Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA385093
`ESTTA Tracking number:
`12/21/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91197739
`Defendant
`Daniel R. Castro
`DANI8EL R. CASTRO
`CASTRO & BAKER, LLP
`10509 POINTEVIEW DR
`AUSTIN, TX 78738-5522
`UNITED STATES
`dcastro@teknolaw.com
`Motion to Suspend for Civil Action
`Daniel R. Castro
`danmancastro@gmail.com
`/DRC/
`12/21/2010
`Dan Castro Motion to Suspend EMI.pdf ( 2 pages )(64339 bytes )
`First Amended Original Complaint 9 28 10 (2).pdf ( 35 pages )(895003 bytes )
`Castro_v_Entrepreneur_Mag[1].pdf ( 33 pages )(1539022 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`
`ESTTA385093
`ESTTA Tracking number:
`12/21/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91197739
`Defendant
`Daniel R. Castro
`DANI8EL R. CASTRO
`CASTRO & BAKER, LLP
`10509 POINTEVIEW DR
`AUSTIN, TX 78738-5522
`UNITED STATES
`dcastro@teknolaw.com
`Motion to Suspend for Civil Action
`Daniel R. Castro
`danmancastro@gmail.com
`/DRC/
`12/21/2010
`Dan Castro Motion to Suspend EMI.pdf ( 2 pages )(64339 bytes )
`First Amended Original Complaint 9 28 10 (2).pdf ( 35 pages )(895003 bytes )
`Castro_v_Entrepreneur_Mag[1].pdf ( 33 pages )(1539022 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`________________________________________________
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`ENTREPRENEUR MEDIA, INC.
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` Opposer,
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`DANIEL R. CATRO,
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` Applicant.
`________________________________________________)
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`v.
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`Opposition No. 91197739
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`Serial No. 77964153
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`MOTION TO SUSPEND THIS PROCEEDING
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`Applicant Daniel R. Castro, pursuant to TBMP § 510.02(a), hereby files this Motion to
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`Suspend this opposition pending the outcome of the present Declaratory Judgment action
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`between the above parties which is presently before the United States District Court for the
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`Western District of Texas, Austin Division, which casg"pwodgt"ku"32EC8;7"*ÐHgfgtcn"NcyuwkvÑ+0""
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`A copy of the Complaint and First Amended Complaint which were filed by the Applicant in the
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`Federal Lawsuit are attached hereto.
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`WHEREFORE, having fully complied with the requirements of the TBMP, Applicant
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`respectfully requests that this Board suspend these proceedings until after the Federal Lawsuit has
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`been resolved.
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`Date: December 21, 2010
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`By:
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`Respectfully submitted,
`CASTRO & BAKER, LLP
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`__/Daniel R. Castro/___________________
`Daniel R. Castro
`7800 Shoal Creek Blvd.
`Suite 100N
`Austin, Texas 78757
`Phone: (512) 732-0111
`Attorneys for Applicants
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`CERTIFICATE OF SERVICE
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`I certify that a true copy of the foregoing MOTION TO SUSPEND THIS
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`PROCEEDING was mailed by first class mail, postage prepaid, and a copy was sent via
`electronic mail to counsel for Opposer, Deborah A. Gubernick, Esq., LATHAM & WATKINS
`LLP, 650 Town Center Drive, 20th Floor, Costa Mesa, CA 92626-1925, on this 21st day of
`December, 2010.
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`_______/Daniel R. Castro/______________
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` Daniel R. Castro
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`2
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE WESTERN DISTRICT OF TEXAS
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`AUSTIN DIVISION
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`§
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`§ § §
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`Daniel R. Castro
`Plaintiff
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`v.
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`§ CIVIL ACTION NO: 10CA695
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`§ § §
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`§
`§
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`ENTREPRENEUR MEDIA, INC.
`Defendant
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`FIRST AIVIENDED ORIGINAL COMPLAINT
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`Pursuant to FRCP 15, Daniel R. Castro, comes forth and files this First Amended
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`Original Complaint against entrepreneur Media, Inc., and for cause of action, would show
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`unto the Court as follows:
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`I.
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`THIS AMENDMENT CAN BE MADE FREE AT ANY TIME
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`BEFORE A RESPONSIVE PLEADING IS FILED.
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`1.1
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`Rule 15 allows Castro to file this First Amended Original Complaint without
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`leave of Court because it is being filed before any responsive pleading is filed, and within
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`twenty days after it was served. Defendant was served on September 16, 2010.
