By: Mark R. Malek
I came across a story on the Businessweek Magazine Website that rang my trademark bully alarm. It seems as though Entrepreneur Magazine, which publishes a magazine geared towards the interests of, wait for it, wait for it – entrepreneurs, is suing entrepreneurs for trademark infringement. As I was initially reading the story, I was thinking – ok, this author might not have it right. Entrepreneur Magazine is probably only really going after folks who are putting out competing magazines and using the “Entrepreneur” trademark for their magazines. Unfortunately, Paul Barrett did understand and was right on.
Entrepreneur Magazine’s latest victim is Daniel Castro, who operates the website EntrepreneurOlogy.com. Daniel is described as being a serial entrepreneur, having started several different businesses. EntrepreneurOlogy.com is website that, essentially, promotes Mr. Castro as an aid to entrepreneurs and provides tools to “corporate executives to get back to the basics of entrepreneurship.” Entrepreneur Magazine does have a trademark for “Entrepreneur,” among many others, as used in relation to “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 other.”
Point of order – isn’t this exactly what entrepreneurship is? At least a part of it? For example, “providing business information for the use of customers in the field of starting and operating small businesses.” Is that not the same as saying “providing business information to entrepreneurs?” Seems to me that, if I were Entrepreneur Magazine, I would be somewhat careful about trying to flex some trademark muscle against folks…especially against my own customer base. Has this trademark registration been put to the test yet? Seems to me as though suing your target audience is not a very bright idea. How are entrepreneurs supposed to trust anything in a magazine for entrepreneurs that involves the advice of “sue your target audience?”
Time to play devil’s advocate. Let’s say that I am the trademark attorney for Entrepreneur Magazine, and let’s say that my client comes to me with a list of potential infringers. On that list are three magazine publishers that include the mark “Entrepreneur” in their title, and three websites that are titled “Entrepreneur” and that each provide business information for the use of customers in the field of starting and operating businesses. I probably advise my client to ask the magazines to stop immediately. I probably then tell my client that it is time to do a very in-depth analysis of the websites. My question to my client is the following: “how else do you think this website should describe their target audience, i.e., how else would you refer to someone that is starting a new business?” If the answer is anything remotely close to “it wouldn’t make sense to call them anything but entrepreneurs,” then I ask my clients to probably reconsider going after the website, especially if the website merely incorporates the word “entrepreneur” into their title.
If your trademark is the only way to say a particular thing, i.e., your trademark becomes the generic term, then it is not protectable. For example, the following used to be trademarks: aspirin, trampoline and escalator. Here are a few that I just can’t believe are still around: Band Aid, Popsicle and Jacuzzi. Seems to me as though Entrepreneur needs to watch its step here. I’m not saying that entrepreneur is becoming generic as to magazines for business start ups, I’m just saying that a trademark registration does not give them the ability to remove the word from the lexicon.