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Petition For Cancellation of Entrepreneur Media, Inc.'s wordmark "entrepreneur" as a trademark

The single word, "entrepreneur" is an inappropriate trademark for Entrepreneur Media, Inc., a media company serving entrepreneurs, to hold and all such wordmarks of "entrepreneur" should be cancelled due to genericness.

The single word "entrepreneur" is an inappropriate trademark when held by a company serving and selling to the marketplace composed of entrepreneurs and, hence, Entrepreneur Media, Inc.'s trademarks of the single word "entrepreneur" should be cancelled due to genericness. This follows from the basic facts:

1) The single word "entrepreneur" had a established dictionary definition before and at the time Entrepreneur Media, Inc. first trademarked the word "entrepreneur" in 1982. Webster's New Collegiate Dictionary defines "Entrepreneur" as "one who organizes, manages, and assumes the risks of a business or enterprise." 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 A) shows, the use of the word "entrepreneur" with the above definition predates the existence of the dictionary by 12 years. The dictionary, itself, is a relative upstart when compared to the word "entrepreneur."

The word "entrepreneur" when associated with the above definition predates the existence of Entrepreneur Media, Inc. by over a hundred years. Entrepreneur Media, Inc. first started using the word "entrepreneur" in 1978, forty-five years after the dictionary definition was established in 1933.

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

When "entrepreneur" is used according to the established dictionary definition, and after the dictionary definition had been established, the word's use is generic and may not be claimed as exclusive property by any company using the word within its heartland definition. This means the use of the single word "entrepreneur" defined as "one who organizes, manages, and assumes the risks of a business or enterprise" was generic as of (at least) 1933.

2) Entrepreneur Media, Inc. began as a company selling informational products to entrepreneurs, i.e., people who are organizing, managing, and assuming the risks of a business or enterprise, in 1978. Entrepreneur Media, Inc.'s premier product is "Entrepreneur Magazine," which has a strong generic interpretation as "a magazine for entrepreneurs" where "entrepreneurs" is defined in the dictionary sense.

Entrepreneur Media's audience and readership is composed of entrepreneurs and potential entrepreneurs and people interested in entrepreneurs and entrepreneurship (again using the dictionary definition. The field of "entrepreneurship" derives from the base word "entrepreneur."). Entrepreneur Media regularly features and profiles entrepreneurs (again defined by the dictionary definition) in its publications. Entrepreneur Media, Inc.'s other products include "start-up books" and other information to help entrepreneurs (again defined by the dictionary definition) who are organizing, managing, or assuming the risk of a business or enterprise. (Exhibit B is representative of Entrepreneur Media Inc.'s products)

Thus, it is clear that Entrepreneur Media, Inc.'s use of the word "entrepreneur" is well within the heartland definition of "entrepreneur." Given Entrepreneur Media, Inc.'s target market (entrepreneurs and potential entrepreneurs), the people featured in Entrepreneur Magazine (entrepreneurs), and the strong generic interpretation of "Entrepreneur Magazine" as a magazine for entrepreneurs, there is no evidence that Entrepreneur Media, Inc. can submit and there is no argument that Entrepreneur Media, Inc. can validly make to claim that Entrepreneur Media, Inc.'s use of the single word "entrepreneur" is outside the heartland dictionary definition of "entrepreneur."

3) It is fundamental to trademark law 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. Cf. generally 2 McCarthy on Trademark & Unfair Competition §11:11 (4th ed. 1997). Clearly, Entrepreneur Media, Inc.'s use of the word "entrepreneur" is and has always been within the heartland definition of "entrepreneur" and, therefore, all trademarks held by Entrepreneur Media, Inc., a media company selling to entrepreneurs, should be cancelled.

Words, once in the pubic domain, cannot be captured by a company by promoting them as proprietary rights, when the company's use of the word falls within the heartland of the word's established definition and this is regardless of any association that later develops between the word and the company trying to capture the word from the public domain. 1 McCarthy §7:66. Thus, according to the above facts and trademark law, any non-generic use of the word "entrepreneur" by Entrepreneur Media, Inc. in support of non-genericness is irrelevant to this cancellation petition as are any associations claimed by Entrepreneur Media, Inc. between the word "entrepreneur" and Entrepreneur Media, Inc. (Also see the pages attached from the "You Have Mail" case, which incidentally makes frequent, generic use of the word "entrepreneur.")

Given the above facts and the basic trademark law surrounding the attempted capture of words already established within the public domain by companies using the words in their generic heartland sense, we respectfully request that the USPTO cancel Entrepreneur Media, Inc.'s trademarks of the single, generic, word "entrepreneur."

While we clearly feel that the above simple argument concerning word capture and genericness at the time of attempted capture is more than adequate grounds for cancellation of all of Entrepreneur Media, Inc.'s trademarks on the single word "entrepreneur," we can also show overwhelming current, generic use of the word "entrepreneur" when serving the entrepreneurial marketplace. This overwhelming evidence that the primary use of the word "entrepreneur," by the industry serving entrepreneurs, is in accord with the dictionary definition is also sufficient grounds for cancellation of all of Entrepreneur Media, Inc.'s trademarks of the word "entrepreneur."

Overwhelming Generic Use

Generic marks are subject to cancellation at any time and a generic mark lacks protection even if it is incontestable. A mark is considered non-generic when "The primary significance of the term in the minds of the consuming public is not the product but the producer." (Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 118, 59 S. Ct. 109, 83 L. Ed. 73 (1938); see also 15 U.S.C. §1064(3)). Here "the producer" means a reference to a specific and single company. It is important to note that the word "entrepreneur" is inherently a generic reference to a member of an entire class of producers--the class of entrepreneurs.

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.

1. Dictionary Definitions

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."

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.

Encyclopedia.com defines "entrepreneur" as follows:

entrepreneur

Pronounced As: äntrprnûr [Fr.,=one who undertakes], person who assumes the organization, management, and risks of a business enterprise. It was first used as a technical economic term by the 18th-century economist Richard Cantillon. To the classical economist of the late 18th cent. the term meant an employer in the character of one who assumes the risk and management of business; an undertaker of economic enterprises, in contrast to the ordinary capitalist, who, strictly speaking, merely owns an enterprise and may choose to take no part in its day-to-day operation. In practice, entrepreneurs were not differentiated from regular capitalists until the 19th cent., when their function developed into that of coordinators of processes necessary to large-scale industry and trade. Joseph Schumpeter and other 20th-century economists considered the entrepreneur's competitive drive for innovation and improvement to have been the motive force behind capitalist development. Richard Arkwright in England and William Cockerill on the Continent were prominent examples of the rising class of entrepreneurial manufacturers during the Industrial Revolution. Henry Ford was a 20th-century American example. The entrepreneur's functions and importance have declined with the growth of the corporation.

See J. Schumpeter, The Theory of Economic Development (1934); J. W. Gough, The Rise of the Entrepreneur (1969); O. F. Collins, The Organization Makers (1970). (http://www.encyclopedia.com/articles/15426.html)

Encyclopedia.com makes no reference to Entrepreneur Media, Inc. in its definition of "entrepreneur." We could not find a single dictionary which associates the single word "Entrepreneur" with Entrepreneur Media, Inc.

Accordingly, the dictionary factor must weigh strongly in favor of genericness.

Generic Use By The Industry

2. The trade in question is the industry of selling informational products, books, services, and all other resources to entrepreneurs or potential entrepreneurs, i.e., people starting businesses. In addition, there is a large non-profit realm providing information and advice to entrepreneurs.

Entrepreneur Media, Inc. entered this market of selling informational products and print publications to entrepreneurs and began using the word "entrepreneur" in 1978. Entrepreneur Media, Inc. trademarked the word "entrepreneur" in 1982, claiming sole, proprietary use of the word. In 1987, Entrepreneur Media, Inc. began aggressively attacking individuals and smaller companies who used the generic word "entrepreneur" and who also lacked the financial resources to defend themselves from lawsuits. Most recently, Entrepreneur Media, Inc. has aggressively tried to prevent other companies from using the generic word "entrepreneur" in their web domains and online. Upon threat of lawsuit, claiming trademark infringement, Entrepreneur Media, Inc. acquired the domain name entrepreneur.com.

The common use of the word "entrepreneur" by the trade is along the lines of the dictionary usage. It refers to someone who starts a business or undertakes a venture. When used as an adjective it usually means "entrepreneurial" or "for entrepreneurs." It is also the best and only commonly used word, in singular or plural, to refer to the venturesome individuals who comprise the market of people starting a business.

In fact, the word "entrepreneur" was introduced from The French Language into the English Language to facilitate communication and discussion about political economy and business long before Entrepreneur Media, Inc. existed. The word "entrepreneur" was never intended to be used as a proprietary label by those who introduced it into the English Language. Rather than referencing a single source of goods or services, "entrepreneur" was intended as a general, generic term used to refer to a wide variety of individuals who managed businesses providing goods and services. The word was deemed essential to facilitate communication about the economy and business and was widely used in books and publications previous to the existence of Entrepreneur Media, Inc.

In 1901, Richard Ely, writing in An Introduction to Political Economy (text on http://william-king.www.drexel.edu/top/eco/excerpts/Elyxrpt.html), 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.