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`1.2
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`Accordingly, Castro hereby files this First Amended Complaint.
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`11.
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`SUBJECT MATTER JURISDICTION AND VENUE
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`2.1
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`Plaintiff is seeking a declaration of rights with respect to federal trademark laws,
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`the First Amendment of the United States Constitution and the Anticybersquatting
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`Consumer Protection Act.
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`
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`2.2
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`This Court’s jurisdiction over this matter is proper pursuant to 28 USC §§ 1331,
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`1332 and 133 8(a)(b), and pursuant to 15 U.S.C. § 1121(a)(Tradernarks), 28 U.S.C. 2201
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`(Declaratory Judgment Act), 15 U.S.C. §2 (Sherman Antitrust Act).
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`2.3
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`Venue is proper in this judicial district pursuant to 28 USC §1391 (b)(c), and 28
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`U.S.C. § 1392, in that Defendant is a corporation that is subject to personal jurisdiction
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`in this district, and because a substantial part of the events or omissions giving rise to the
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`claims occurred in this district, and the property that is the subject of this action is located
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`in this district.
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`III.
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`PERSONAL JURISDICTION
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`3.1
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`This Court has personal jurisdiction over the defendant because: (a) the
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`defendant’s contacts with the State of Texas are continuous and systematic; and Cb) the
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`defendant purposefully directs its activities to the residents of the State of Texas and
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`plaintiffs cause of action arises out of, or is related to the defendant’s contacts with the
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`State of Texas.
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`3.2
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`Defendant markets and sells magazines in bookstores and news stands throughout
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`Texas, including this District.
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`3.3
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`Defendant does business over the internet by entering into contracts with Texas
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`residents, which contracts involve the knowing and repeated transmission of computer
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`files over the internet.
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`3.4
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`Moreover, defendant’s website is sufficiently interactive and commercial in
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`nature to justify personal jurisdiction in that it processes credit cards, sells monthly
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`subscriptions to its Texas users, aiiows subscribers to download articles, and provides e-
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`mail addresses and links for customer serviceproblems.
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`IV.
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`THE PARTIES
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`4.1
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`Plaintiff is Daniel R. Castro, is an award-winning author, and professional
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`keynote speaker/trainer residing in Travis County, Texas.
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`4.2
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`Defendant is Entrepreneur Media, Inc. a California corporation, doing business all
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`over the world via the internet, and selling magazines throughout the United States,
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`including Texas, and may be served with process by serving its registered agent, Ronald
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`L. Young at his office address at: 2445 McCabe Way Suite 400, Irvine, California
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`92614.
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`V.
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`FACTS
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`5.1
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`Daniel R. Castro is an award-winning author, a professional keynote
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`speaker/trainer and seminar leader, as well as a small business owner in Austin, Texas.
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`He is currently working on his second book‘, which has a working title of “Anatomy of
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`the Entrepreneur’s Brain.” Castro has conducted approximately five years of research
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`into the lives of legendary entrepreneurs throughout history, and is currently interviewing
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`modern day, currently living entrepreneurs in support ofhis book.
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`5.2
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`Castro also writes articles on the subject of entrepreneurs and entrepreneurship for
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`free distribution in print magazines, business journals and online distribution through
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`Ezines.2
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`5.3
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`Castro often gives keynote presentations and conducts seminars and workshops
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`for Fortune 500 companies on the topic of entrepreneurs, innovation and
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`entrepreneurship. Some of Castro’s clients include IBM, Dell, Inc., Northwestern Mutual
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`Insurance, the American Red Cross, The City of Austin, The State of Texas Comptroller,
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`the U.T. School of Law, and the U.S. Military (“Wounded Warriors Transition Unit”).
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`1 Castro’s first book, CRITICAL CHOICES THAT CHANGE LIVES, won a few awards and is now
`selling all over the World.
`3 An “Ezine” is an online magazine usually distributed via email or via websites.
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`3
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`5.4
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`Castro is about to launch a Boot Camp For Entrepreneurs in which he will teach
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`corporate executives how to think and act more like entrepreneurs and how to be more
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`innovative. Certain modules of the Boot Camp will also teach people how to launch their
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`own business.
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`5.5
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`In early January 2009, Castro coined the Word “EntrepreNeurology” and began
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`using it in commerce.
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`5.6
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`On January 16, 2009, Castro applied for the registration of the mark
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`“EntrepreNeurology.” No one opposed the mark.
