profits (ISBN 0932362028) was published by BaronBrook Publishing in 1979. Who's Making A Bundle and How Much authored by Revel was published by Baronbrook Publishing in 1979. Revel's title 168 More Businesses Anyone Can Start and Make A Lot of Money was published by Bantam in 1984. It appears that in 1979 at the time of Revel's declaration, EMI did not produce any BOOKS at all. The mark of ENTREPRENEUR was not used on BOOKS.

We have shown:

1) The submitted date of first use of ENTREPRENEUR as a mark by Revel was stated as 1978. (Exhibit __) by Chase Revel, Inc.

2) Use of the term "Entrepreneur" as the name of a book imprint ("Entrepreneur Press" or "The Entrepreneur Press") was independently established as early as 1971 and was unrelated to Chase Revel, Inc. This imprint continued to publish through at least 1980.

3) Revel knew or should have known another company had rights to use the term "Entrepreneur" with respect to the printed publications classified as books. Revel's company sold books from "The Entrepreneur Press."

4) By asserting no party had the right to use the term ENTREPRENEUR in his declaration, and with the inclusion of BOOKS as a protected product, under the Medinol standard, Revel and his attorney Henry M. Bissell committed fraud in procuring Trademark Registration 1187239. They showed a careless disregard for the truth.

5) Revel submitted false and misleading information to the PTO to secure the original trademark to the word "entrepreneur."

Consequently, EMI's use of Trademark Registration 1187239 to obtain a registration of the generic word 'entrepreneur' on the Principal Register (Registration 1,453,968) must be seen as further evidence of EMI's continuing fraud upon the USPTO and American Entrepreneurs. Several years later, trademark happy EMI would trademark the name "ENTREPRENEUR PRESS" on the principal register. EMI would aggressively try to prevent other publishers from including the generic word "entrepreneur" into their company name.

Entrepreneur Magazine's Trademarks of the Generic Word 'Entrepreneur' Should Be Cancelled

Entrepreneurs seeking to use the highly descriptive and generic word "entrepreneur" should not be damaged by the fraudulent behavior of EMI in securing this trademark registration. EMI has no moral, ethical, or legal right to profit from this registration. We ask the board to:

1) Hold the word "entrepreneur" to be generic when used within the heartland of the word's dictionary definition.

2) Hold the word "entrepreneur" to be generic in relation to the genus of publishing books about the subject area named as entrepreneurship.

3) Hold the word "entrepreneur" to be generic in relation to providing information about the subject area named as entrepreneurship.

4) Hold that EMI committed fraud in acquiring Trademark Registration Number 1,453,968 and cancel that registration in its entirety and deem the registration void ab initio.

5) Cancel all other trademark registrations of EMI which are variants of the word "entrepreneur" and which were based upon EMI's original trademark fraud.