In an attempt to garner the "idiot of the year award", Entrepreneur
Media, the parent company for Entrepreneur magazine, has targeted Santa
Barbara-based Hispanic Business in what could become a nasty trademark
fight over the use of the word "entrepreneur".
The developing dispute revolves around the word entrepreneur. According to dictionary.com, entrepreneur is a
French word that refers to "a person who organizes, operates and assumes the
risk for a business venture."
Although Entrepreneur owns the trademark to
the word in publication, Hispanic Business has filed for a trademark for the
phrase "Hispanic Business Entrepreneur." Both are monthly
publications.
Mark Finkelstein, Entrepreneur’s lawyer, said he’s sent a
cease and desist letter to Hispanic Business over the pending trademark, and he
might file an official objection with the U.S. Patent & Trademark
Office.
Craig Snyder, Hispanic Business’ lawyer, said he’s seen the
letter, but he’s undeterred in securing the trademark.
"There’s no
dispute at this point, nothing but a lawyer sending a [cease and desist]
letter," Snyder said. "I’m sure they send hundreds."
Hispanic Business
declined to comment, but Finkelstein said the disagreement is strictly a legal
one.
That’s not how Gelly Borromeo feels.
In the early 1980s,
Entrepreneur went after her fledgling magazine, Asian Entrepreneur, for using
the word.
"We had to change," Borromeo said, to Asian Enterprise, after
Entrepreneur brought a legal action against her magazine. "We were less than a
year old."
When reached at her offices in Hawaii, Borromeo said the paper
is doing very well now, but the experience still lingers in her
mind.
"They are killing a lot of small businesses," she
said.
"We’re not out to put people out of business," Finkelstein said.
"We are just out to protect our mark."
Entrepreneur’s actions over the
past decade have shown how one company has vigilantly defended its intellectual
property and those in its path have cried foul.
Entrepreneur has owned
the intellectual property rights to the word in publication since 1987, and it
has acquired more trademarks for more than four other uses since then.
A
search for the word entrepreneur in trademark filings returns 453 records.
Entrepreneur has not protested each and every one of those
trademarks.
But the Trademark Trial and Appeals Board has seen 19 legal
disputes over the word entrepreneur in trademark filings since 1986. Of those,
17 have involved Entrepreneur magazine. Nine of those times, Entrepreneur
claimed trademark infringement.
That doesn’t take into account the number
of cease and desist letters, like the one Hispanic Business
received.
According to Steven Weinberg, owning a trademark requires such
tactics.
"This is property," said Weinberg, a lawyer with Greenberg
Traurig in Los Angeles. "Judges are generally going to say if you have protected
your brand and put money into it and marketing it, well, we’re going to help you
protect this being diluted. … Courts are not going to help out people that
aren’t helping themselves."
Finkelstein said his client has expressed
concern over Hispanic Business’s filing because "there’s potential for the
consumer to be confused on source and affiliation."
Entrepreneur has
until Oct. 13 to file an opposition. Finkelstein said it’s a
possibility.
Business owner Scott Smith thinks Entrepreneur is picking on
the little guys, the real entrepreneurs who don’t always have the deep pockets
to fight back.
"The people they go after tend to be substantially smaller
than they are," Smith said. "That’s my biggest point of contention."
Case
in point: Smith’s own fight. He said the magazine came after him in 1998 for
trademark infringement. His Sacramento-based public relations firm was called
EntrepreneurPR at the time.
Smith lost his case in the trial court only
to see the 9th Circuit Court of Appeals rule in his favor, and then the trial
judge reversed the decision. During the ordeal, Smith said he had to complete
his oral arguments before the appeals court on Sept. 11, 2001, in a federal
courthouse in Pasadena.
With less than $1 million in annual revenue,
Smith said he couldn’t go buck for buck with the magazine.
He’s since
changed the name of his company to BizStarz. But Smith still counts many
entrepreneurs as his clients. And he’s been keeping score since he fought and
lost, hoping someday things might change.
"The goal is to stop their
tyranny on the word entrepreneur," Smith said. "It’s ridiculous that small
entrepreneurs are being sued [by Entrepreneur magazine] for using the word
entrepreneur."
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