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`5.7
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`On August 4, 2009, the trademark registration was granted. That mark now has
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`the Registration No: 3,663,282. A true and correct copy of the Registration Certificate is
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`attached as Exhibit 1.
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`5.8
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`In early September 2009, Castro coined the words EntrepreneurOlogy, and the
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`virtually identical Entrepreneur. Ology. In early February 2010, Castro purchased the
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`domain name www.EntrepreneurO1ogy.com, and began using both of these marks in
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`commerce. Castro gave these almost identical words the following meaning:
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`“The study of HOW entrepreneurs think; WHY they can make money in
`any economy; HOW they assess risk; HOW they survive and prosper with
`very little resources; WHY they can see opporhmities that are invisible to
`others; HOW they bounce back from financial crisis; HOW they make
`millions during severe recession and depression; HOW they foster
`innovation and creativity in themselves and their teams.”
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`5.9
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`On October 12, 2009, Castro registered an Assumed Name Certificate
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`with the Travis County Clerk, showing that the mark “entzrepreneurology” was the
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`name under which he was doing business. See Exhibit 2.
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`5.10 A word that has never existed in the English language before is considered
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`“fanciful" and, “inherently distinct”, and therefore, entitled to trademark protection.
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`
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`Classic examples of “fanciful” marks entitled to trademark protection are the words
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`“KODAK” and “EXXON.”
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`5.11
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`In February, 2010, Castro created a website under the domain name
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`WWw.E11treprer1eurOlo g3{.com to market his services as a keynote speaker, trainer and
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`Workshop leader, as well as to market his Boot Camp For Entrepreneurs. Castro has
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`marketed his services under three virtually identical marks:
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`(1) Entrepreneurologyg (2)
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`Entrepreneunology; and (3) EntrepreNeuro1ogy. The only difference in fliese marks is
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`the “dot” between the word “ent:repreneur" and “ology,” and the capitalization of the “N”
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`in one word and the “O” in the other.
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`5.12 On March 20, 2010, Castro submitted his application for trademark registration of
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`the mark “Entrepreneur.Ology” to the U.S. Patent and Trademark Office.
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`5.13
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`The Defendant, EMI, does not claim ownership of the marks EntrepreneurO1ogy,
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`Entrepreneur.O1ogy, or Enn'epreNeurology. Indeed, it never has.
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`5.14
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`The Defendant, EMI, does not claim ownership of the domain name:
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`www.Entr§preneuJ:Olog3{.com
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`5.15
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`Instead, EMI claims ownership of the mark ‘ENTREPENEUR” and operates a
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`magazine under that mark. The word “entrepreneur" is a word of French origin which
`has existed in the public domain for hundreds -ofyears. The Oxford English Dictionary
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`defines “entrepreneur” as “one who undertakes an enterprise; one who owns and
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`managers a business; a person who takes the risk of profit or loss.” The Compact Oxford
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`English Dictionary 522 (2d ed. 1991).
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`5.16
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`EMI does not claim that the word “entrepreneur” is a “made-up” word or
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`“fanciful” or “inherently distinct” under the Lanham Act.
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`
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`5.17 Nor can EMI show conclusive evidence that the mark “ENTREPENEUR”
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`distinguishes its products and services from anyone else’s products and services related to
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`entrepreneurship.
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`5.18 Nor can EMI show that consumers associate the word “ENTREPRENEUR”
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`exclusively with its magazine.
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`5.19
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`Castro has never made any reference to Defendant’s magazine, and has never
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`done anything to imply that his products or services have any affiliation with
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`ENTREPRENEUR magazine, or are sponsored by ENTREPRENEUR magazine.
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`5.20 Moreover, Castro does not market or sell a print or online magazine of any kind.
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`He simply writes books and articles on the subject of entrepreneurs and entrepreneurship
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`for free distribution in print magazines, business journals, websites and online Ezines,
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`and provides keynote presentations, seminars, workshops and Boot Camps for
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`entrepreneurs.
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`5.21
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`Castro does not make a dime (nor does he attempt to) fiom the publication of
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`these articles.
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`5.22
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`Castro’s trademark application for the mark “Ent1'epreneur.Ology” went
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`unchallenged until two days before the deadline for opposition expired. Two days before
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`the deadline, EMI file a motion to extend the deadline to oppose the mark. See Exhibit 3.
