Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA183324
`ESTTA Tracking number:
`12/26/2007
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91180276
`Plaintiff
`Scott Smith
`Scott Smith
`5714 FOLSOM BLVD STE 140
`SACRAMENTO, CA 95819
`UNITED STATES
`scott@bizstarz.com
`Opposition/Response to Motion
`Scott Smith
`scott@bizstarz.com
`/Scott Smith/
`12/26/2007
`Response to EMI motion.pdf ( 24 pages )(301321 bytes )
`Proof of Service.pdf ( 1 page )(17405 bytes )
`Declaration by Smith.pdf ( 3 pages )(75420 bytes )
`B_Order to Show Cause.pdf ( 3 pages )(262295 bytes )
`C_EMI v E's Guide-TTAB.pdf ( 6 pages )(352585 bytes )
`E_SacBee, Slater, Apr00.pdf ( 2 pages )(116609 bytes )
`F_Chilling effect-Wikipedia.pdf ( 2 pages )(92937 bytes )
`G_Markva v EMI, TTAB opinion.pdf ( 24 pages )(121278 bytes )
`H_Franchise 500 list, Dec07.pdf ( 1 page )(109312 bytes )
`J_EPR, Biz Start-Ups.pdf ( 3 pages )(690499 bytes )
`K_LA Times, EMI suits, Oct00.pdf ( 1 page )(93640 bytes )
`L_Psychological projection def.pdf ( 3 pages )(115321 bytes )
`M_USATODAY, Strauss, Feb02.pdf ( 2 pages )(199741 bytes )
`N_Brand Name Bullies, '05.pdf ( 4 pages )(1467692 bytes )
`O_NYTimes.pdf ( 3 pages )(183071 bytes )
`P_Forbes, Mar00.pdf ( 1 page )(119676 bytes )
`Q_Workz.com-Emag.pdf ( 4 pages )(150452 bytes )
`I_Ambitious Ideas, Startups.pdf ( 2 pages )(265173 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91180276
`
`) ) ) )
`
`) ) ) )
`
`)
`
`Scott R. Smith,
`
`an individual and citizen of the UNITED STATES,
`
`Opposer,
`
`V.
`
`Entrepreneur Media, Inc.,
`a California corporation,
`Applicant.
`
`OPPOSER'S RESPONSE TO
`
`ENTREPRENEUR MEDIA, INC.'S MOTION TO DISMISS
`
`Pursuant 37 CFR 2.l27(d), Opposer, Scott R. Smith ("Smith"), hereby
`
`responds to oppose Applicant, Entrepreneur Media, Inc.'s ("EMI"), motion to
`
`dismiss under Fed. R. Civ. P. l2(b)(6), and based on the following, Smith requests
`
`the Board to deny EMI's motion to dismiss and to allow the proceedings to
`
`continue to completion. In support of this Response, Smith respectfully submits the
`
`arguments and facts outlined below.
`
`I.
`
`INTRODUCTION
`
`In a Motion to Dismiss that's full of desperation and arrogance, and displays a
`
`cavalier dedication to defrauding the Trademark Office, EMI absurdly claims that a
`
`public
`
`relations
`
`(PR) professional who provides PR services promoting
`
`"entrepreneurs"
`
`to the news media,
`
`lacks
`
`standing to oppose the mark
`
`"ENTREPRENEUR" for radio and television programs and for all pre—recorded
`
`audio and visual media. Taking this absurdity even higher, EMI also claims that
`
`several years ago, the Ninth Circuit was somehow able to rule that a mark that was
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`

