Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA466012
`ESTTA Tracking number:
`04/09/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91203965
`Plaintiff
`Entrepreneur Media, Inc.
`Jennifer L. Barry
`Latham & Watkins LLP
`600 West Broadway, Suite 1800(027788-0041)
`San Diego, CA 92101
`UNITED STATES
`ipdocket@lw.com, jennifer.barry@lw.com
`Motion to Suspend for Civil Action
`Adam Kummins
`jennifer.barry@lw.com, ipdocket@lw.com
`/Adam Kummins/
`04/09/2012
`EMI susp.PDF ( 33 pages )(926611 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`027788-41-US07l & USl06
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Entrepreneur Media, Inc.,
`a California corporation,
`
`V.
`
`Plaintiff’
`
`AEP, LLC,
`a New Jersey limited liability company,
`
`Defendant.
`
`$/$/$/&/$/$/$/$/&/%
`
`Opposition No: 91203965
`
`In re the Application of AEP, LLC
`
`Mark: USENTREPRENEURTODAY
`
`Serial No.: 85/249474
`
`1 M
`
`OTION TO SUSPEND
`
`Pursuant to 37 C.F.R. § 2.1117 and Rule 510.02(a) of the Trademark Trial and Appeal Board’s
`
`Manual of Procedure (“TBMP”), Plaintiff Entrepreneur Media, Inc. (“EMI”) hereby files this Motion to
`
`Suspend this opposition proceeding pending the outcome of the civil action, Entrepreneur Media, Inc. v.
`
`Jeanne Gray, Enterprising Solutions Inc., and AEP, LLC, Case No. 12-CV-01346, pending in the United
`
`States District Court of New Jersey (“Federal Litigation”). A copy of the complaint which was filed by
`
`EMI against the Defendant in this matter is attached.
`
`Dated: April 9, 2012
`
`Respectfiilly submitted,
`
`LATHAM & WATKINS LLP
`
`Jennifer L. Barry
`LATHAM & WATKINS LLP
`
`600 West Broadway, Suite 1800
`San Diego, California 92101-3375
`(619)236-1234 / (619) 696-7419 Fax
`jennifer.barry@lw.com; ipdocket@lw.com
`
`Attorneys for Plaintiff
`Entrepreneur Media, Inc.
`
`OC\1249068. 1
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and complete copy of the foregoing MOTION TO SUSPEND
`has been served on AEP, LLC by mailing said copy on April 9, 2012 via First Class Mail, postage prepaid
`to:
`
`LOUIS ZAMBRIO
`OLENDERFELDMAN LLP
`2840 MORRIS AVE STE 1
`
`UNION, NJ 07083-4880
`
`Adam Kummins
`
`OC\ 1249068. 1
`
`

`
`Case 2:33-av-00001 Document 14249 Filed 03/05/12 Page 1 of 26 PageID: 270463
`
`Jason B. Lattimore
`LATHAM & WATKINS LLP
`One Newark Center, 16th Floor
`Newark, NJ 07101-3174
`Telephone: (973) 639-1234
`Facsimile: (973) 639-7298
`
`OF COUNSEL:
`
`Perry J. Viscounty
`LATHAM & WATKINS LLP
`650 Town Center Drive, 20th Floor
`Costa Mesa, CA 92626
`Telephone: (714) 540-1235
`Facsimile: (650) 755-8290
`
`Jennifer L. Barry
`LATHAM & WATKINS LLP
`600 West Broadway, Suite 1800
`San Diego, CA 92101-3375
`Telephone: (619) 236-1234
`Facsimile: (619) 696-7419
`
`Attorneys for Plaintiff
`ENTREPRENEUR MEDIA, INC.
`
`
`UNITED STATES DISTRICT COURT
`DISTRICT OF NEW JERSEY (NEWARK)
`
`
`Case No.
`
`
`COMPLAINT
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`ENTREPRENEUR MEDIA, INC.,
`Plaintiff,
`v.
`JEANNE GRAY, ENTERPRISING
`SOLUTIONS INC., and AEP, LLC,
`Defendants.
`
`
`
`
`
`
`