The function of the entrepreneur has become one of the most important in modern economic society. He has been well called a captain of industry, for he commands the industrial forces, and upon him more than any one else rests the responsibility for success or failure. Business which has achieved magnificent success often becomes bankrupt when, owing to death or some other cause, an unfortunate change in the entrepreneur is made.

"Entrepreneur" entered the English Language because no other adequate word existed to describe the people who started, operated, and managed businesses. It is fundamental to trademark law that:

Trademark law seeks to provide a producer neither with a monopoly over a functional characteristic it has originated nor with a monopoly over a particularly effective marketing phrase. Instead the law grants a monopoly over a phrase only if and to the extent it is necessary to enable consumers to distinguish one producer's goods from others and even then only if the grant of such a monopoly will not substantially disadvantage competitors by preventing them from describing the nature of their goods. Accordingly, if a term is necessary to describe a product characteristic that a competitor has a right to copy, a producer may not effectively preempt competition by claiming that term as its own. (Genesee Brewing Co. v. Stroh Brewing Co., 124 F.3d 137 (2d Cir. 1997))

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. In addition to referring to an individual starting a business, "entrepreneur" refers to an entire niche market of economic significance, the market of people starting a business.

Included with this petition is the Chapter The Making of The Entrepreneur from the book, The Rise of the Entrepreneur, by J.W. Gough which was first published in 1969 (Exhibit A), approximately nine years before Entrepreneur Media, Inc. began using the word "entrepreneur" in selling informational products to entrepreneurs. Gough notes that the word "entrepreneur" entered the dictionary in 1933 and that common use of the word "entrepreneur" predates the existence of the dictionary by twelve years.

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 also attached. Such use again clearly associates "entrepreneur" with its dictionary definition when discussing starting a business.

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 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.


The exhibit provides a representative list of websites using "entrepreneur"

The websites in Exhibit C 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.

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" also follows the generic dictionary definition of the word. A 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 D)

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." 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 Entrepreneur Media, Inc. Allowing a trademark of the word "entrepreneur" by a company selling 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.

Entrepreneur Media, Inc. 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 unfair to allow Entrepreneur Media, Inc. to selectively punish innocent, generic use of the word "entrepreneur."

It is illustrative to notice how Entrepreneur Media, Inc. typically titles its own books (Exhibit ). 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.

Most recently, 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"? Or, is the use intended to confuse and blur the distinction between generic use and claimed proprietary use in the minds of readers?

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." 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 (which seems the more likely case) Entrepreneur Media, Inc.'s use of "Entrepreneur's" in the above book is intended to be along a proprietary usage or semi-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.

Despite the overwhelming generic use of "entrepreneur" in book titles, Entrepreneur Media, Inc.'s Trademark Serial Number 73537579 explicitly lists "BOOKS" among its protected goods and services.

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 associates twenty-five publishing companies with a search of the generic word "entrepreneur." (Exhibit E Attached)

While most generic trademark conflicts involve a noun which is used widely both generically as the name of a product and as the name of a producer, the word "entrepreneur" refers to a member of a generic customer class, people who start businesses. Just as it is unfair for one company to disallow other companies to use a generic name for a type of product, it is similarly restricting to disallow the use of the common, generic name of a customer within a market segment by all but one market participant. Especially, when there doesn't exist an equally suitable name for the target market.

Even the use of the word "entrepreneur" in Entrepreneur Magazine makes extensive implied use of the word's dictionary meaning. We think of "Entrepreneur Magazine" first and foremost as "a magazine for entrepreneurs." This is what gives the name value--it establishes who potential customers are by relying upon the dictionary meaning of "entrepreneur" which is widely understood by the larger population. At best, only weak secondary meaning is implied to "entrepreneur" as to the source of the magazine. Clearly, "entrepreneur" alone implies no association to Entrepreneur Media, Inc.

Not allowing the entire market selling to entrepreneurs to use the generic term "entrepreneur" is unfair and restricts commerce. "Entrepreneur" is the only word in common use to refer to "one who organizes, manages, and assumes the risks of a business or enterprise"

Roget's College Thesaurus lists the potential synonyms of "entrepreneur" to be: "producer, angel, impresario, investor." None of these words conveys the exact meaning of entrepreneur.

Consider an analogy. Suppose a magazine called Men Magazine tried to claim exclusive ownership of the term "Men" in selling to men. It would be a burden upon competitors to market their products using convoluted phrases such as "people not women." It would be only natural for suppliers to the men market to feel that they could use the term "men" in their company name, literature, promotions, etc.

It is just as egregious to claim proprietary ownership of the generic name of an industries' customers as it would be to claim proprietary ownership of a generic term used to refer to a generic product sold by many companies in an industry.

Further, in addition to referring to the industries' customers, "entrepreneur" is also the best an most appropriate label for the founders of businesses and the small businesses themselves which serve the entrepreneurial market. Every individual or company who/which starts a business selling products, services, advice, and/or information to the market consisting of entrepreneurs, according to the dictionary definition, has the right to refer to themselves as "entrepreneur."

Trademark protection of the word "entrepreneur" in selling to the entrepreneurial market, in addition to unfairly restricting the right of the industry to refer to its potential customers as entrepreneurs also prevents members of the industry from referring to themselves using the generic term "entrepreneur."

Using the Men Magazine analogy, if Men Magazine were given a trademark on the phrase "Men" in selling to men, men selling to men would be in the worst possible position of all. Not only couldn't they address their target market by name, but they couldn't identify themselves as members of that target market to show the identity that they have with the market.

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" 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.

An important aspect of trademark protection is to protect the consumer from being mislead about which company provides a given product or service. It is unreasonable to assume, for instance, that The Online Entrepreneur Center which is a partnership between the U.S. Small Business Administration, Cisco Systems, and the San Jose Entrepreneur Center is trying to create a false association to the for-profit company Entrepreneur Media, Inc. or that consumers would be adversely affected by any such confusion. Rather, consumers looking for information about starting a business would be severely hampered if such organizations weren't allowed to freely use the generic term "entrepreneur" in their names, titles, and websites.

In addition to the large number of for-profit organizations selling to entrepreneurs, many organization, associations, universities, and government agencies serve entrepreneurs. These organizations routinely use the word "entrepreneur" in its generic sense.

Examples:

The United States Government routinely uses the word "entrepreneur" in fostering economic development and helping small business owners. For example, the article, Entrepreneur Expands and Builds a Company, resides on The United States Small Business Administration website. (http://www.sba.gov/gopher/Business-Development/Success-Series/Vol9/twodozen.txt). The title does not refer to Entrepreneur Media, Inc. It is a clear generic use of "entrepreneur," almost mimicking the dictionary definition of 'entrepreneur.' But, if "entrepreneur" were deemed to be a valid trademark, such basic generic use could clearly be mistaken as a reference to the holder of the trademark of the generic word. This simple use clearly shows that there is no adequate way to distinguish between generic use of the word 'entrepreneur' and proprietary use of the sole word "entrepreneur." It is impossible to distinguish between the word's use as a generic noun and its claimed use as a proprietary reference to a specific company as the source of goods.

The government HUD program has a MHA Entrepreneur Training Program (http://www.hud.gov/bestpractices/2000/best_nd.html), described as " The Minot Housing Authority (MHA) established a program offering an alternative for the hard-to-employ people in Minot: to operate a business of their own. The Minot Housing Authority's Minot Entrepreneur Training Program promotes self-employment as a viable and legitimate way for participants to become self-sufficient."

The United States Chamber of Commerce has a trademark to the phrase "Entrepreneur's Notebook" with regard to writing magazine articles and features about entrepreneurs.

The United States Patent And Trademark Office makes extensive use of "entrepreneur" in its generic sense. (Exhibit F)

For example, the USPTO web page http://www.uspto.gov/web/offices/com/iip/abt.htm states that some of the goals of the USPTO are:

--Increased USPTO participation in inventor and entrepreneur conferences and seminar programs.

--Establishment of a USPTO Patent Academy based inventor and entrepreneur education initiative, called the Saturday Seminar Series.

--Outreach Teams visiting regional inventor and entrepreneur organization meetings, bringing patent and trademark information and issue discussions to the grassroots level.

All of the above uses of "entrepreneur" are clearly generic. But, if Entrepreneur Media, Inc.'s trademarks of "entrepreneur" were deemed valid, such generic use could easily be confused with a proprietary use of "entrepreneur" as a proprietary reference to a single company. In particular, Entrepreneur Media, Inc. claims exclusive right to use the word "entrepreneur" with respect to all seminars and workshops (Trademark Serial Number 76159837, Exhibit G lists Entrepreneur Media, Inc.'s trademarks of "entrepreneur." Incidentally, Entrepreneur Media, Inc. has also recently trademarked the phrase, "Entrepreneur Expo" which also seems generic-- Trademark Serial Number 75673295)

Exhibit H shows that the Small Business Administration in partnership with the Fort Worth Women's Business Center plans an "Entrepreneur Expo" in 2002. "Entrepreneur Expo" clearly means "An Expo for Entrepreneurs." In this context, "Entrepreneur Expo" clearly, generically describes the product being offered.

Given the high level of university, non-profit, and governmental sponsoring of "entrepreneur workshops" such a trademark of "entrepreneur" in teaching and fostering entrepreneurship is clearly inappropriate. Exhibit I lists other organizations generically using "entrepreneur" with respect to seminars, classes, and workshops.

