Dangerous names

Written by David Menzies

Think twice before telling anyone you’re an entrepreneur — you just might get sued.

Entrepreneur Media Inc., the Irvine, Calif.-based publisher of Entrepreneur magazine, owns a trademark on “entrepreneur” and has been enforcing it against firms using the word in periodical and website titles. Targets have included Asian Entrepreneur, Publishing Entrepreneur and The Entrepreneur, a newsletter produced by Carnegie Mellon University. According to EMI legal counsel Mark Finkelstein, EMI even owns “entrepreneur” in Canada and in several sectors outside of magazine and website publishing.

Scott Smith of Sacramento, Calif.-based EntrepreneurPR has been fighting EMI over the word since 1998. When EMI threatened legal action, Smith changed the name of his quarterly, which prints paid profiles of small businesses, from Entrepreneur Illustrated to BizStarz. In late April, EntrepreneurPR and EMI faced off in U.S. District Court.

Who won? At press time the decision was pending. But the real question for other … er, entrepreneurs … is whether their innocent moniker could attract legal attention. Could Gardening Joe trademark “gardening” and then sue Jim’s Gardening? Could Shingle Depot sue Shingle Land?

Eric Swetsky, a Toronto lawyer specializing in trademark law, notes that trademark strength varies with the context. For instance, a ubiquitous and descriptive word such as “entrepreneur” receives narrower protection than a contrivance such as “Kodak”. Still, Swetsky recommends you investigate trademark issues surrounding your name. But if a bigger plaintiff comes calling, he says, it’s often fiscally prudent for a smaller company to relent and change its name. Just ask Smith, whose legal battle has cost US$100,000 so far.

© 2003 David Menzies

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