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`5.23
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`EMI has not yet filed its opposition to Castro’s trademark.
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`5.24 On September 7, 2010, counsel for EMI faxed Castro a “cease and desist” letter
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`claiming that it owns a trademark on the mark “ENTREPRENEUR.” See Exhibit 4.
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`5.25
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`In the same letter, EMI threatened to sue Castro ifhe did not give up rights to the
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`mark “Entrepreneur.Ology" and the domain name: www.EntrgpreneurOlogy.com. EMI
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`
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`gave Castro a deadline of September 21, 2010 to give up these valuable legal rights. See
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`Exhibit 4.
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`5.26
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`EMI has a pattern and practice of threatening, intimidating and actually suing
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`anyone who uses the word “entrepreneur” or any derivation of that word ir1 its marketing
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`materials. As such, EMI specifically intends to attempt to monopolize the market that
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`provides magazines, books, articles, websites, blogs, trade shows, workshops, seminars,
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`boot camps, and keynote presentations on the topic of entrepreneurs and
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`entrepreneurship.
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`5.27
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`EMI has sufficient market power in this market that there is a “dangerous
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`probability” that it will succeed in monopolizing this market.
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`5.28
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`EMI’s conduct is harming competition in this market, not merely a specific
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`competitor.
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`5.29
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`EMI claims that its trademark on the word “entrepreneur” is incontestable under
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`15 U.S.C. § 1065, a claim which Castro challenges in this action.
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`5.30
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`It is because of this impending lawsuit and because an actual controversy exists
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`between Castro and EMI over the right to use mark Entrepreneur.O1ogy, and the domain
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`name www.EntreprneurOlo gy.com, as well as his right to use the word “entrepreneur”
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`and its derivatives in his books, articles, seminars, workshops and his Boot Camp, that
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`Castro chose to file this action at this time.
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`VI.
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`STANDING
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`6.1
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`Castro has standing to bring this action because an actual, justiciable, and
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`substantial controversy of sufficient immediacy and reality exists between the parties
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`over the right to the ownership of the mark Entrepreneur. Ology, and the domain name
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`Www.EntrggreneurO1ogy.com, and because EMI has threatened legal action against
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`Castro if he does not cease and desist from using this domain name and the mark
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`Entrepreneur.Ology.
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`6.2
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`Also at issue is Castro’s First Amendment right to use the generic word
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`“entrepreneur” and any derivatives of that word, in his upcoming book “Anatomy of the
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`Entrepreneur’s Brain,” and in the substance of his articles dealing with entrepreneurs and
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`entrepreneurship, as well as in the substance of his keynotes, seminars, workshops and
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`his Boot Camp For Entrepreneurs, as well as in the marketing of the same.
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`VII. CAUSES OF ACTION
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`A.
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`DECLARATION THAT IS U.S.C. §1065, and 15 U.S.C. 1115(b) ARE
`UNCONSTITUTIONAL ON THEIR FACE AND AS APPLIED
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`7.1
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`Plaintiff incorporates all preceding and proceeding paragraphs herein by
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`reference.
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`7.2
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`Castro seeks a judicial declaration that EMI’s attempt to shield itselfbehind the
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`Lanham Act’s “incontestable” status is an attempt to kidnap the word “entrepreneur"
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`from the lexicon of the English language, and is, therefore, a violation of the First
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`Amendment.
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`7.3
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`Plaintiff seeks a judicial declaration that 15 U.S.C. §lO65 is unconstitutional on
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`its face and as applied because it violates Plaintiff's First Amendment rights to freedom
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`of speech and fieedom of expression in the use of the word “entrepreneur” and
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`derivations thereof.
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`7.4
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`Plaintiff seeks a judicial declaration that 15 U.S.C. 11 l5(b)(the language
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`declating an incontestable mark as “conclusive evidence of the validity of the registered
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`mar ”) is unconstitutional on its face and as applied because it violates Plaintiffs First
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`
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`Amendment rights to freedom of speech and freedom of expression in the use of the Word
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`“entrepreneur” and derivations thereof.
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`7.5
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`The common word “entrepreneur” is a generic noun that is in die public domain
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`and which has been around for hundreds of years. The fact that a term resides in the
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`public domain lessens the possibility that a purchaser would be confused and think that
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`the mark came fiom a particular source.
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`7.6
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`No one should be allowed to use the Lanham Act’s “incontestable” status to
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`kidnap a commonly used word from the English lexicon.