The USPTO web page http://www.uspto.gov/web/offices/com/speeches/99-37.htm announces:

PATENT COMMISSIONER TO PARTICIPATE IN THE YANKEE INVENTION EXPOSITION

Exhibitors, who are inventors and entrepreneurs exhibiting their inventions and products, are visiting from 27 states, Puerto Rico, UK, Canada and Ireland. Among the 136 exhibitors, 70% hold US Patents. The Patent and Trademark Office (PTO) will also participate in the Yankee Entrepreneur Workshop

 

Stanford University has Stanford Entrepreneur's Challenge which is an annual business plan competition.

The National Association For The Self-Employed has Future Entrepreneur of the Year awards.

The University of Iowa Entrepreneur Association has scholarships.

UW-Eau Claire Entrepreneur Program Awards Scholarships.

The Marriott School has a Entrepreneur Scholarship Program.

The SWE Entrepreneur Award (http://www.swe.org/SWE/Templates/entrepreneurawardspacketFY01.html)

honors the woman engineer who chose to follow a different path than her colleagues in the corporate and academic worlds by striking out on her own to start and/or maintain her own engineering, scientific or technology-based business, and in doing so, serves as a role model to all women who have ever risked financial security for the possibility of uncertain rewards.

It is grossly unfair to these universities and associations which provide scholarships to students and free help to entrepreneurs for Entrepreneur Media, Inc. to claim any goodwill created by these associations as their own by claiming a trademark association between the generic word "entrepreneur" and Entrepreneur Media, Inc. Entrepreneur Media, Inc. isn't a substantial source of free help or scholarships to entrepreneurs. The large amount of goodwill behind the expression "entrepreneur" was not created by Entrepreneur Media, Inc. Rather, this goodwill was created by a wide variety of organizations serving entrepreneurs and the entrepreneurs themselves.

As the "You Have Mail" decision states (page 13 and page 14):

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."

Direct competitors to Entrepreneur Media, Inc., such as Inc. Magazine, frequently use the word "entrepreneur" in its generic sense. The September 30, 2001 issue of Inc. Magazine used the word "entrepreneur" or its variant 22 times. None of the uses of "entrepreneur" were to refer to Entrepreneur Media, Inc. or its products. (Attached Exhibit)

When Kate O'Sullivan, a writer for Inc. Magazine, was asked how she defines "entrepreneur" and what synonyms the word has, she responded: "To answer your question, I define the word entrepreneur as someone who starts his or her own business. I can't think of a synonym."


That professional writers who write about entrepreneurship can't think of synonyms for "entrepreneur" again demonstrates the uniqueness of the word "entrepreneur." Fair use demands that all people be allowed to freely use the word "entrepreneur" within its generic definition.

Performing a search of the word "entrepreneur" on the web site, StartupJournal.com, The Wall Street Journal Center for Entrepreneurs returns 150 articles which use the word "entrepreneur." (Search results attached for the first 40 articles to show representative use of "entrepreneur" by The Wall Street Journal). The overwhelming use of "entrepreneur" is in the generic sense by The Wall Street Journal's StartupJournal.com.

Members of the trade define 'entrepreneur' along its dictionary definition and make no association to Entrepreneur Media, Inc. or its products.

When asked, "As a successful businessman whose companies' successes have been used as case studies throughout academia, including Harvard Business School, how would you define the word 'entrepreneur'?," Bob Reiss, author of Low-Risk, High-Reward, responded:

"I will stick with the definition I put forth in my book. It was formulated by Prof. Howard Stevenson. Here it is with some of my own amendments." Entrepreneurship is the recognition and pursuit of opportunity without regard to the resources you currently control, with confidence that you can succeed, with the flexibility to change course as necessary, and with the will to rebound from setbacks."


When asked, how she defines "Entrepreneur," Judith Kautz, of the About.com Guide For Entrepreneurs, responded: " I wrote a whole feature on "What is an Entrepreneur"

http://entrepreneurs.about.com/library/weekly/1999/aa011199a.htm

Ms. Kautz's definition follows the dictionary definition.

When asked, "As a small business expert and writer of much of the SBA's information about writing a business plan, would you please define the word "entrepreneur" for me? What is both your personal definition and how do you perceive the word "entrepreneur" to be interpreted today?," Linda Pinson, author and creator of business plan software responded:

"The word, entrepreneur is of French derivation defined as follows:

Entrepreneur: enterprising, adventurous, pushing, daring, bold

I have always thought of an entrepreneur as a person who starts a business to follow a vision, to make money, and to be the master of his/her own soul (both financially and spiritually). Inherent in the venture is the risk of what the future may bring. Therefore, I believe that an essential key to success is that the entrepreneur is also be an "educated" risk taker....

I guess you might also say that it is my belief that the owner of the smallest of businesses is still an entrepreneur...and not just a sole proprietor perpetuating his or her own income. His goals may be different, but his risk may be greater depending on the situation.

I think that your question regarding today's broader question of what the term means is a good one. I think that there is a general admiration for the entrepreneur who has a skill and bravely jumps into the middle of the fire hoping not to get burned. If he makes it, he is our shining example of who we want to be. If he does not, we say, "Oh, well" and pay no heed to the plight of his venders, associates, and customers who have been burned in the process.

The view, though, I think is rapidly changing because a large percentage of American entrepreneurs have not been successful. Their industry knowledge and skills have been everything we could hope for......but their business skills have been sorely lacking. I think it is now recognized that the "educated risk taker" will win the race."

When author, syndicated columnist, and small business expert, Azriela Jaffe, was asked how she defines "Entrepreneur," she responded: "A self-employed individual who takes financial and personal responsibility for the cash flow and profitability of his company."

When Gillian Murphy, the leader of San Joaquin Delta College Small Business Development Center, was asked how he defines "Entrepreneur," he responded:

You have asked an interesting question! I believe an entrepreneur is a person who seeks to start or is currently operating a business. An entrepreneur is not static but fluid...continues to seek opportunities and/or different methods of operation. When I think of someone with "an entrepreneurial spirit," I think of a person who will do whatever it takes to be successful in business, e.g., A former client wanted to open a business in a specific strip mall. However, there were no vacancies. He sought out a business that didn't appear to be very healthy. The business owner agreed to my client's suggestion of dividing her premises, leaving her with reduced rent, inventory needs, and general operations. In turn, my client "found" a location where he could operate his business!

When Francie Ward, the CEO of IdeaCafe.com, one of the leading small business websites today was asked, "Please define the word "entrepreneur" for me. What is your personal definition? How do you think the word is commonly interpreted today?," she responded: "I think of entrepreneur as a person who starts a business, and that's how I think the word is usually interpreted."

The word "entrepreneur" is also widely used in academia. "Entrepreneurship" is an entire academic area studied at many universities. "Entrepreneurship" linguistically derives from the word base "entrepreneur." When performing research about entrepreneurs and the economy, researchers often adopt specialized definitions of "entrepreneur" in an attempt to decide exactly which businesses and individuals should be included in various academic studies. All such definitions are similar to the dictionary definition. For example, a researcher at Babson College (http://www.babson.edu/entrep/fer/papers97/hills/hill4.htm) writes:

For the purposes of this paper, entrepreneurs were defined as individuals who had recognized an opportunity and brought together the resources to take advantage of the opportunity. This broad definition is similar to that proposed by Bygrave & Hofer (1991) and Christensen, Madsen, & Peterson (1989).

When Bernard Kamoroff, entrepreneur, owner of Bell Springs Publishing, and author of the highly-regarded and bestselling book (over 500,000 copies sold), Small Time Operator: How To Start Your Own Small Business, Keep Your Books, Pay Your Taxes, And Stay Out Of Trouble! was asked how he defines "entrepreneur," he responded:

Thanks for the kind words about Small Time Operator. Your question is interesting. Why are you asking? The original dictionary definition of entrepreneur is "one who undertakes to carry out an enterprise," the words entrepreneur and enterprise possibly having the same root. But people who do call themselves entrepreneurs I find usually think of themselves as more than "just" a business owner carrying out an enterprise. They view themselves more as a swashbuckler, business adventurer, risk taker. Inc. magazine in particular likes to promote this image. Me personally, I do not make the distinction in my books. One of the fun things of being your own boss is giving yourself whatever title you like.

Not one small business expert, author, columnist, professor, or other person in the trade of selling or providing information to entrepreneurs, when asked to define "entrepreneur," made any reference whatsoever to Entrepreneur Media, Inc. Exhibit K lists other expert definitions of "entrepreneur."

Finally when the editorial staff of Entrepreneur Media, Inc. was e-mailed, asking, "How would you define 'entrepreneur'?," the response was:

Our definition of an entrepreneur is:

Someone, who no matter the stage of their business, has a plan to grow. And when they get near that goal, they have another plan for growth. Ad so on...

Entrepreneurs are never satisfied with the status quo, there's a constant need for growth. At some point in a compnay's growth cycle (and it varies from compnay to company) entrepreneurial thinking must give way to corporte thinking. This is not to say bigger businesses cannot be entrepreneurial (Bill Gates still thinks like an entrepreneur) but that the business' structure becomes less of the free form nature of many entrepreneurial enterprises and more tightly structured.

Entrepreneurs are usually driven by their passions--they are not the the opportunity seekers we saw so much of in the past few years fueling the dotcom frenzy. Obviously there is risk involved in being an entrepreneur, but smart entrepreneurs take calculated risks, not stupid ones.