`
`not even in existence at
`
`the time is not
`
`"generic.
`
`EMI's arguments are
`
`preposterous,
`
`illogical and a complete distortion of the facts. These knowingly
`
`meritless claims are not grounded in fact, but were made for abusive purposes, to
`
`delay, to harass, and to increase the costs of litigation.
`
`Smith asks the Board to take judicial notice of dictionary definitions of the
`
`word "entrepreneur." Declaration of Scott Smith ("Smith Decl.") EX. A1:
`
`1913: Webster's Dictionary (1913) page 498, noun.
`"One who creates a product on his own account;
`Whoever undertakes on his own account an industrial
`
`enterprise in which workmen are employed."
`
`1983: American Heritage Dictionary (1983), Pages
`236, 237 (ISBN 0-440-10068-2) noun. "One who
`
`organizes, operates, and esp. assumes the risk of a
`business venture. ...--en'tre°pre°neu'ri°al adj."
`
`1Collegiate Dictionary
`1993: Merriam—Webster's
`Tenth Edition (ISBN 0-87779-707-2, 1993 Edition,
`
`Page 387): "(1852): one who organizes, manages, and
`assumes
`the risks of a business or enterprise--
`entrepreneurial. . .entrepreneurialism. . .entrepreneuria
`lly... entrepreneurship." [emphasis added]
`
`2001: Online Etymology Dictionary, © 2001 Douglas
`Harper: "1828, reborrowing of Fr. entrepreneur ‘one
`who undertakes or manages, from O.Fr. entreprendre
`"undertake." The word first crossed the Channel
`
`c.1475, but did not stay." [emphasis added]
`
`2006: Dictionary.com Unabridged (V 1.1) Based on
`the Random House Unabridged Dictionary, ©
`Random House,
`Inc. 2006. noun "a person who
`organizes
`and manages
`any enterprise,
`esp.
`a
`business, usually with considerable initiative and
`risk.
`Origin: 1875-80." [emphasis added]
`
`1 When determining this response, the Board may take judicial notice of the
`documents attached to the Smith Declaration, which are capable of accurate and
`ready determination by resort to sources Whose accuracy cannot reasonably be
`questioned. Fed. R. Evid. 205(b).
`
`

`
`EMI claims that Smith's opposition is an "attempt
`
`to have a different
`
`adjudicating body find in favor of Smith on what are essentially the same issues
`
`and facts." This is also a knowingly meritless claim not grounded in fact, but made
`
`for abusive purposes, to delay, to harass, and to increase the costs of litigation. EMI
`
`knows better than anybody else, that Smith's opposition is against a new mark for
`
`dzflerent goods and services, and for dzflerent issues than previously litigated. The
`
`mere fact that EMI found it necessary to file for this new ENTREPRENEUR mark
`
`shows that EMI knows it's for goods and services that substantially differ from
`
`EMI's other marks.
`
`In addition to its meritless and illogical claims, EMI continues its personal
`
`and malicious attacks against Smith for the purpose of further damaging Smith's
`
`character and reputation.
`
`In its motion, EMI included Smith's 2001 personal
`
`bankruptcy petition, fully knowing that this information falls outside the scope of
`
`the pleadings, and has no bearing on the merits or outcome of EMI's motion.
`
`Smith's bankruptcy is completely irrelevant
`
`to whether or not
`
`the term
`
`"entrepreneur" is descriptive, generic or whether or not EMI has defrauded the
`
`USPTO. EMI's motivation for including this information is solely for the purpose
`
`of harming and harassing Smith. In fact, other EMI attacks against Smith's personal
`
`bankruptcy petition have been so suspect,
`
`that a U.S. Bankruptcy Court Judge
`
`issued a $l0,000,000.00 Order to Show Cause against EMI and its attorneys. Smith
`
`Decl. EX. B.
`
`Despite employing a team of hugely expensive attorneys from one of the
`
`world's largest law firms, and taxing Smith and the Board with knowingly meritless
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`

`
`arguments and nearly two hundred (200) pages of irrelevant exhibits, EMI cannot
`
`prevail in its motion. EMI's allegations are a complete distortion of the facts, not
`
`grounded in fact, but were made for abusive purposes, to delay, to harass, and to
`
`increase the costs of litigation.
`
`II.
`
`EMI FAILED TO REBUT ALLEGATIONS OF FRAUD
`
`Like the ignored elephant in the room, EMI's inability to address Smith's
`
`allegations of fraud, is impossible to ignore. EMI desperately tries to convince the
`
`Board that Smith's allegations are "groundless" and his motion should be
`
`dismissed. Yet EMI does not address Smith's allegations of fraud anywhere in its
`
`motion. EMI does not offer any argument to the contrary. Smith's allegations of
`
`fraud are completely missing from the l,000's of words expended in EMI's motion.
`
`This
`
`is
`
`significant because Smith's allegations of fraud are numerous and
`
`paramount to his opposition.
`
`EMI not denying Smith's allegations of fraud is analogous to someone being
`
`charged with a parking violation and felony possession of a stolen vehicle, and
`
`unable to prove ownership of the vehicle, filing a motion to get the entire case
`
`dismissed by only denying the parking violation, the far less serious charge. If
`
`Smith's allegations of fraud were "groundless," EMI
`
`rightfully would have
`
`vehemently denied these allegations, figuratively screaming their denials from the
`
`mountaintops.
`
`Instead, EMI files a meritless Motion to Dismiss for abusive
`
`purposes, to delay, to harass, and to increase the costs of litigation.
`
`EMI's inability to deny Smith's allegations of fraud clearly shows that Smith's
`
`allegations must be true as plead. There's no plausible excuse for EMI to file a
`
`