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`7.7 While the trademark owner has an interest in preventing consumer confusion,
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`there is a broad constitutional interest in preserving common, useful words for the public
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`domain.
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`7.8
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`Castro, and authors worldwide, have been using the word “entrepreneur” in their
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`books and articles for hundreds of years, and should be allowed the freedom to continue
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`doing so for eternity. Every day, the Wall Street Journal, the New York Times, Forbes
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`Magazine and Fortune Magazine use some derivation of the word “entrepreneur” in their
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`publications. If EMI is allowed an “incontestable” trademark in that word, then each of
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`these publications violate EMI’s trademark every single day — multiple times a day.
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`7.9
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`Therefore, Castro requests a judicial declaration that 15 U.S.C. §1065, and 15
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`U.S.C. §l115(b) under which El\/H claims its mark is “incontestable” should be declared
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`unconstitutional as a violation of the First Amendment on its face and as applied.
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`B.
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`DECLARATION THAT E1\/[PS MARK IS NOT “INCONTESTABLE”
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`7.10
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`Even if this court upholds the constitutionality of 15 U.S.C. §1065, and 15 U.S.C.
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`§l1l5(b), Castro seeks a judicial declaration that EMI’s mark “ENTREPRENEUR" does
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`not qualify for “incontestab1e" status under 15 U.S.C. §1065.
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`
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`7.11
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`Plaintiff seeks a judicial declaration that EMI’s trademark is not “incontestable”
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`for the following reasons:
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`7.12
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`It is well established law that even if a “junior user’s" mark has attained
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`“incontestable” status, such status does not cut off the rights of the “senior user.”
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`7.13
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`It is undisputed that Castro is the “senior user” of the following three marks: (1)
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`EntrepreNeurology; (2) Entrepreneurology; and (3) Entrepreneur. Ology.
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`7.14
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`Castro started using the marks “Ent:repreNeurology,” “EntrepreneurOlogy” and
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`Entrepreneur. O10gy BEFORE Defendant even knew they existed. Castro obtained a
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`federally registered trademark in the mark “EntrepreNeurology” before EMI knew it
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`existed. In fact, EMI has never claimed any ownership interest in any of these three
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`marks.
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`7.15
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`Castro’s use of these three marks has been continuous fi'om the beginning.
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`7.16
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`Therefore, Castro is the senior user of these three marks, and EMI's claim that the
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`mark “ENTREPRENEUR” is “incontestable” does not make it “incont:estab1e” as to
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`Castro’s three marks.
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`7.17
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`In addition, EMI’s trademark is not “incontestable” because the term
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`“entrepreneur” is merely generic. No “incontestable” right can be obtained in a mark
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`which is a generic name for goods or services. 15 U.S.C. §1065
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`7.18
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`EM1’s trademark is not “incontestable" because EMI has abused its trademark by
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`using it in restraint of trade in violation of the U.S. Antitrust Laws. Specifically, EMI is
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`abusing trademark law by using its trademark in an attempt to monopolize trade and/or
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`commerce among the several states in violation of Section 2 of the Sherman Antitrust
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`Act. 15 U.S.C. §2; See 15 U.S.C. §1065.
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`
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`7.19
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`EM1 has demonstrated the requisite “specific intent” to monopolize by engaging
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`in a pattern of auticompetitive conduct designed to create barriers to entry into, and
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`exclude competition from, the market that provides magazines, books, articles, websites,
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`blogs, trade shows, workshops, seminars, boot camps, and keynote presentations on the
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`topic of entrepreneurs and entrepreneurship. This unilateral conduct comes “dangerously
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`close” to achieving monopoly power and is having an anticompetitive effect on a
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`substantial amount of interstate commerce. EMI has sufficient market power in the
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`above described market to be held liable for “attempted monopolization” under Section 2
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`of the Sherman Antitrust Act. Therefore, there is a “dangerous probability” that EMI’s
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`attempt to monopolize will succeed.
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`7.20
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`ElV[I’s pattern of attempting to steal other people's domain names (which were
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`properly owned and registered) and threatening expensive litigation —-— simply because
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`they have used a derivation of the word “entrepreneur” is exclusionary and
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`anticompetitive because it is not necessary for competition on the merits, and is not
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`reasonably necessary to compete on the merits. It is therefore, not supported by a valid
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`business reason. EMI’s behavior is designed to destroy competition, not simply to
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`destroy a competitor.