Rieva Lesonsky
SVP/Editorial Director
Entrepreneur Media Inc.

While it would be common for a writer to ask the editorial staff of a magazine to define their magazine, as in the question, "Define Entrepreneur Magazine," The senior editorial director and senior vice president of Entrepreneur Media, Inc. made no reference whatsoever to Entrepreneur Magazine or Entrepreneur Media, Inc. when asked to define "entrepreneur." Notice that the question specifically said "...define entrepreneur," and did not ask, "define an entrepreneur."

Clearly, generic use by the industry solidly shows that the primary use of the word "entrepreneur" is in its generic sense and not as a reference to Entrepreneur Media, Inc.

Entrepreneur Media, Inc.'s defense of its wordmark "entrepreneur" has been inconsistent. For example, as stated, Entrepreneur Media, Inc. backed down from entrepreneurs.com when Entrepreneur Media, Inc. learned entrepreneurs.com was financially strong and willing to make a legal defense. Now, in the opinion of Entrepreneur Media, Inc., either the domain entrepreneurs.com violates Entrepreneur Media, Inc.'s trademark of "entrepreneur" or it does not. If, according to Entrepreneur Media, Inc., the use of entrepreneurs.com violates Entrepreneur Media, Inc.'s trademarks, Entrepreneur Media, Inc should have pursued and continued the legal action it began. It should not have ceased legal action when it learned that that the defendant was willing to mount a costly legal defense. If, on the other hand, Entrepreneur Media, Inc. feels that entrepreneurs.com is not a violation of their trademarks, then they should not have threatened and began any legal action whatsoever.

Entrepreneur Media, Inc., while targeting individuals and smaller businesses who/which lack the financial wherewithal to defend themselves from lawsuits, has not pursued equivalently aggressive legal action against larger companies which have used the words "entrepreneur" and "entrepreneurs" in an entirely analogous fashion to the way in which smaller companies use these terms.

To the best of our knowledge, Entrepreneur Media, Inc. hasn't filed and pursued legal action against larger companies, such as Ernst & Young with its "Entrepreneur Of The Year" program which includes a publication listing the winners, Bloomberg.com with its "Entrepreneur Network," moreover.com with its "Entrepreneur News" computer network, or The Wall Street Journal with its regular section titled "Entrepreneur's Marketplace."

It is inconceivable that Entrepreneur Media, Inc. isn't aware of this "infringement" of their trademarks by larger companies. It seems clear that any lost name association and dilution of the value of trademarks held by Entrepreneur Media, Inc. for the word "entrepreneur" would be most significant for infringement by larger companies, which Entrepreneur Media, Inc. hasn't aggressively targeted in its legal attacks.

By not pursuing aggressive legal action against larger, financially strong companies, Entrepreneur Media, Inc. demonstrates that such legal fights with larger, financially strong companies would probably end in a loss to Entrepreneur Media, Inc. Either that, or, else, Entrepreneur Media, Inc. does not have the financial or other resources to defend any trademark of the word "entrepreneur" against many competitors in a large market selling informational, service, and media products to entrepreneurs.

This inability to defend Entrepreneur Media, Inc.'s trademark claims against so many larger companies in the broader market of selling informational products to entrepreneurs doesn't stem from brand-name awareness which was created by Entrepreneur Media, Inc. and upon which other companies are encroaching or trying to encroach. Rather, it stems from the word "entrepreneur" being a generic word which refers to a person who "organizes, manages, and assumes the risks of a business or enterprise." (Webster's New Collegiate Dictionary).

Entrepreneur Media, Inc. has selectively attacked small businesses which use the generic words "entrepreneur" or "entrepreneurs" in their business names, products, or websites. By claiming that the use of both of these generic words violates Entrepreneur Media's trademark protection (Primarily Trademark Reg. Nos. 1892783 and 1453968), we believe Entrepreneur Media, Inc. has used predatory business actions, lawsuits, and financial threat to acquire or to attempt to acquire assets rightfully belonging to others at unreasonably low prices and to force smaller competitors out of the market selling to entrepreneurs. Rather than protecting established brand-name awareness, we believe Entrepreneur Media, Inc. has used its trademark as an aggressive weapon of manipulation to extend its reach over the existing entrepreneurial market. We believe this is a misuse of the protection intended to be provided by trademark law.

Claiming the right to the generic word, "entrepreneur," without any other surrounding context, Entrepreneur Media, Inc. filed legal actions against James Borzilleri who had registered the domain name, entrepreneur.com. Entrepreneur Media, Inc. prevented use of the domain name by Borzilleri through Network Solutions, which, at the time, had a policy of not allowing the use of a domain name which it felt might involve any trademark infringement claims at all. This made the domain name useless to Borzilleri.

Faced with losing thousands of dollars in legal fees and an unusable domain name without an expensive legal fight against Entrepreneur Media, Inc., Borzilleri sold the domain name Entrepreneur.com to Entrepreneur Media, Inc. for an undisclosed amount of money, rumored to be about $50,000. When, Borzilleri sold the name Entrepreneur.com to Entrepreneur Media, Inc., Borzilleri signed a confidentially agreement and agreed not to discuss the settlement or his experience with Entrepreneur Media, Inc. publicly.

We believe Borzilleri didn't have the financial resources to defend himself against the much larger Entrepreneur Media, Inc., which it seems selectively targets financially weaker victims who lack the financial capability of an adequate legal defense.

It is unfair to force smaller companies to fight this expensive legal battle in the Courts or to relinquish valuable assets upon threat of lawsuit by Entrepreneur Media, Inc. Using selective lawsuits against financially weaker victims, it is unfair to allow a company to corral a word solidly in the public domain into its proprietary stable by claiming it is aggressively enforcing its legal rights to the word, while, in fact, it is creating a progressively growing veneer of "defense" in an attempt to steal a word within the public domain.

The domain name business.com sold for $7.5 million dollars. It is reasonable to estimate that a domain such as entrepreneur.com could have sold for as much as $1 million. So, through intimidation by threat of costly lawsuits, Entrepreneur Media, Inc. probably acquired an asset worth a substantial amount of money at a bargain-basement rate. Today, domain names are of significantly less value. But, it is conceivable that Borzilleri might have been able to sell entrepreneur.com in the past for a substantial amount of money, had the name been free of Entrepreneur Media, Inc.'s lawsuits.

Today, Entrepreneur Media, Inc. uses the domain name, entrepreneur.com to further its reach into the entrepreneurial market. Through aggressive content syndication, and trying to re-brand its identity as "entrepreneur.com" (rather than as Entrepreneur Magazine or Entrepreneur Media, Inc.), Entrepreneur Media, Inc. is trying to create an association between the generic word "entrepreneur" and their company which did not previously exist.

A generic term cannot be captured as a trademark by promoting it as a trademark because capture: "`would grant the owner of the mark a monopoly, since a competitor could not describe his goods as what they are.'" 601 F.2d at 1017, quoting CES Pub. Corp. v. St. Regis Publication, Inc. (2d Cir. 1975) 531 F.2d 11, 13 ("Consumer Electronics" magazine); see also J. Kohnstam, Ltd. v. Louis Marx & Co., Inc. (CCPA 1960) 280 F.2d 437, 440.

If a person does a general search on a popular search engine, such as google.com, looking for information about becoming an entrepreneur, for example, with the specific phrase, "How can I become an entrepreneur" that person isn't specifically looking for Entrepreneur Media, Inc. The person probably hasn't even heard of Entrepreneur Magazine, Entrepreneur Media Inc.'s main product. Rather, the person is looking for general information about a generic term in common use in the English Language.

We believe by trying to deprive and depriving other entrepreneurs and small businesses, selling informational products, services, and media products to entrepreneurs, high positioning on popular search engines by trying to unreasonably restrict use of the generic word "entrepreneur" in domain names, Entrepreneur Media, Inc. is restricting free trade and commerce and interfering with business relationships.

It is well-known that the words in domain names are significant in determining the ranking of results returned by many search engines. There is no justification for Entrepreneur Media Inc.'s products and services to have a higher ranking than any other company or organization providing informational products, services, and media products to entrepreneurs based upon domain name.

For example, Borzilleri had as much right for any informational products, books, etc., he was selling to entrepreneurs to display highly in a returned list of search engine results looking for information about "How can I become an entrepreneur " as did Entrepreneur Media, Inc.

The high value behind the domain, entrepreneur.com, results from the word's generic use and not any association to or with Entrepreneur Media, Inc. The dollar value of this domain would remain whether or not Entrepreneur Media, Inc. and Entrepreneur Magazine continued to exist or not. This value derives from the word "entrepreneur" referring to a member of a general class of customers--people starting businesses.

By depriving Borzilleri the use of his domain name, "entrepreneur.com," based upon the generic word "entrepreneur," we believe Entrepreneur Media, Inc. has denied equal access to the marketplace selling to entrepreneurs. Lawsuits by Entrepreneur Media, Inc. against Borzilleri also compromised the value and position of Borzilleri in selling the domain name to any other party not Entrepreneur Media, Inc., both by tarnishing the name with threat of lawsuit to potential buyers and by allowing for the possibility of damage suits against Borzilleri after such a sale.