`
`Case 2:33-av-00001 Document 14249 Filed 03/05/12 Page 2 of 26 PageID: 270464
`
`COMPLAINT AND DEMAND FOR JURY TRIAL
`
`
`
`Plaintiff Entrepreneur Media, Inc. (“EMI”) brings this complaint against
`
`Defendants for federal trademark infringement and federal unfair competition/false
`
`designation. EMI seeks monetary, injunctive, and other relief, and, in support
`
`thereof, states the following:
`
`PARTIES
`
`1.
`
`EMI is a California corporation, having its principal place of
`
`business at 2445 McCabe Way, Irvine, California 92614.
`
`2.
`
`On information and belief, Jeanne Gray, an individual residing in
`
`Westfield, New Jersey, operates the websites located at usentrepreneurtoday.com
`
`and njentrepreneur.com and is the president and founder of both Enterprising
`
`Solutions, Inc. and AEP, LLC Gray is also the registrant for the
`
`njentrepreneur.com and usentrepreneurtoday.com domain names. On information
`
`and belief, Gray was personally aware of, and authorized, approved, ratified,
`
`participated in, and instigated the wrongful conduct alleged in this Complaint.
`
`3.
`
`On information and belief, Enterprising Solutions, Inc. is a New
`
`Jersey corporation, having its principal place of business at 231 North Avenue,
`
`#334, Westfield, New Jersey 07090. Enterprising Solutions, Inc. publishes content
`
`on the njentrepreneur.com website, and was the applicant of record for the
`
`application for federal registration of the NJENTREPRENEUR mark.
`
`2
`
`
`
`

`
`Case 2:33-av-00001 Document 14249 Filed 03/05/12 Page 3 of 26 PageID: 270465
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`4.
`
`On information and belief, AEP, LLC is a New Jersey limited
`
`liability company, having its principal place of business at 231 North Avenue,
`
`#334, Westfield, New Jersey 07090. AEP, LLC is the applicant of record for the
`
`application for federal registration of the USENTREPRENEURTODAY mark.
`
`5.
`
`EMI is informed and believes, and on that basis alleges, that each of
`
`the Defendants was the agent and employee of the remaining Defendants and, at all
`
`times mentioned, acted within the course and scope of such agency and
`
`employment.
`
`VENUE AND JURISDICTION
`
`6.
`
`This is a civil action alleging trademark infringement and false
`
`designation of origin/unfair competition under the Lanham Act, 15 U.S.C.
`
`§§ 1114, 1125(a).
`
`7.
`
`Pursuant to 15 U.S.C. § 1121(a) and 28 U.S.C. § 1338(a), this Court
`
`has subject matter jurisdiction over EMI’s claims for relief for violation of the
`
`Lanham Act.
`
`8.
`
`This Court has personal jurisdiction over Defendants because
`
`Defendants reside, maintain offices, and conduct business in this State.
`
`9.
`
`Venue in this Court exists under 28 U.S.C. § 1391(b)(1) as
`
`Defendants reside in this District.
`
`3
`
`
`
`
`
`

`
`Case 2:33-av-00001 Document 14249 Filed 03/05/12 Page 4 of 26 PageID: 270466
`
`FACTS COMMON TO ALL CLAIMS FOR RELIEF
`
`EMI and Its Successful ENTREPRENEUR® Brand
`
`10.
`
`For over thirty years, EMI (together with its predecessor companies)
`
`have published magazines and books which provide editorial content and other
`
`information, as well as offer products and services related or of interest to
`
`businesses, business owners, and prospective business owners.
`
`11.
`
`EMI’s longstanding marketing and sales efforts have been conducted
`
`primarily under the mark ENTREPRENEUR® (the “ENTREPRENEUR® Mark”).
`
`12.
`
`EMI is the publisher of ENTREPRENEUR® magazine and other
`
`publications incorporating the ENTREPRENEUR® name in their titles.
`
`ENTREPRENEUR® magazine is published monthly with a current paid
`
`circulation, including both subscriptions and newsstand sales, of more than
`
`600,000 in the United States. ENTREPRENEUR® magazine is also sold and
`
`distributed in over 100 foreign countries.
`
`13.
`
`ENTREPRENEUR® magazine routinely features articles and
`
`interviews of some of the biggest names in the entrepreneur community, including
`
`Richard Branson, skateboarding icon Tony Hawk, quarterback Drew Brees, and
`
`hip hop mogul Russell Simmons:
`
`4
`
`
`
`
`
`

`
`Case 2:33-av-00001 Document 14249 Filed 03/05/12 Page 5 of 26 PageID: 270467
`
`
`
`
`
`
`
`
`
`
`
`14.
`
`ENTREPRENEUR® magazine also annually publishes, and has
`
`continuously published for over thirty years, the highly anticipated Franchise 500®
`
`ranking of America’s top franchises using EMI’s top-secret formula:
`
`15.
`
`
`
`
`
`
`
`16.
`
`EMI also publishes over 200 book titles under the
`
`ENTREPRENEUR® name and ENTREPRENEUR PRESS® imprint:
`
`5
`
`
`
`
`
`

