07 Jul Who owns the mark "Entrepreneur"?
Hundreds of trademark applications have been filed in the United States that include the word “entrepreneur.” Many of the claimed owners of entrepreneur-formed trademarks have engaged in legal disputes over the scope and extent of each other’s rights. Is the word “entrepreneur” capable of exclusive appropriation by anyone?
The answer is “it depends.” In order for a word to serve as a trademark, it must be distinctive of a specific source’s goods or services. Generally, when a consumer observes a word that serves as a trademark, he or she immediately is reminded of the owner of the trademark. For example, the word “Macintosh” when used with computers, conjures up Apple Computers.
Because “entrepreneur” is a word in the dictionary, it is generic for the thing it defines, namely, “a person who organizes and manages any enterprise, especially a business, usually with considerable initiative and risk.” (See dictionary.com.) But, as applied to other things, it may be a trademark capable of exclusive ownership by one or more companies or individuals.
In looking at whether a word like “entrepreneur” serves as a trademark, courts analyze where the word falls in the hierarchy of five categories of trademarks, according to degrees of distinctiveness. They include (1) generic terms, (2) descriptive marks, (3) suggestive marks, (4) arbitrary marks and (5) coined or fanciful marks.
Generic terms describe the general category of goods or services. As a matter of public policy, generic terms cannot be protected as trademarks because their free use benefits the public at large. An example of a generic term would be the term “computer” for computer equipment.
Descriptive marks, unlike generic terms, describe a characteristic or quality of the underlying category of goods or services. An example would be the term “Light” for portable computers (describing the computer’s weight). If a term is merely descriptive, it cannot be protected since it does not identify the source of the goods or services. However, a descriptive term may be protected as a mark if it has “acquired distinctiveness” (secondary meaning) over time. A mark is deemed to have acquired distinctiveness if the public has begun to associate the mark as being distinctive of a single source, rather than a category of goods or services. Thus, for example, the word “Sharp” is considered to have acquired distinctiveness because the public associates the word with a particular television company and not with televisions in general.
Suggestive marks do not describe a category of goods or services but instead suggest a characteristic about them. Suggestive marks require the consumer to make a leap of imagination, thought or perception to reach a conclusion as to the nature of the goods. An example of a suggestive mark is “Greyhound” for bus services (suggesting speed of bus service). Suggestive trademarks are by definition distinctive and are afforded a high degree of protection.
Arbitrary marks are ones that have no inherent connection to the underlying category of goods or services. For example, the word “Apple” bears no inherent relationship to computers and thus is an arbitrary term for computers. In a different context, though, such as “Apple” as applied to an orchard, the word is generic. Arbitrary trademarks are by definition distinctive and entitled to a wide berth of protection.
A coined or fanciful mark is one that is made up and has no meaning apart from its use as a trademark. “Kodak” and “Exxon” are famous examples of fanciful marks. Fanciful marks are considered to be the most distinctive and thus the strongest type of mark.
The legal battles over where uses of “entrepreneur” fall within this hierarchy are legendary. Last month, Entrepreneur Media, Inc. (“EMI”), publisher of the Entrepreneur Magazine, filed a declaratory judgment lawsuit against Ernst & Young to obtain a court ruling that EMI is not infringing upon Ernst & Young’s trademark for the Entrepreneur of the Year Awards. Ernst & Young owns a federal trademark registration for the mark, albeit with the word “entrepreneur” disclaimed, and demanded that EMI stop soliciting entries for its Entrepreneur Magazine’s 2008 Entrepreneur of the Year Awards. EMI claims in the lawsuit that the phrase Entrepreneur of the Year Awards is generic and in use by many other parties, such that the trademark should be declared invalid and unenforceable because the general public does not exclusively associate EMI’s awards with those of Ernst & Young. EMI argues that Ernst & Young cannot “selectively enforce” only against parties it considers a competitive threat.
In a prior case, EMI was on the other side, successfully protecting its claimed trademark rights in Entrepreneur for various other goods and services. In that case, EMI sued Scott Smith, an entrepreneur advocate, for using the name “Entrepreneur PR” for his P.R. firm. The court found that EMI had protectible rights in Entrepreneur for numerous goods and services, extending to “paper goods and printed matter; namely magazines, books and published reports pertaining to business opportunities; computer programs and programs/user manuals all sold as a unit; trade show exhibitions, seminars, and workshops.” Smith’s use was found to be confusingly similar to EMI’s prior uses of Entrepreneur for these goods and services. The court ordered Smith to pay $1.4 million to EMI, including attorney fees and damages.
That decision did not end the battle, and Smith has since filed a Notice of Opposition with the U.S. Patent & Trademark Office (PTO) against EMI’s application to register Entrepreneur for “radio and TV programming, and for pre-recorded audio and visual media, including CDs, videotapes and audiotapes.” Smith argues that the word “entrepreneur” is merely descriptive for these services, and should not be protected as a trademark. Smith also filed a lawsuit alleging that EMI defrauded the PTO by making willful false statements in “an elaborate scheme” to acquire and maintain several federal trademarks for the phrase Entrepreneur Expo.
In short, the word “entrepreneur” is capable of protection as a trademark, but also may be deemed merely descriptive or generic, depending on the context in which it is used. The various legal disputes serve to clarify the boundaries of ownership and protection.
Related WTN News articles:
- Beware — Use of the word ‘entrepreneur’ can put you in a legal mess
- Brand Bullies- Entrepreneurs draw legal action over common words
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