While trademark rights are important, their improper use by companies must not prevent fair and just competition. They must not be used as a monopolistic tool to disadvantage smaller companies in the industry by denying use of a generic word. As the above acquisition of entrepreneur.com shows, holding any trademark rights to a generic word within an industry is inherently unfair. This is why a word is not allowed simultaneous use as a proprietary trademarked term and as a generic term within an industry.

By not aggressively pursing legal actions against larger companies, such as Bloomberg, Ernst & Young and CNN, while at the same time pursuing legal action against smaller, financially weaker companies, Entrepreneur Media, Inc. has decided to only selectively protect its "trademark rights."

Entrepreneur Media, Inc.'s trademark of the wordmark "entrepreneur" currently is technically referred to as "incontestable." Incontestable trademarks tend to give a company a very strong position.

However, acquiring an "incontestable" status for a trademark amounts to only filing a Section 8 Affidavit between five and six years after registration and continuous use of the mark, and, assuming, of course, that the mark hasn't been cancelled.

Had Entrepreneur Media, Inc. aggressively tried to protect against "infringement" of its "entrepreneur" wordmark by larger companies, such as Bloomberg.com with its Entrepreneur Network and the numerous, larger publishers who use "entrepreneur" generically, it seems there is little doubt that the mark would have been cancelled.

By only attacking smaller companies, which lacked the financial resources to bring this aspect of the trademark issue to a full legal decision, while, at the same time, failing to "protect" against "infringement" by larger companies, Entrepreneur Media, Inc. has created a veneer of aggressively protecting its trademark rights, while at the same time, failing to do so and allowing "infringement" by larger companies, such as bloomberg.com. This behavior is unfair to smaller businesses serving the entrepreneurial market. It is particularly unfair to the smaller businesses which have had or could have valuable assets taken from them by Entrepreneur Media, Inc. (for example, as happened with the domain entrepreneur.com) by threat of lawsuit and to those companies selectively attacked with lawsuits in Entrepreneur Media, Inc.'s attempt to show that it is aggressively "protecting" its registered trademark in its attempt to monopolize and capture the generic word "entrepreneur."

And, through this strategy and failure to protect its mark from generic use by large companies, any such trademark rights that Entrepreneur Media, Inc. once had, if any, to the general wordmark of "entrepreneur" should be cancelled, because it is clear, that, even if the wordmark were at one time deemed not to be generic, today, it clearly is generic. It is also interesting to note that while Entrepreneur Media, Inc. first acquired a trademark on the word "entrepreneur" in 1982, it wasn't until 1987 that Entrepreneur Media, Inc. began aggressively "defending" its trademark rights. This coincided with the time frame it takes a trademark to gain "incontestable" status.

It is important to reemphasize that an incontestable trademark can be cancelled due to genericness. And, incontestability of Entrepreneur Media, Inc.'s trademarks is irrelevant to determining if the word "entrepreneur" is generic. If the word "entrepreneur" is deemed generic, Entrepreneur Media, Inc.'s trademarks of the word "entrepreneur" should be cancelled.

What is interesting is Entrepreneur Media, Inc.'s policy of sitting on the trademark of a generic word until "incontestable status" was achieved, and, only then, aggressively "defending" the trademark and trying to "monitor" the word's use. Such a policy seems to show, at best, an abandonment of any trademark rights Entrepreneur Media, Inc. once claimed to the word "entrepreneur," previous to 1987, and, at worst, a strategic attempt to position itself to capture a word it knew to be generic.

Consider an analogy. Suppose that the word "soap" had been trademarked. Obviously, the word "soap" is an inappropriate trademark because it refers to a general class of products. If the owner of the hypothetical trademark of "soap" sat on the trademark for six years and failed to "enforce" its "trademark rights," the soap trademark would also acquire incontestable status.

No one in the soap-making industry would bother to check for any trademark status of "soap," because they know the word to be generic. They would simply use the word freely. And, if no soap manufacturers are threatened with trademark infringement, they will not become alerted to the registered trademark of their generic word "soap." Hence, no one will formally "contest" the trademark's validity during the first six years. If after six years, the owner of this hypothetical trademark pursues aggressive legal action against soap makers, claiming outrage at the widespread infringement of its mark, and trying to argue that the mark isn't generic because it has obtained "incontestable" status, it is important not to allow the trademark holder of "soap" to obscure the basic issue: Is the mark generic or not?

Entrepreneur Media, Inc.'s change in policy between 1982 and 1987 in pursing legal action against users of the word "entrepreneur" should be considered along with its inconsistent defense of its trademark, for example, backing down from the financially-strong entrepreneurs.com, attacking financially weaker victims, etc. Entrepreneur Media, Inc.'s policies of "enforcement" of its trademark "rights" seem to demonstrate that Entrepreneur Media, Inc., itself, recognizes the genericness of the word "entrepreneur" in its industry, and, despite this, tries to profit and has profited from trademarking the common, generic word "entrepreneur."

Accordingly, use by the trade must weigh strongly in favor of genericness.

Entrepreneur Media, Inc.'s Generic Use of "Entrepreneur"

3. Entrepreneur Media, Inc. makes extensive generic use of the term "entrepreneur" in its books, magazines, and websites.

Consider the previously stated definition of "entrepreneur" given by Rieva Lesonsky, SVP/Editorial Director of Entrepreneur Media, Inc. The editorial staff clearly uses the word "entrepreneur" in its generic sense and as a noun.

Rieva Lesonsky writes in her Entrepreneur Magazine column titled, "Game Not Over" subtitled Who Are You?" (attached exhibit L):

Are you an entrepreneur? Of course you are; why else would you be reading this magazine? Why am I asking? Because lately I've been alternately amused and angered by those who claim to know you and your business.

I'm amused, because in their compulsion to slap a "cute" label on nearly every group in this country, people have come up with some pretty clever names for who they think you are. And their arguments in defending those labels seem sincere. The only problem is that by being cute, they've put you in a box-and a box, by its very definition, has boundaries.

And by its very definition, an entrepreneur does not. That's when I get angry. When people use terms like "solo," "free agent" or "SOHO," they obscure who you are today-and where your business will be tomorrow.

So let's get this straight once and for all. Entrepreneurs are the people who (no matter the size of their businesses today) have a plan to be bigger tomorrow-and the day after that . . . and the day...

The above column shows that senior editorial staff of Entrepreneur Magazine and Entrepreneur Media, Inc., themselves, acknowledge that all their readers are entrepreneurs or potential entrepreneurs and that's why they're reading Entrepreneur Magazine. "Entrepreneur" is the commonly-understood name of a single member the magazine's target market. And, of course, the readers know this. Entrepreneur Magazine readers are reading the magazine because they define themselves as "entrepreneur" relying upon the generic dictionary definition of the word "entrepreneur." "Entrepreneur Magazine" is a magazine for entrepreneurs.

Thus, Entrepreneur Media, Inc.'s trademarks of "entrepreneur" amount to trademarking the generic and common name of an entire class of customers and potential customers within their industry. And, this market segment existed long before Entrepreneur Media, Inc. became a company selling to this market segment. Just as Entrepreneur Media, Inc. did not event the term "entrepreneur," it did not create the market consisting of entrepreneurs. Rather than trying to protect brand-name awareness created by Entrepreneur Media, Inc. in regard to its publications, Entrepreneur Media, Inc. is trying to capitalize on public generic use of the word "entrepreneur," and at the same time, claim proprietary ownership of the word "entrepreneur."

It is interesting to note that with such widespread "infringement" of its trademark of "entrepreneur," especially in the field of book publishing with so many competing titles using "entrepreneur," that Entrepreneur Media, Inc. hasn't and doesn't issue any public statements saying, "'Entrepreneur' is primarily defined as a reference to our company."

We were unable to find any publicly promoted claims by Entrepreneur Media, Inc. to proprietary ownership of the word "entrepreneur." It seems a company which feels it has a legitimate right to a particular trademark would publicize such ownership upon such widespread infringement, rather than trying to "protect" their trademark rights covertly. Entrepreneur Media, Inc. has not done this. It seems oxymoronic to need to covertly "defend" one's trademark rights. Yet, that seems to be that path taken by Entrepreneur Media, Inc. Entrepreneur Media, Inc. while claiming trademark ownership of the generic word "entrepreneur" will not come out and publicly announce that its primary definition of "entrepreneur" is as a reference to its own company, and not the dictionary definition.

If the editorial staff of Entrepreneur Magazine were asked to define "entrepreneur" by a writer or by an organization looking for a quote and Entrepreneur Magazine gave such a self-referencing definition, the editorial credibility of Entrepreneur Magazine would quickly be destroyed. Writers and organizations would cease to trust Entrepreneur Magazine as a source, because these writers and organizations are already somewhat familiar with the definition of "entrepreneur" and it coincides with the dictionary definition.

In trying to prevent publicity surrounding Entrepreneur Media, Inc.'s "ownership" of a trademark of "entrepreneur," Rieva Lesonsky wrote (letter and response attached, Exhibit M):

Entrepreneur Magazine registered its trademark years ago before the word became popular. I know -- I started working here in 1978. Believe me, back then hardly a soul in this country used the word "entrepreneur" let alone knew what it meant. Entrepreneur is not preventing anyone from using the word "entrepreneur." Of course we do not own the word. What we do own is the right to use that word as a trademark to represent products (books, magazines, other publications, etc.). This is no different from Apple Computers protecting the word Apple from being used to represent computers and related products.