`
`motion to dismiss that ignores the most serious of the allegations. EMI's non-
`
`denials should be construed as admissions. This is a prima facie case that EMI
`
`defrauded the USPTO. Smith alleged that EMI defrauded the USPTO. EMI filed a
`
`Motion to Dismiss Smith's opposition. EMI's motion failed to deny any of Smith's
`
`allegations of fraud.
`
`(Incidentally, in "Exhibit A" of EMI's motion to dismiss, EMI introduces
`
`trademark registration 1,453,968. Smith can show Trademark registration
`
`1,453,968 was procured and maintained fraudulently. This issue has never been
`
`litigated, but the Board might deem it relevant to this proceeding. The original
`
`trademark upon which EMI's self-described "family of ‘ENTREPRENEUR’ marks,
`
`obtaining multiple registrations for many other variations of the word ‘entrepreneur’
`
`in various classes," is based on a filing by convicted bank-robber and serial con
`
`man "Chase Revel" (a.k.a. John Leonard Burke; a.k.a Charles Hudson; a.k.a
`
`Jacques Victor Baron; a.k.a Rio Sabor; a.k.a Marcus Wellboume) who Smith can
`
`show had a reckless disregard for the truth. Revel started Entrepreneur magazine to
`
`fraudulently hock his "get rich quick" business schemes onto his unsuspecting
`
`readers. Revel may have perpetrated one of the greatest frauds ever against
`
`American entrepreneurs and the USPTO.)
`
`III.
`
`SMITH HAS LEGAL STANDING
`
`As previously discussed in this response, it's absurd for EMI to claim that
`
`Smith, who EMI has
`
`long known is
`
`a PR professional who promotes
`
`"entrepreneurs"
`
`to the news media,
`
`lacks
`
`standing to oppose the mark
`
`"ENTREPRENEUR" for radio and television programs and for all pre—recorded
`
`

`
`audio and Visual media. The Word "entrepreneur" is at the core of Smith's PR
`
`business. Not being able to descriptively use the word "entrepreneur" would
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`destroy Smith's business. It would be the equivalent of the USPTO not being able
`
`to descriptively use words such as "attorney," "laWyer," or "judge." EMI claiming
`
`Smith doesn't have legal standing is merely another EMI allegation that
`
`is
`
`meritless, a complete distortion of the facts, not grounded in fact, but made for
`
`abusive purposes, to delay, to harass, and to increase the costs of litigation. Smith's
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`clients are "entrepreneurs," so he obviously must use the word "entrepreneur"
`
`descriptively in his business. And, Smith is not aware of, nor has EMI suggested,
`
`any commonly available synonyms for the word "entrepreneur." Smith also has a
`
`significant personal and commercial interest in how many media outlets can use the
`
`Word "entrepreneur." Smith is no mere intermeddler in this proceeding. As is
`
`clearly stated in TBMP §309.03(b):
`
`A plaintiff need not assert proprietary rights in a term in
`order to have standing. For example, when descriptiveness
`or genericness of the mark is in issue, plaintiff may plead
`(and later prove) its standing by alleging that it is engaged in
`the sale or [sic] the same or related products or services (or
`that the product or service in question is within the normal
`expansion of plaintiff's business) and that the plaintiff has an
`interest in using the term descriptively in its business.
`
`Attorney Finkelstein either misunderstands the Lipton decision or seeks to
`
`mislead the Board. In his motion to dismiss, he writes:
`
`To have standing to bring an opposition, a party must plead a
`‘real commercial interest in its own marks and a reasonable
`
`basis for its belief that it would be damaged.‘ Lipton Indus.,
`Inc. v. Ralston Purina C0., 670 F.2d at 1028-29; See also
`TBMP §309.03(b)
`
`