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`7.21 As such, Castro seeks a judicial declaration that EM1’s trademark in the mark
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`“ENTREPRENEUR” is invalid and should be cancelled.
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`C.
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`DECLARATION OF INVALIDITY AND REQUEST FOR
`CANCELLATION
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`7.22
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`Even if this court rules that EMI’s mark is “incontestabie," Castro requests a
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`judicial declaration that the mark is invalid and requests that it be canceled. An
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`11
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`
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`“incontestable” mark that becomes generic may be cancelled at any time pursuant to 15
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`U.S.C. §1064(3).
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`7.23 Under 15 U.S.C. §§ 1052 and 1065(4), Castro seeks a judicial declaration that
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`EMI’s trademark in the Word “entrepreneur" is invalid, unenforceable, and should be
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`cancelled for the following reasons:
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`7.24
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`EMI’s mark does not serve to identify and distinguish ED/fl’s goods and services
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`fiorn those of others and do not otherwise function as trademarks as defined in Section 45
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`ofthe Lanliam Act, 15 U.S.C. § 1127.
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`7.25
`
`The public has NOT come to associate the word “entrepreneur" exclusively with
`
`EIVfl’s products or services.
`
`7.26
`
`Plaintiff also requests a cancellation of ElVlI’s trademark because EMI has used it
`
`in restraint of trade in violation of Section 2 of the Sherman Antitrust Act (for all the
`
`factual reasons previously described, which are inco1porated herein by reference) 15
`
`U.S.C. §2.
`
`7.27
`
`Pursuant to Section 37 of the Lanharn Act, 15 U.S.C. 1119, this Court should
`
`order the Director of the United States Patent and Trademark Office to cancel each of the
`
`following of EMI’s registrations:
`
`Registration No. 1,453,968 in International Classes 9, 16, 35 and 41.
`
`Registration No. 2,502,032 in International Classes 9, 16, 35, and 41.
`
`Registration No. 3,520,633 in International Classes 9, 16, 35, and 41.
`
`Registration No. 2,263,883 in International Classes 9, 16, 35, and 41.
`
`Registration No. 2,033,423 in International Classes 9, 16, 35, and 41.
`
`Registration No. 2,287,413 in International Classes 9, 16, 35, and 41.
`
`Registration No. 2,174,757 in International Classes 9, 16, 35, and 41.
`
`12
`
`
`
`Registration No. 1,854,603 in International Classes 9, 16, 35, and 41.
`
`Registration No. 2,215,674 in International Classes 9, 16, 35, and 41.
`
`Registration No. 2,502,032 in International Classes 9, 16, 35, and 41.
`
`Registration No. 3,204,899 in International Classes 9, 16, 35, and 41.
`
`Registration No. 3,266,532 in International Classes 9, 16, 35, and 41.
`
`Registration No. 3,374,476 in International Classes 9, 16, 35, and 41.
`
`Registration No. 2,653,302 in International Classes 9, 16, 35, and 41.
`
`Registration No. 3,470,064 in International Classes 9, 16, 35, and 41.
`
`Registration No. 3,315,154 in International Classes 9, 16, 35, and 41.
`
`Registration No. 2,391,145 in International Classes 9, 16, 35, and 41.
`
`7.28
`
`This court is empowered to_declare invalid and unenforceable and to cancel
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`Defendant‘s registered “entrepreneur” trademark. Section 37 of the Lanham Act, 15
`
`U.S.C. § 1119, provides as follows: “In any action involving a registered mark, the court
`
`may determine the right to registration, order the cancellation of registrations, in whole or
`
`in part, restore canceled registrations, and otherwise rectify the register with respect to
`
`registrations of any part to the action. Decrees and orders shall be certified by the court
`
`to the Director, who shall make appropriate entry upon the records of the Patent and
`
`Trademark Office, and shall be controlled thereby.” 15 U.S.C. §1119.
`
`D.
`
`DECLARATION OF NON-INFRINGEMENT AND/OR ALLOWABLE
`USE
`
`7.29
`
`Even if this Court rules that EMI’s mark is valid, Castro seeks a judicial
`
`declaration that his use of the word “entrepreneur“ and any derivative thereof, in his
`
`books, articles, keynotes, seminars, workshops, Websites, and marketing materials
`
`
`
`promoting the same, is entitled to First Amendment protection, and is, therefore, non-
`
`infringing.