We reiterate that a word that is established in the public domain cannot be captured by promoting the word as a proprietary reference when the word's use overlaps with the heartland of the generic definition. Referring to the You Have Mail case (page 12 attached), we clearly see that Apple Computer's use of "Apple" differs tremendously from Entrepreneur Media, Inc.'s use of "Entrepreneur" in that applying "apple" to computers is far outside "apple"'s generic word definition. Entrepreneur Media, Inc.'s use of "entrepreneur" overlaps the generic definition of "entrepreneur" completely.

Rieva's quote is akin to an apple grower saying, "Of course 'apple' is generic, but we aren't claiming the generic use, we're only claiming the proprietary use!" This would also be equivalent to saying, "We have the right to trademark a generic word within our industry and restrict and prevent other companies from using that generic word in certain circumstances." This is in flat contradiction to trademark law--within an industry 'trademark' and 'generic' are mutually exclusive.

When a generic word is arbitrarily applied to goods and services far outside of the word's generic use, the word may become an arbitrary trademark deserving of strong protection. "Apple" modifying "computers" is an arbitrary application of the word "Apple" to a realm totally removed from the heartland generic definition of "apple." As we have shown, Entrepreneur Media, Inc.'s use of "entrepreneur" overlaps the established, generic definition of "entrepreneur" completely. Thus, while Apple Computer's trademark of "Apple" is classified as an arbitrary trademark, Entrepreneur Media, Inc.'s use of "entrepreneur" could never be classified as an arbitrary application of the generic word "entrepreneur" to a realm unrelated to the word's generic definition. Entrepreneur Media Inc.'s trademark of "entrepreneur" could never be classified as an arbitrary trademark.

In an article titled For Love Or Money? Could The Beatles' "Money (That's All I Want)" be the theme song for today's young entrepreneurs? You be the judge (Business Start-Ups Magazine, March 2000, an Entrepreneur Media, Inc. publication), Michelle Prather writes:

And don't forget the white-hot selling-out-to-the-public-to-raise-tons-of-money-and-maybe-get-rich method, where the founders of Private No More Co. can still claim ownership--along with a bevy of shareholders. Now no one's saying it's right or wrong. But aside from the fact that this trend is altering the strict definition of "entrepreneur," some insiders fear wealth-centric temptations--primarily of the IPO sort--will lead to business plans devoid of substance and multimillion-dollar ad campaigns backing shoddy products. To investigate whether the old-fashioned entrepreneurial ethic of starting up for the sake of autonomy rather than making obscene amounts of money overnight still exists, we asked several young current and former business owners what motivated them.

Prather clearly states that the tendency of people trying to get rich quickly by selling a company on the public stock exchanges (rather than building and growing a private company) is "... altering the strict definition of 'entrepreneur...'" If, in Prather's view, "entrepreneur" primarily referred to Entrepreneur Media, Inc. as the specific source of goods and services, this sentence would make no sense whatsoever. We can conclude that Prather considers the "strict definition of 'entrepreneur'" to, more or less, coincide with the dictionary definition of "entrepreneur."

Entrepreneur Media, Inc. owns a web domain, SmallBizBooks.com, to promote its informational products. The title of this site is "Entrepreneur Magazine's SmallBizBooks.com" again illustrating the need for "Magazine" to qualify "Entrepreneur" if the viewer is to associate the book site with Entrepreneur Media, Inc. I.e., a hypothetical "Entrepreneur's SmallBizBooks.com" would be insufficient to identify the source. The subheading to the logo reads, "Tools to help you plan, run and grow your business" clarifying that Entrepreneur Media, Inc.'s use of "entrepreneur" falls within the heartland definition of "entrepreneur."

On this page reads the promotional message, "Essential Books for Entrepreneurs" (attached Exhibit N). This, again, clearly indicates that Entrepreneur Media, Inc. is aware that their readership is defined by the dictionary definition of "entrepreneur" and that Entrepreneur Media, Inc.'s use of "entrepreneur" lies within the heartland of the generic, dictionary definition.

Other Entrepreneur Media, Inc. titles regularly use "entrepreneur" generically:

Entrepreneur Magazine's How To Become An Internet Entrepreneur

Gen E: Generation Entrepreneur is Rewriting The Rules of Business--and You Can, Too!

Radicals & Visionaries: Entrepreneurs Who Revolutionized the 20th Century.

Extreme Entrepreneur: Intelligent Information from the Edge

We also reaver that Entrepreneur Media, Inc.'s title Entrepreneur's Ultimate Start-Up Directory: 1,350 Great Business Ideas clearly shows that Entrepreneur Media, Inc.'s use of "entrepreneur" is indistinguishable from common, generic use in non-Entrepreneur Media titles such as Entrepreneur's Guide published by Macmillan Publishing Company in 1980.

It is also informative to note that Entrepreneur Media, Inc.'s Trademark Serial Number 76159837 lists goods and services as "Arranging And Conducting Trade Show Exhibitions In The Field Of Entrepreneurial Activities, Namely The Start-Up And Operation Of Small Business Enterprises." This again is conclusive proof that Entrepreneur Media, Inc.'s use of "entrepreneur" is within the heartland of the common, generic definition. Here, Entrepreneur Media, Inc. clearly uses "entrepreneurial" (which derives from the root word "entrepreneur") in the generic sense.

Accordingly, Entrepreneur Media, Inc.'s own use must weigh strongly in favor of genericness.

Generic Media and Survey Use

4. Generic use of "entrepreneur" in the media and in customer surveys also follows the dictionary definition.

For example,

A recent article in Business Week (www.businessweek.com/smallbiz/0003/vc000308.htm) was titled "The One-Minute Entrepreneur." The article is about a venture capital firm which gives entrepreneurs 60 seconds to explain their business plan.

Entrepreneur Diaries (www.businessweek.com/smallbiz/news/coladvice/diarytoc.htm, stories of entrepreneurs and their attempts to build a business.)

"Nightly Business Report and MyPrimeTime, Inc. Team Up to Create 'Great Entrepreneurs' Public Television Series" (http://www.myprimetime.com/misc/press/great_entrepreneurs.shtml)

National survey shows slight slip in entrepreneur confidence (http://nashville.bcentral.com/nashville/stories/2001/08/27/story4.html, Entrepreneurs are surveyed to get their confidence in the economy. Such use clearly shows a generic use of "entrepreneur" along the lines of a class or subclass of society as previously noted by John Maynard Keynes and F.A. Walker. To the best of our knowledge, no one is interested in monitoring the confidence of Entrepreneur Media, Inc.)

Hispanic Entrepreneur 100 (http://www.hispaniconline.com/res&res/toplists/tp100_ix.html, "Hispanic Magazine lists 100 of the fastest-growing Latino businesses as part of our Entrepreneur 100 package. This year's Hispanic Entrepreneur 100 is especially significant because of the recent U.S. Census figures showing Latinos are about to become the largest minority group in the United States.")

"Entrepreneur Plans Next-Generation Net for Whole World" (http://www.gsreport.com/articles/art000049.html) An article by Susan Dumett for ABCNews.com begins "Neil Tagare, president of New Jersey-based CRT Group, says he'll build a new high-speed fiber optic network that links the whole world and brings underdeveloped countries into the global marketplace."

Entrepreneur Media, Inc. while a primary beneficiary of the development of the internet hasn't contributed to the development of the Internet. Many other entrepreneurs have. In the media, "entrepreneur" is most often used within its dictionary meaning to refer to a specific entrepreneur who is discussed in the article. To the best of our knowledge, Entrepreneur Media, Inc. has no plans to create high-speed fiber optics to network the world.

Yet, Entrepreneur Media, Inc. has trademarked the rights to the wordmark "Entrepreneur" with respect to computer networks. Trademark Serial Number 75018382, with goods and services listed as:

IC 035. US 100 101 102. G & S: Advertising and business services, namely, arranging for the promotion of the goods and services of others by means of a global computer network and other computer online services providers; providing business information for the use of customers in the field of starting and operating small businesses and permitting customers to obtain information via a global computer network and other computer online service providers and; web advertising services, namely, providing active links to the websites of others.

The reality is that Entrepreneur Media, Inc. was a relative latecomer to the Internet phenomenon and growth of computer networks in general. Entrepreneur Media, Inc. is not a technological innovator. Entrepreneur Media, Inc. is primarily a publisher of magazines about starting a business and the publisher of loose-leaf "Start-Up Guides" held together by three-ring binders.

Many other companies are innovating to provide smaller businesses and larger businesses alike with computer networks to facilitate the transfer and purchasing of goods and services by enhancing information flow. These networks are often called B-to-B hubs or business-to-business hubs. And, these companies and the individuals starting them often define themselves as "entrepreneurs" both as business founders and as innovators breaking new ground.

Those networks serving the entrepreneurial community should have the right to use the generic word "entrepreneur" to refer both to themselves and to refer to a substantial segment of their market base--the owners of businesses. There is absolutely no justification whatsoever for Entrepreneur Media, Inc. to be able to claim proprietary use of "entrepreneur" with respect to computer networks. Any entrepreneur should be able to form a network serving entrepreneurs and call it "Entrepreneur Hub," "Entrepreneur Network," "Entrepreneur Marketplace," "Entrepreneur Exchange," or any of a hundred other names that incorporate the generic word "entrepreneur." "Entrepreneur" refers to an entire class of capitalists and business founders who are in constant need of locating new suppliers and current information about running their business. And, a name such as "Entrepreneur Exchange" clearly generically means "An exchange for entrepreneurs."