`
`As demonstrated, §309.03(b) shows Smith has standing. Finkelstein takes
`
`the Lipton quote out of context to imply that to bring any opposition, a party must
`
`have an interest in its own marks. This was not the conclusion of Lipton. We
`
`should not confuse an interest in a proceeding with a proprietary interest in a mark.
`
`The actual quoted text read:
`
`Had the appropriate inquiry been made in Norac, petitioner
`would have had standing, not because of its mere allegations,
`but because it proved a real commercial interest in its own
`marks, and a reasonable basis for its belief that it would be
`
`damaged.
`
`In other words, if an opposer has an existing trademark that could be
`
`damaged by a new or existing registration, that opposer has standing (Lipton was a
`
`cancellation proceeding on grounds of abandonment). The converse isn't true. An
`
`opposer doesn't need any existing trademarks to oppose a registration. As
`
`§309.03(b) makes clear, proprietary interest in a mark is not necessary to have
`
`standing when genericness or descriptiveness of the mark is an issue.
`
`EMI asserts that Ritchie V. Simpson somehow prevents Smith opposing
`
`EMI's mark because:
`
`Standing to oppose on behalf of ...third parties applies in
`cases involving ‘immoral or scandalous‘ marks. Ritchie v
`Simpson 170 F. 3d 1092 (Fed Cir. 1999). This is not an
`opposition based on ‘immoral and scandalous‘ matter. Smith's
`tactics should not be entertained by the Board.
`
`Actually reading the Ritchie decision shows EMI's conclusion is inaccurate
`
`and misleading. Ritchie says no such thing. Smith has strongly asserted he has a
`
`personal, commercial interest in the overall success of entrepreneur TV and radio
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`

`
`programming. That damage to Smith can occur through harm to others doesn't
`
`invalidate Smith's standing.
`
`Ritchie states:
`
`In no case has this court ever held that one must have a specific
`commercial interest, not shared by the general public, in order to
`have standing as an opposer. Nor have we ever held that being a
`member of a group with many members is itself disqualifying. The
`crux of the matter is not how many others share one's belief that one
`will be damaged by the registration, but whether that belief is
`reasonable and reflects a real interest in the issue. See 15 U.S.C.
`
`§1063.
`
`Despite EMI's false claims to the contrary, EMI is on a mission to
`
`misappropriate the word "entrepreneur" from the public domain, and to prevent
`
`competitors and non—competitors alike from using the word within the heartland of
`
`the word's dictionary definition. EMI has threatened and bullied others that use the
`
`word "entrepreneur,"
`
`including many news outlets. One example is
`
`"The
`
`Entrepreneur's Guide to the Galaxy," a small radio program which was forced to
`
`abandon its trademark when EMI attacked after it was published for opposition.
`
`Smith Decl. Ex. C, Entrepreneur Media, Inc. vs. Neil R. Senturia, Opposition No.
`
`91172774 (TTAB 2006).
`
`News outlets that cover "entrepreneurs" are the lifeblood of Smith's
`
`business, and many of his clients have already or want
`
`to be featured by
`
`entrepreneur news outlets. A significant number of Smith's media contacts have or
`
`currently use the word "entrepreneur" descriptively, as well as in the names of their
`
`publications, programs
`
`and services. A few examples
`
`include: American
`
`Entrepreneur Radio, Irish Entrepreneur magazine, Michigan Entrepreneur TV,
`
`IndianaEntrepreneur.TV,
`
`entrepreneur@w0rk Digest, Minority
`
`Business
`
`