`
`7.30
`
`Castro also seeks a judicial declaration that his marks: (1) EntrepreNeurology;
`
`(2) Entrepreneur.Ology; and (3) the domain name www.EntrepreneurOlogy.com do not
`
`infringe on EMI’s mark, or are otherwise allowed, for the following reasons:
`
`7.31
`
`It is well established that this word “incontestable” is very misleading because
`
`there are at least nine statutory defenses to an “incontestable” trademark. 15 U.S.C.
`
`11l5(b)(1) ~ (9).
`
`7.32
`
`Even if EMI’s mark is “incontestable,” it is very weak because the word has been
`
`in the public domain for hundreds of years, and is commonly used in the marketplace.
`
`7.33 Widespread use of the word “entrepreneur” throughout the world serves as
`
`confirmation of the need for the public to use that word. There are few, if any synonyms
`
`for the word “entrepreneur.”
`
`7.34
`
`The evidence will show that many worldwide publications, including the Wall
`
`Street Journal, the New York Times, Forbes Magazine and Fortune Magazine use the
`
`Word “entrepreneur” thousands of times each month, both online and in their hard print
`
`versions.
`
`7.35
`
`The Ninth Circuit has already ruled that “EMI cannot have the exclusive right to
`
`use the word “entrepreneur” in any mark identifying a printed publication addressing
`
`subjects related to entrepreneurship.” See EMT, Inc. v. Smith, 279 F.3d 1135 (9“‘ Cir.
`
`2002).
`
`7.36
`
`Castro also seeks a declaration that his use of the mark EntrepreneurOlogy and
`
`the domain name www.Entrep1‘eneur.Ology.coIr1 are protected as: (a) fair use (under 15
`
`U.S.C. lll5(b)(4) of the Lanharn Act; (b) nominative fair use (under federal common
`
`14
`
`
`
`law); (c) because Castro used and registered the marks first. See 15 U.S.C. l115(b)(6) of
`
`the Lanharn Act; and (d) because EM1 has abused its trademark by using it in restraint of
`
`trade in violation of Section 2 of the Sherman Antitrust Act (for all the factual reasons
`
`previously described, which are incorporated herein by reference), 15 U.S.C.§
`
`1 115(b)(7); and (e) Free Speech under the First Amendment.
`
`7.37
`
`Castro’s use of the word “Enterpreneur.Ology and the domain,
`
`www.EntrepreneurOlogy.com meet all the criteria for nominative use: (1) Castro’s
`
`keynotes, workshops, seminars, books, articles and website are NOT readily identifiable
`
`without the use of the mark; (2) only so much of the mark is being used as is reasonably
`
`necessary to identify Castro’s keynotes, seminars, workshops, books, articles, and
`
`website; and (3) Castro has done nothing that would, in conjunction with the mark,
`
`suggest sponsorship or endorsement by EMI.
`
`7.38
`
`There is no other single word that describes people who start and run businesses
`
`as succinctly or precisely as the word “entrepreneur.” Therefore, Castro cannot
`
`effectively market keynotes, seminars, workshops, books, articles, and a website
`
`dedicated to the study of entrepreneurs and entrepreneurship without use of some
`
`derivative of the word “entrepreneur.” Castro has used only so much of the mark as is
`
`reasonably necessary to identify his keynotes, seminars, workshops, books, articles, and
`
`website.
`
`7.39 Under the “fair use doctrine,” Castro is entitled to use the word “entrepreneur”
`
`and any derivative thereof, to describe his keynotes, seminars, workshops, books, articles,
`
`and websites (as well in the content of the same) regardless of whether Defendant’s
`
`claimed trademark is registered. See Section 33(b)(4) of the Lanharn Act.
`
`15
`
`
`
`7.40
`
`Castro has used the mark Entrepreneur. Ology and the domain name
`
`www.Entre1_3reneurO1ogy in good faith with no attempt to imply sponsorship by or
`
`affiliation with ENTREPRENEURSHIP magazine. There is no evidence to the contrary.
`
`7.41
`
`In short, Castro’s fair use of the word “entrepreneur” is allowed, and to the extent
`
`EMI’s trademark may be found valid or enforceable, should be declared non-infringing,
`
`or otherwise allowed.
`
`E.
`
`ESTOPPEL AND ACQUIESCENCE
`
`7.42
`
`EMI is barred from claiming infringement under the doctrines of estoppel and
`
`acquiescence because it failed to oppose Castro’s trademark registration of the mark
`
`“EntrepreNeurology” and has never challenged Castro’s use of this mark in commerce.