According to The National Purchasing Association it costs about $150 to process a purchasing order at a larger company, while online the cost is only about $25 (Source: From .com to .profit Inventing Business Models That Deliver Value And Profit By Nick Earle and Peter Keen). Thus, the total future savings of computer networks to both smaller businesses and larger businesses represents potentially billions of dollars. Rather than protecting brand-name awareness of any computer network established by Entrepreneur Media, Inc., this trademark represents an attempt to cash in on the hard work of other entrepreneurs by restricting their use of the generic word "entrepreneur" which refers to a substantial portion of their target market--the market of business owners who regularly define themselves as "entrepreneur."

Trademark Serial Number 75018382, claiming proprietary ownership of the generic word "entrepreneur" in "...providing business information for the use of customers in the field of starting and operating small businesses" is ludicrous in light of the dictionary definition of "entrepreneur."

Today, Entrepreneur Media, Inc. has created a large web site consisting of articles about entrepreneurship. Entrepreneur Media, Inc. aggressively syndicates its content and advertises widely. However, for Entrepreneur Media, Inc. to claim proprietary use of the word "entrepreneur" with respect to "... namely, providing active links to the websites of others...." is also ludicrous.

Before Entrepreneur Media, Inc. entered the web, there were already many individuals and companies providing hypertext links to online information useful to entrepreneurs and using the term "entrepreneur" with respect to those links and websites (For example, Borzilleri was using the web domain entrepreneur.com years before Entrepreneur Media, Inc. created its first Internet web site.). Today, the word "entrepreneur" is in widespread Internet use in referring to web pages linking to websites of interest to entrepreneurs. Such use is expected given the dictionary definition of "entrepreneur." It is unfair to businesses, academic institutions, individuals, and organizations to restrict the use of the sole, generic word "entrepreneur" when linking to resources for people starting a business.

Consider the simple example of an individual writing an online article about starting a business for young people. If the individual uses the generic word "entrepreneur" and decides to make the word a hyperlink to another page which defines the word "entrepreneur" according to its dictionary definition, this individual writer could easily be deemed in violation of Entrepreneur Media, Inc.'s Trademark Serial Number 75018382, if the trademark were deemed valid and not cancelled.

It is also interesting that, in light of Trademark Serial Number 75018382, a claimed trademark on the use of "Entrepreneur" with respect to networks providing information to entrepreneurs, that Entrepreneur Media, Inc. doesn't challenge larger companies who have created "Entrepreneur Networks." In particular, bloomberg.com has an "Entrepreneur Network" on which Entrepreneur Media, Inc. advertises. (A print out of such a web page is attached. Exhibit O.) This, again, shows Entrepreneur Media, Inc. selectively enforces its trademarks. Turning a blind eye to widespread "infringement" of its trademarks by financially strong companies and even trying to partner with them and profit by advertising on their websites represents trademark hypocrisy, and, incidentally, abandonment of any rights to a trademark of "entrepreneur" with respect to computer networks.

Entrepreneur Media, Inc. also syndicates its articles via moreover.com which has a "Entrepreneur News" syndication feed that is widely distributed over the Internet. Many other companies distribute content over moreover.com's highly-respected Entrepreneur News, including Business Week and inc.com. Entrepreneur Media, Inc. is only one of their content sources. Rather than challenging moreover.com's use of "Entrepreneur News," Entrepreneur Media, Inc. has decided to profit from moreover.com's technical ability to syndicate content and turn a blind eye to their use of "Entrepreneur News."

While "Entrepreneur News" is again a clear generic use of "entrepreneur" implying "News of interest to the entrepreneur," if Entrepreneur Media, Inc.'s trademarks of "entrepreneur" were deemed valid, this use would also clearly be confusing with the source of the news. In light of Entrepreneur Media, Inc. claiming exclusive trademarked use of a computer network to provide information useful to people starting a business, partnering with moreover.com and distributing its content via moreover.com's Entrepreneur News Internet distribution network shows that Entrepreneur Media, Inc. is far less concerned with "protecting" its trademark "rights" than it is in furthering its reach into the existing entrepreneurial marketplace. It is also interesting to note that Entrepreneur News often appears with no specific content from Entrepreneur Media, Inc. Clearly, Entrepreneur Media, Inc. has the policy of ignoring trademark "infringement" when it seems in its own best interest to do so.

While ignoring "infringement" of its Trademark Serial Number 75018382 by computer networks such as Entrepreneur News and bloomberg.com's Entrepreneur Network, Entrepreneur Media, Inc. has attacked smaller software companies which use the generic word "entrepreneur." A smaller company, Stardock, produced a computer game it titled "entrepreneur." Upon threat of lawsuit, Stardock renamed its game "The Corporate Machine." The industry of Stardock is that of providing PC games.

It seems that using "Entrepreneur" to refer to a player or a fictional character in a computer game who is competing against other players or fictional characters in building imaginary companies is clearly a generic use of "entrepreneur." The player is pretending to be an entrepreneur, i.e., "one who builds a company." It also seems that there is little real likelihood of consumers confusing a PC game with the informational products of Entrepreneur Media, Inc. Certainly, the potential for consumer confusion is less than it would be with "Entrepreneur News" for example.

Consider the analogy: Would it be fair for one company to claim exclusive use of the word "fighter" and to deny other more aggressively-minded computer companies use of that generic word?

Stardock's "Entrepreneur" game was popular and growing rapidly when it was forced to abandon its name or else engage in a legal fight with a much larger company. And, such a fight was not a computer simulation, it costs real money. Undergoing a name change also costs a company money because customers are looking for their product under the old name. Stardock is one example of a smaller company financially compromised by Entrepreneur Media, Inc.'s attempt to create a veneer of protecting its trademark of "entrepreneur" while trying to monopolize the internet use of the generic word "entrepreneur."

Attacking Stardock seems to show that Entrepreneur Media, Inc. wants to prevent other companies from using "entrepreneur" in its generic sense when selling to entrepreneurs. Entrepreneur Media, Inc. wants to monopolize the generic name of its target market.

It is impossible to overemphasize the market value that entrepreneurs represent. As Thomas Stanley notes in The Millionaire Next Door two-thirds or more of those who are millionaires are business owners. These affluent are organizing, managing, and assuming the risks of business ownership. They are entrepreneurs by definition.

The purpose of trademark law has never been to prevent all companies except for one from addressing their target market by its generic name. The purpose of trademark law is not to restrict access to a market by allowing one company to capture the generic name of the market members.

Entrepreneur Media, Inc. tried to acquire the domain entrepreneur.net from its rightful owner, Jeff Busche, upon threat of lawsuit claiming that Entrepreneur Media, Inc. had exclusive right to "entrepreneur" when applied to networks. In light of Entrepreneur Media, Inc.'s advertising on bloomberg.com's Entrepreneur Network, which demonstrates Entrepreneur Media, Inc. isn't concerned with protecting any established "entrepreneur network" identity, clearly Entrepreneur Media, Inc.'s intent in attacking Busche and entrepreneur.net was to acquire another valuable asset through intimidation and threat. "Entrepreneur Network" is clearly a generic use of "entrepreneur" implying a network of or for entrepreneurs. Entrepreneur Media, Inc.'s attempt to acquire the domain entrepreneur.net illustrates why a single company is not allowed to capture a generic word within an industry—such capture can be used to unfairly disadvantage competitors within the industry and can even be used to attempt to expropriate valuable assets from competitors through a misuse of trademark law.

"Internet Pioneer & Entrepreneur Wins $250K Science Prize" (http://www.com21.com/news/nr_04-26-01.html), begins " ABC News Anchor Announces Paul Baran to Donate Money to Franklin Institute to `Inspire Another Generation' of Kids."

The St. Paul Pioneer Press (September 16, 2001) has a page titled "Entrepreneurs" which has an article about Larry Teolis who launched his business using credit cards. "Entrepreneurs" is a regular feature The St. Paul Pioneer Press.

Entrepreneur Spotlight (www.thestandard.com/article/0,1902,28164,00.html, thestandard.com was the leading publication featuring internet companies until its bankruptcy. It ran a feature called "Entrepreneur Spotlight" which featured entrepreneurs. The above link is one representative feature. "Entrepreneur Spotlight" again demonstrates the impossibility of distinguishing between generic use of "entrepreneur" and any claimed proprietary use of "entrepreneur" by Entrepreneur Media, Inc. The generic use clearly means "A spotlight on Entrepreneurs" or "A feature of an entrepreneur." However, if "entrepreneur" were deemed a valid trademark and not cancelled, such generic use could be misinterpreted to mean the source of the spotlight.

In a March 1999 CNN article titled Space entrepreneur may inspire 'rocket boys' for a new millennium, Miles O'Brien discusses "...an intriguing American entrepreneur by the name of Jim Benson" who has started the first space exploration company which is developing its SpaceDev Near Earth Asteroid Prospector (NEAP) satellite. O'Brien explains Benson's goal:

Benson eventually would like to mine Nereus [Near-Earth Asteroid] for its resources. Can you guess what resource might be most precious on an asteroid? It's water. That's right, water. After all, remember what rocket fuel is: hydrogen and oxygen. H20 -- ice -- might prove, in space, all that glitters really isn't gold. Who knows? Jim Benson might one day become the John D. Rockefeller of the space revolution.