`
`Entrepreneur magazine, Entrepreneurs Only TV show, BusinessMakers
`
`Entrepreneurial Radio Show, Entrepreneur Hour Radio Show, Dental Entrepreneur
`
`magazine, Entrepreneurs Edge TV, NJEntrepreneur.com, Maverick Entrepreneur
`
`TV Show, Entrepreneur Radio Network, Entrepreneurs North Dakota, Call of the
`
`Entrepreneur documentary, Spiritual Entrepreneur Today newsletter, and the
`
`Entrepreneurs! Tour of America. Smith Decl. EX. D.
`
`Considering EMI's history of increasingly aggressive legal attacks against
`
`media organizations that use the word "entrepreneur," it is reasonable for Smith to
`
`believe that if granted this new ENTREPRENEUR mark, EMI will launch new
`
`legal attacks against media organizations that use the word "entrepreneur." EMI has
`
`frequently admitted that owning a registered ENTREPRENEUR trademark requires
`
`that EMI take legal action to prevent others from using the word "entrepreneur," or
`
`EMI risks losing its trademarks: "Entrepreneur Media corporate counsel Ron
`
`Young. . .'We don't go after just the little guys .
`
`.
`
`. but the law requires us to. . .If you
`
`don't protect your mark, you lose it and it becomes generic. When it becomes
`
`generic, it is unprotectable —— like "escalator' and "cellophane."' Smith Decl. EX. E;
`
`The Sacramento Bee, "Name Claiming" pg. 2, paragraph 10 (April 15, 2000). So if
`
`granted this new ENTREPRENEUR mark, EMI will certainly have to initiate legal
`
`actions against many of Smith's media contacts.
`
`Because of what is commonly known as the "chilling effect," a "term in
`
`U.S. law that describes a situation where speech or conduct is suppressed or limited
`
`by the threat of a costly and lengthy lawsuit," EMI's litigious efforts to own the
`
`word ENTREPRENEUR also deters countless new shows
`
`for and about
`
`

`
`entrepreneurs from being started. Smith Decl. EX. F, Wikipedia definition. Smith
`
`knows of numerous people, including members of the media, who are afraid of
`
`being sued by EMI oVer use of the word "entrepreneur." EMI attacking current, as
`
`well as deterring future shows about "entrepreneurs," significantly and irreparably
`
`harms Smith's PR business and his "entrepreneur" clients.
`
`Standing is a minimal requirement of alleged potential harm. The Federal
`
`Circuit has stated that an opposer need only show a personal interest in the outcome
`
`of the case beyond that of the general public. See William B. Ritchie V. Orenthal
`
`James Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999); Jewelers
`
`Vigilance Committee Inc. V. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021, 2023
`
`(Fed. Cir. 1987); and Lipton Industries, Inc. V. Ralston Purina Company, 670 F.2d
`
`1024, 213 USPQ 185 (CCPA 1982). Smith has a real, personal, commercial interest
`
`in this proceeding beyond that of a member of the general public.
`
`As is stated in TBMP §503.02:
`
`A motion to dismiss for failure to state a claim upon which
`relief can be granted is a test solely of the legal sufficiency of
`a complaint. In order to withstand such a motion, a pleading
`need only allege such facts as would, if proVed, establish that
`the plaintiff is entitled to the relief sought, that is, that (1) the
`plaintiff has standing to maintain the proceeding, and (2) a
`Valid ground exists for denying the registration sought...Rule
`12(b)(6) challenges the legal theory of the complaint not the
`sufficiency of the eVidence that might be adduced.
`...For
`purposes of determining a motion to dismiss for failure to state
`a claim upon which relief can be granted, all of the plaintiff's
`well—pleaded allegations must be accepted as true, and the
`complaint must be construed in the light most faVorable to the
`plaintiff. Dismissal for insufficiency is appropriate only if it
`appears certain that the plaintiff is entitled to no relief under
`any set of facts that could be proVed in support of its claim.
`Whenever
`the
`sufficiency of any complaint has been
`challenged by a motion to dismiss, it is the duty of the Board
`
`10
`
`

`
`in its entirety, construing the
`to examine the complaint
`allegations therein liberally, as required by Fed. R. Civ. P.
`8(f), to determine whether it contains any allegations, which,
`if proved, would entitle the plaintiff to the relief sought.
`
`For additional guidance, we can look at a previous Board opinion involving
`
`EMI, Kurt M. Markva v. Entrepreneur Media, Inc., Cancellation No. 92043899
`
`(TTAB 2004) Smith Decl. EX. G; where when discussing EMI's equally meritless
`
`challenging of Markva's standing, the Board wrote:
`
`In order to establish its standing to object to the registration of
`an allegedly merely descriptive or generic term, a plaintiff
`need only show that it has a real interest in the proceeding
`because it is one who has a present or prospective right to use
`the term descriptively in its business.
`
`Notably, EMI does not deny that EMI's products and services are now or
`
`could be related or compete with Smith's because EMI has for years argued that
`
`EMI's and Smith's goods and services do overlap and compete. EMI has long
`
`known that Smith is an "entrepreneur" who provides PR services to small
`
`businesses and "entrepreneurs." EMI's own motion states that, "In 1995, Scott
`
`Smith started a business called ICON Publications, which promoted small
`
`businesses." EMI's motion also states that, "Since 1978; EMI has published
`
`magazines and books and has offered services geared towards small businesses,
`
`small business owners, and people considering starting a small business." Widely-
`
`distributed and EMI produced marketing materials and press releases state that EMI
`
`offers services "for and about entrepreneurs." Smith Decl. EX. H, Entrepreneur
`
`Media, Inc. press release, "Franchise 500," PRNewswire (December 12, 2007).
`
`Smith's clients are "entrepreneurs."
`
`11
`
`