`
`7.43
`
`Castro applied for registration of the mark “EntrepreNeurology” on Januaiy 16,
`
`2009, and received an unopposed registration ofhis mark “EntIepreNeuro1ogy” on
`
`August 4, 2009. That mark now has the Registration No: 3,663,282. See Exhibit 1.
`
`7.44
`
`Therefore, EMI is barred from now claiming infringement based on Castro’s use
`
`of the virtually identical mark Entrepreneur. Ology or the domain name
`
`WWw.Entr§preneurOlogy.co1u.
`
`F.
`
`DECLARATION THAT CASTRO’S MARKS DO NOT CONSTITUTE
`UNFAIR COMPETITION UNDER 15 U.S.C. 112.5.
`
`7.45
`
`Plaintiff incorporates all preceding and proceeding paragraphs herein by
`
`reference.
`
`7.46
`
`For all of the reasons already stated in this Complaint, Castro seeks a judicial
`
`declaration that his use of the marks: (1) Entrepreneur.Ology; (2)
`
`www.Entr§preneurOlogy.com; and (3) EntrepreNeurology do not constitute “unfair
`
`competition” in violation of 15 U.S.C. 1 125.
`
`
`
`G.
`
`VIOLATION OF ANTITRUST LAWS
`
`7.47
`
`EMI is guilty of violating Section 2 of the Sherman Antitrust Act in an attempt to
`
`monopolize trade andlor commerce among the several states in violation of Section 2 of
`
`the Sherman Antitrust Act. 15 U.S.C. §2.
`
`7.48
`
`EMI has demonstrated the requisite “specific intent” to monopolize by engaging
`
`in a pattern of anticompetitive conduct designed to create barriers to entry into, and
`
`exclude competition from, the market that provides magazines, books, articles, websites,
`
`blogs, trade shows, workshops, seminars, boot camps, and keynote presentations on the
`
`topic of entrepreneurs and entrepreneurship.
`
`7.49
`
`This unilateral conduct comes “dangerously close” to achieving monopoly power
`
`and is having an anticompetitive effect on a substantial amount of interstate commerce.
`
`EM] has sufficient market power in the relevant market (described above) to be held
`
`liable for “attempted rnonopolization” under Section 2 of the Sherman Antitrust Act.
`
`Therefore, there is a “dangerous probability” that EMI’s attempt to monopolize will
`
`succeed.
`
`7.50
`
`EMI’s pattern of attempting to steal other people’s domain names (which were
`
`properly owned and registered) and by threatening expensive litigation — simply because
`
`they have used a derivation of the Word “entrepreneur” is exclusionary and
`
`anticompetitive because it is not necessary for competition on the merits, and is not
`
`reasonably necessary to compete on the merits. It is therefore, not supported by a valid
`
`business reason.
`
`7.51
`
`EMI’s pattern of threats and lawsuits against anyone who uses any variation of
`
`the common noun “entrepreneur” is an attempt to create a monopoly and a barrier to into
`
`the market that provides magazines, books, articles, websites, blogs, trade shows,
`
`17
`
`
`
`workshops, seminars, boot camps, and keynote presentations on the topic of
`
`entrepreneurs and entrepreneurship. EMl's behavior is designed to destroy competition,
`
`not simply to destroy a competitor.
`
`7.52 Defendant’s threatening letter to Castro (and to other small businesses)
`
`demonstrates bad faith and exhibits a “specific inten ” to use the trademark laws to
`
`minimize competition in the relevant market described above. Defendant’s September 7,
`
`2010 letter (as well as its similar letters to other entrepreneurs across America) is
`
`evidence of a “specific inten ” to exclude competition and prevent anyone from using any
`
`derivation of the Word “entrepreneur” in connection with magazines, seminars,
`
`workshops, keynotes, books, articles, websites and blogs related to the topic of
`
`entrepreneurs and entrepreneurship. In so doing, Defendants are not only seeking
`
`exclusive use of the word “entrepreneur,” but also the exclusive right to conduct
`
`seminars, Workshops, keynotes, boot camps, and to publish magazines, books and articles
`
`related to entrepreneurship, and create websites and blogs dedicated to the study of
`entrepreneurs and entrepreneurship.
`
`7.53
`
`Castro does not seek actual damages, but rather a temporary and permanent
`
`injunction to prevent EMI from continuing to violate Section 2 of the Sher
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