Benson is already a successful entrepreneur from the computer industry. The article begins by mentioning Homer Hickam Jr., about whom the movie "October Sky" was made. Many people would also describe Hickman as an entrepreneur in that he broke new ground and did something unique. 'Entrepreneurial' and 'entrepreneur' are often used today to describe people who are venturesome and who think outside of the box, even if they aren't company founders.

The above article is especially useful because it also demonstrates the unique and amazing undertakings of entrepreneurs. There is a tremendous worldwide respect for entrepreneurs because they innovate and build new products, develop new industries, propose unique ideas, and have created the majority of employment and job growth. It is grossly unfair to allow Entrepreneur Media, Inc. to usurp this goodwill, which collectively belongs to all entrepreneurs, by trying to claim proprietary ownership of the generic word "entrepreneur."

One such glorified definition of "entrepreneur" aimed to younger entrepreneurs comes from Young Entrepreneur (http://www.marketplaceofideas.com/Guide/chapters/businesses.htm):

WHAT IS AN ENTREPRENEUR? Definition: An Entrepreneur (ahn'tra pra nur) is a person who organizes and manages a business undertaking, assuming the risk for the sake of profit. Any person (any age) who starts and operates a business is an entrepreneur. Entrepreneurs CHANGE THE WORLD! Entrepreneurs are pioneers of business. Sometimes they create a new business concept so outstanding that it actually changes the world. Two examples of business concepts that have revolutionized the world are: Overnight package delivery; and Home delivery of pizza.

What other concepts can you think of?

This adoption of the word "entrepreneur" to refer to people who are venturesome or innovative, but who aren't starting a business, shows the high-regard that people in the larger population hold for entrepreneurs.

The Webster University Gerontology Program (http://www.webster.edu/~woolflm/gernpage.html) writes that their students "... will be particularly successful if they see themselves as entrepreneurs in the field of gerontology." "Entrepreneurs," in this use, means "innovative." Such widespread use of the word "entrepreneur" to mean "innovative" represents the natural linguistic evolution of the generic word "entrepreneur."

The New York Times Company has an Entrepreneur's Special Section (http://www.nytimes.com/specials/entrepreneurs/index.html).

From Business Central, A poplar online business magazine, (http://eastbay.bcentral.com/eastbay/stories/1999/01/18/editorial2.html): "Someone asked me to define entrepreneur seeing as how we repeat the word about a 100 times in our newspaper each week." The definition is effectively the dictionary definition.

Doing a search of the word "entrepreneur" on CBS news (CBSnews.com) is particularly informative because CBS search results return sufficient context to see how "entrepreneur" is used in the articles returned from the search. 89 current mentions of "entrepreneur" were returned. Not one of the 89 articles uses "entrepreneur" as a proprietary reference to Entrepreneur Media, Inc. All uses follow the dictionary definition. (A print out of saved search results are included).

Similarly, doing a search of "entrepreneur" on CNN's website, cnn.com, also shows dominant generic use following the dictionary definition. (A print out of saved search results are included. The most relevant results are listed first and those show clear generic use of "entrepreneur" often in the article title or headline.)

The attached Exhibits P show common, generic use by the media.

Customer surveys are also interesting because the customer market in question consists of individuals who already define themselves as entrepreneurs. The primary definition of "entrepreneur" within this market segment coincides with the dictionary definition and the definition previously given by small business experts.

In fact, many surveys of entrepreneurs exist and go by the name of "Entrepreneur Survey." While "Entrepreneur Survey" is clearly a generic use of the generic word "entrepreneur" meaning "A survey for entrepreneurs" or "A survey about entrepreneurs" or "A survey of the entrepreneur class" such use could easily be confused with any proprietary use of the sole word "entrepreneur" as a reference to a specific company providing goods and services, if we allow the sole word "entrepreneur" to be deemed a valid trademark. This again shows the impossibility of distinguishing between acceptable generic use and any proprietary use of the sole word "entrepreneur." Especially when the trademark claims exclusive right to use the word "entrepreneur" with respect to printed publications.

Inside-business.com has Entrepreneur Survey

(www.inside-business.com/editorial/entrepreneur_survey.asp)

Intercultural Entrepreneur Survey (home.rica.net/aia/pages/s-ent1.htm)

Entrepreneur Survey (www.makingittv.com/we_want_to_hear_from_you.htm)

Surveying the understanding of the dictionary definition of "entrepreneur" is, in fact, considered a measure of basic economic literacy within the American population.

The National Council On Economic Education (http://www.ncee.net/poll/results.html) has The Standards in Economics Survey which "... was designed to evaluate adult and student understanding of the Voluntary National Content Standards in Economics, developed and published by the National Council on Economic Education). This economic literacy survey concludes (among other conclusions, Part III. Factors Pertaining to Production):

Students are much less likely than adults to be familiar with the definition of an entrepreneur, but just as likely to understand the concept of scarcity.

· Three out of four (76%) American adults, compared with three out of five (58%) high school students, are aware that a person who starts a business to produce a new product in the marketplace is known as an entrepreneur.

· One in four (26%) students does not know whether someone who starts a business to produce a new product in the marketplace is a manager, a bureaucrat or an entrepreneur.

Accordingly, use by the media and in customer surveys must weigh strongly in favor of genericness.

Conclusion

Despite the widespread primary use of "entrepreneur" in its generic sense by the print media, and, especially, that segment of the print media and book publishing industry which serves the market composed of entrepreneurs, Entrepreneur Media, Inc. claims exclusive use to the sole word "entrepreneur" for all Class 16 goods consisting of all paper goods and printed matter (Trademark Serial Number 73537579):

IC 016. US 038. G & S: PAPER GOODS AND PRINTED MATTER; NAMELY MAGAZINES, BOOKS AND PUBLISHED REPORTS PERTAINING TO BUSINESS OPPORTUNITIES.

Within this segment of the publishing industry, "entrepreneur" is clearly generic and Trademark Serial Number 73537579 should be cancelled.

Despite the widespread and generic use of "entrepreneur" within academia, non-profit organizations, government organizations, and for-profit entities which foster entrepreneurship by teaching the subject of entrepreneurship and providing lectures, seminars, workshops, retreats, and other education to entrepreneurs and prospective entrepreneurs, Entrepreneur Media, Inc. claims sole right to use the word "entrepreneur" with respect to educational services (Trademark Serial Number 76159837):

IC 035. US 100 101 102. G & S: Arranging And Conducting Trade Show Exhibitions In The Field Of Entrepreneurial Activities, Namely The Start-Up And Operation Of Small Business Enterprises. FIRST USE: 19911018. FIRST USE IN COMMERCE: 19911018

IC 041. US 100 101 107. G & S: Educational Services, Namely, Conducting Seminars On The Development And Operation Of Businesses, And Conducting Work Shops On Computer Technology, Telecommunications, Marketing, Financing Options, Real Estate Management, Tax Planning And Insurance.

Within this segment of the educational services industry, the word "entrepreneur" is clearly generic and Trademark Serial Number 76159837 should be cancelled.

As previously demonstrated, "entrepreneur" is a generic term within the field of computer networking of business services and providing information and links to websites of interest to entrepreneurs. Entrepreneur Media, Inc. claims sole use of "entrepreneur" within this industry via Trademark Serial Number 75018382, with goods and services listed as:

IC 035. US 100 101 102. G & S: Advertising and business services, namely, arranging for the promotion of the goods and services of others by means of a global computer network and other computer online services providers; providing business information for the use of customers in the field of starting and operating small businesses and permitting customers to obtain information via a global computer network and other computer online service providers and; web advertising services, namely, providing active links to the websites of others.

Clearly, within this industry of providing online information, "entrepreneur" also is used in its generic, dictionary sense and so Trademark Serial Number 75018382 should be cancelled.

Finally, to prove genericness, "Glover v. Ampak, Inc., 74 F. 3d 57,059 (4th Cir. 1996) and Anti-Monopoly, Inc. v. General Mills Fun Group, Inc. 684 F. 2d 1316, 1319 (9th Cir. 1982) have held that the relatively weak preponderance of the evidence standard is applicable to a genericness defense in the right to use a word.

In light of the above arguments and evidence, it is clear that the primary use of the word "entrepreneur" is not to refer to Entrepreneur Media, Inc.'s as the producer of products and services, but to refer to its dictionary definition, which is in common and widespread use in the industry of selling and providing books, informational products, other products, and services to entrepreneurs. "Entrepreneur" is a generic word in the industry and is a generic reference to a non-specific provider of goods and services. The word "Entrepreneur" standing alone not only fails to primarily refer to Entrepreneur Media, Inc. as the specific producer of goods and services for entrepreneurs, but there is little, if any, association between the single generic word "entrepreneur" and Entrepreneur Media, Inc. as the producer of goods and services for entrepreneurs. The evidence of generic use is overwhelming. Entrepreneur Media, Inc.'s trademarks of the wordmark "entrepreneur" should be cancelled as such a trademark unfairly prevents competitors from using a generic word which is necessary to describe themselves, their potential customers, and their customers.


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