`
`Since starting his PR business for small businesses and entrepreneurs in the
`
`mid—l990s, Smith's
`
`"entrepreneur" clients and services have been favorably
`
`featured by numerous media outlets, including The Wall Street Journal, Forbes
`
`magazine, CNN, BusinessWeek,
`
`the Oprah Winfrey Show, as well as EMI-
`
`produced publications and websites. Smith Decl. EX. I, Entrepreneur's Start°Ups
`
`magazine, client: Ambitious Ideas, cover story,
`
`"11 Sexiest Entrepreneurs"
`
`(October, 2000); Smith Decl. EX.
`
`J, Entrepreneur's Start°Ups magazine,
`
`EntrepreneurPR, "Why Wait?" (January 1999). Smith has a significant personal and
`
`commercial interest in using the descriptive and generic word "entrepreneur" in his
`
`PR business.
`
`Representatives of EMI have also participated in several articles discussing
`
`Smith's PR business and his efforts to defend himself against EMI's trademark
`
`claims. EMI's representatives have acknowledged and praised Smith's PR abilities
`
`in such articles: "Entrepreneur Media Chairman Peter Shea said...'[Smith] does
`
`crank out the PR."' Smith Decl. EX. K, Los Angeles Times, "Publisher Accuses
`
`Companies of ‘Entrepreneur’ Trademark Infringement" paragraph 11 (October 4,
`
`2000).
`
`"Judicial estoppel", which precludes a party from taking a position in a case
`
`contrary to a position they have taken in earlier legal proceedings, prohibits EMI
`
`from now arguing that their services do not compete with Smith's. While Smith has
`
`always maintained that he and EMI are not competitors, Smith has already been
`
`significantly damaged by EMI's belief that Smith and EMI are competitors. So
`
`12
`
`

`
`Smith's allegations in support of his belief that he will be damaged by this new
`
`ENTREPRENEUR mark, have therefore a reasonable basis "in fact."
`
`IV. OPPOSITION NOT A WASTE OF VALUABLE RESOURCES
`
`One of the more egregious allegations made in EMI's motion is that,
`
`"Unwilling to accept defeat, Smith has embarked on a no—holds—barred attempt to
`
`undermine EMI's trademark rights. This Opposition is yet another harassing
`
`attempt by Smith to challenge EMI's trademark rights, resulting in a waste of both
`
`the Board's and EMI's valuable resources." Apparently, EMI believes the Board
`
`will accept that the filing of ONE (1) opposition against EMI, constitutes a "no—
`
`holds—barred attempt to undermine EMI's trademark rights," and, "is a waste of
`
`both the Board's and EMI's valuable resources." This accusation is a classic
`
`example of
`
`" psychological projection,"
`
`a defense mechanism where,
`
`"The
`
`individual perceives in others the motive he denies having himself. Thus the cheat
`
`is sure that everyone else is dishonest." Smith Decl. EX. L, Wikipedia.org. Contrary
`
`to EMI's claims, all previous cases between EMI and Smith were initiated and
`
`obsessively pursued by EMI. This is another EMI allegation that is meritless, a
`
`complete distortion of the facts, not grounded in fact, but made for abusive
`
`purposes, to delay, to harass, and to increase the costs of litigation.
`
`Indeed, numerous media organizations have reported on and denounced
`
`EMI's aggressive bullying tactics against Smith and other small entrepreneurs. In a
`
`USA Today small business column, after researching EMI's trademark battles,
`
`attorney Steven Strauss wrote that, "Utilizing a scorched-earth policy, EMI
`
`threatened to sue small companies left and right to enforce its trademark. Knowing
`
`13
`
`

`
`they couldn't compete with the resources of Entrepreneur Media, all succumbed,
`
`except Scott Smith. He decided to fight." [emphasis added] Smith Decl. EX. M,
`
`USAToday.com, "Playing the name game" (February 10, 2002). EMI’s aggressive
`
`efforts to monopolize the word ENTREPRENEUR by targeting small entrepreneurs
`
`were also described in David Bollier's critically—acclaimed book, Brand Name
`
`Bullies.‘ The Quest to Own and Control Culture. Smith Decl. EX. N.
`
`...the law grants greater protection to distinctive words...
`made—up words like ‘Xerox’ and 'XyWrite' are clearly more
`distinctive and therefore more protected than common
`words. Yet this general principle did not help California
`entrepreneur Scott Smith. A court told him he could not
`name his public relations firm 'EntrepreneurPR' or name an
`annual publication Entrepreneur Illustrated. A company
`called Entrepreneur Media Inc. already claimed a trademark
`in ‘Entrepreneur,’ the title of its magazine.
`...Entrepreneur
`Media Inc.'s campaign against other uses of ‘entrepreneur’
`did not stop there. ...One wonders if other publications using
`the
`word
`‘entrepreneur’ —Entrepreneur’s
`Journal,
`Entrepreneurs’ Chronicle, Dental Entrepreneur,
`and
`Extreme Entrepreneur—will soon be sporting new names.
`
`A New York Times article was similarly critical of EMI’s trademark battles
`
`against small entrepreneurs. Smith Decl. EX. 0, New York Times, "Entrepreneurs
`
`Must Choose Their Words With Care" (October 7, 2004). In their article, the New
`
`York Times wrote:
`
`Their Words With
`Choose
`Entrepreneurs Must
`Care...Entrepreneur magazine is playing hardball
`to stop
`entrepreneurs from using the word entrepreneur. ...also tried to
`thwart the consulting firm Ernst & Young from issuing the
`Ernst & Young Entrepreneur of
`the Year Magazine in
`conjunction with its annual awards program. The firm held its
`ground and Entrepreneur Media backed off.
`All of which
`raises the question: Can a publication claim a common word as
`its own property? A lot of publications contain the words
`business, money and times. What is so special about the word
`entrepreneur?
`
`l4
`
`

`
`EMI hasn't just been aggressive against small entrepreneurs. EMI has also
`
`bullied, threatened and retaliated against media outlets and individual journalists
`
`that have reported on EMI's trademark battles. Peter Shea, EMI's president and
`
`CEO, even told a writer during a telephone interview for a Workz.com article, that
`
`was audio—taped with Shea's permission,
`
`that he was ready to "kill" a Forbes
`
`magazine reporter because of an article about EMI's legal attacks against smaller
`
`entrepreneurs. Smith Decl. EX. P, Forbes magazine, "Tongue Tied" (March 20,
`
`2000); Smith Decl. EX. Q, Workz.com, "The Never—Ending Trademark Story"
`
`(October 2002):
`
`The [Entrepreneur Media, Inc. vs. EntrepreneurPR] lawsuit
`has generated a significant amount of press coverage,
`the
`bulk casting a dark shadow over EMI. It made headlines in
`the Los Angeles Times, USA Today and The Wall Street
`Journal. Shea recalls an interview with a Forbes writer. And
`
`he remembers his
`
`reaction when he read the article,
`
`published March 20, 2000, which blasted EMI's go—after—the—
`little—guy strategy. Shea was livid.
`'I was ready to kill the
`[journalist].''' [emphasis added, "journalist" substituted for
`eXpletive language]
`
`Smith could attach many more examples of EMI's bullying tactics and
`
`resulting negative press coverage, but will not belabor the Board with what would
`
`amount to cumulative evidence.
`
`Entrepreneur Kurt M. Markva's petition to cancel was written, filed and
`
`fought by Markva, with his intellectual property attorney father, Neil Markva, as
`
`his attorney of record. EMI's conclusory allegations to the contrary are unproven
`
`and would have been ruled against had EMI not been able to bully Markva into
`
`abandoning his cancellation action against EMI. Markva's cancellation looks like it
`
`15
`
`

`
`would have succeeded had Markva had the resources needed to fight back the
`
`aggressive harassment outside of the USPTO by the far deeper—pocketed EMI.
`
`EMI's claims that Smith's and Markva's companies were one in the same, is another
`
`EMI allegation that is meritless, a complete distortion of the facts, not grounded in
`
`fact, but made for abusive purposes, to delay, to harass, and to increase the costs of
`
`litigation.
`
`V. NINTH CIRCUIT NEVER RULED THIS MARK IS NOT GENERIC
`
`Desperate to prevent the Board from being able to adjudicate whether or not
`
`EMI's new ENTREPRENEUR mark is merely descriptive, generic, and/or
`
`fraudulently sought, EMI makes meritless arguments based on a nonsensical
`
`assertion that the Board has probably never heard before: that the Board is bound
`
`by a ruling of a previous trademark infringement court case involving different
`
`claims and facts, and that this ruling can extinguish an opposition against a new
`
`mark for different goods and services that did not even exist at the time. This is of
`
`course, patently absurd. Worse yet, these are recycled claims that the Board already
`
`rejected in its Markva vs. EMI opinion. And, EMI's recycled arguments against
`
`descriptiveness and genericness are decidedly less credible than the ones the Board
`
`has already rejected. For the Markva case, the Board wrote:
`
`the mark was descriptive or
`In determining whether
`suggestive,
`the court ruled out the possibility that it was
`generic by noting in a footnote that “‘ENTREPRENEUR’
`does not state the general name of EMI’s product — a
`magazine — and therefore does not fit Within the generic
`category.
`...This statement only pertains to use in
`connection with a magazine. In addition, the court does
`not discuss evidence or argument presented regarding
`any alleged genericness of the word ENTREPRENEUR
`used as title for a magazine. The court went on to find that
`
`16
`
`

`
`applied to EMI’s
`as
`“the mark ‘ENTREPRENEUR’
`magazine and to computer programs and manuals falls
`within the descriptive category.” Further, the court states that
`it “describes both the subject matter and the intended
`audience of the magazine and programs.” The court noted
`that “the incontestable status of EMI’s mark serves as
`
`conclusive proof that the mark has secondary meaning.” Id.
`at 1142 n. 3. This statement relates to the goods listed in
`Registration No.
`1453968, namely magazines
`and
`computer programs.”...
`the
`discussion
`as
`to
`non-
`genericness appears to be based on the Ninth Circuit’s
`understanding of genericness in the field of magazines as a
`matter of law, rather than on a fact—finding determination.
`[emphasis added]
`
`The Board's prior ruling clearly put EMI on notice that the Ninth Circuit's
`
`previous ruling was not binding on Whether or not any of EMI's marks are
`
`descriptive or generic, and any such analysis only pertained to use in connection
`
`with a magazine. The Board's ruling did not suggest or leave the door open for EMI
`
`to re—argue the same claims in other proceedings. The Board soundly rejected all of
`
`EMI's descriptiveness and genericness arguments. EMI obviously knew this
`
`because EMI did not cite any part of the Board's Markva vs. EMI opinion, and did
`
`not include it as one of its many exhibits. EMI's recycling of its previously rejected
`
`arguments that the Ninth Circuit's ruling prevents the Board from determining
`
`Whether or not EMI's marks are descriptive or generic, is likely the most egregious
`
`of all of EMI’s allegations that are meritless, a complete distortion of the facts, not
`
`grounded in fact, but made for abusive purposes, to delay, to harass, and to increase
`
`the costs of litigation.
`
`VI. RES JUDICATA AND STARE DECISIS DO NOT APPLY
`
`As in the Markva case, EMI is being deceptively coy about what doctrine of
`
`law it's trying to argue when claiming the Board cannot consider Whether or not
`
`17
`
`

`
`this new ENTREPRENEUR mark for different goods and services is generic or
`
`descriptive. EMI deceivingly tells the Board that, "...because the Ninth Circuit
`
`already determined this mark is not generic or descriptive. ...the Board is bound by
`
`the court's ruling." Since EMI is again not being straightforward about which
`
`doctrine they are basing their arguments on, Smith is compelled to argue against
`
`both "res judicata" and "stare decisis", the two most plausible doctrines that EMI's
`
`arguments could fall under.
`
`"Res
`
`judicata," otherwise known as,
`
`"claim preclusion"
`
`and