`
`Case 2:33-av-00001 Document 14249 Filed 03/05/12 Page 6 of 26 PageID: 270468
`
`17.
`
`EMI has also launched many of its most successful titles as e-books:
`
`
`
`18.
`
`EMI also conducts seminars, workshops and other educational
`
`services geared towards how to successfully start and operate businesses. These
`
`events have included the Sales Success Secrets/Business Success Secrets®
`
`Breakfasts sponsored by State Farm Insurance; the Women in Charge Conferences
`
`sponsored by OPEN—American Express; the Business Success Secrets® Breakfast
`
`Seminars sponsored by Deluxe Corporation and Sprint; the Winning Strategies for
`
`Business Conference sponsored by Verizon; and Entrepreneur® Magazine’s
`
`Growth 2.0 Conferences presented by The UPS Store®:
`
`6
`
`
`
`
`
`

`
`Case 2:33-av-00001 Document 14249 Filed 03/05/12 Page 7 of 26 PageID: 270469
`
`
`
`19.
`
`EMI operates a number of websites to further disseminate and
`
`market its content and services, including entrepreneur.com,
`
`YoungEntrepreneur.com, EntrepreneurEnEspanol.com, and
`
`EntrepreneurPress.com:
`
`
`
`
`
`
`
`20.
`
`The website at entrepreneur.com has averaged over 6 million unique
`
`visitors and over 52.6 million page views per month, and is ranked in the top 1,100
`
`sites in the United States by Alexa.
`
`21.
`
`EMI has also launched apps for iPhones/ iPads, Android and
`
`Blackberry:
`
`
`
`22.
`
`EMI’s fame and high-quality content and services have resulted in
`
`numerous co-branding business relationships with some of the top names in news
`
`and business. These co-branding relationships have included: The UPS Store®
`
`7
`
`
`
`

`
`Case 2:33-av-00001 Document 14249 Filed 03/05/12 Page 8 of 26 PageID: 270470
`
`(an annual contest and awards ceremony for selecting and promoting top
`
`established entrepreneurs, emerging entrepreneurs, and college entrepreneurs);
`
`MSNBC; Reuters; PerfectBusiness.com; Princeton Review (ranking top
`
`entrepreneurial schools); Great Place to Work® (annual Best Small & Medium
`
`Workplaces rankings); and Palo Alto Software (Entrepreneur® Magazine’s
`
`Business Plan Pro® software):
`
`
`
`23.
`
`Through careful cultivation of its various products and services, EMI
`
`has developed an outstanding reputation as an innovator in the field of business
`
`start-up and strategy and has established an extremely loyal customer following.
`
`24.
`
`EMI has received a tremendous amount of public recognition and
`
`acclaim for the products sold and services provided under its ENTREPRENEUR®
`
`brand. Through EMI’s widespread and continuous use of the ENTREPRENEUR®
`
`8
`
`
`
`

`
`Case 2:33-av-00001 Document 14249 Filed 03/05/12 Page 9 of 26 PageID: 270471
`
`Mark, the mark has acquired extensive goodwill, has developed a high degree of
`
`distinctiveness, and has become famous, well known and recognized as identifying
`
`goods and services that originate from EMI.
`
`25.
`
`The fame and quality of the products and services bearing the
`
`ENTREPRENEUR® Mark have been widely recognized through industry awards
`
`and commendations. ENTREPRENEUR® magazine was a finalist in two
`
`categories in Folio’s 2010 Eddie & Ozzie magazine awards, has been named one
`
`of the top performing magazines for four years in “Capell’s Circulation Report,”
`
`and has been honored for its content by receipt of the prestigious Maggie awards in
`
`2008, 2009, 2010, and 2011 from the Western Publishing Association. EMI’s
`
`website at entrepreneur.com has been awarded “Outstanding Achievement in Web
`
`Development” by the Web Marketing Association, and its networking website
`
`under the Entrepreneur Connect trademark was voted the #1 “Top 10 Social
`
`Networks for Entrepreneurs” by Mashable.com. EMI has also received multiple
`
`Integrated Marketing Awards from Min Online for its magazine and website. In
`
`addition, both ENTREPRENEUR® magazine and the entrepreneur.com website
`
`have been named to BtoB magazine’s 2010 and 2011 lists of the top 50 media
`
`outlets for business-to-business advertising.
`
`EMI’s Intellectual Property Rights
`
`26.
`
`EMI owns, and has obtained United States federal registrations for,
`
`9
`
`
`
`

`
`Case 2:33-av-00001 Document 14249 Filed 03/05/12 Page 10 of 26 PageID: 270472
`
`the ENTREPRENEUR® Mark, as well as a family of related marks incorporating
`
`the term ENTREPRENEUR, as follows:
`
`REG. NO.
`REG. DATE
`
`1,453,968
`
`Aug. 25,
`
` 1987
`
`2,263,883
`
`July 27, 1999
`
`
`
`2,502,032
`
`October 30, 2001
`
`
`
`3,519,022
`
`October 21, 2008
`
`
`
`TRADEMARK
`
`CLASS: GOODS/SERVICES
`
`ENTREPRENEUR
`
`16: Paper goods and printed matter; namely magazines, books
`and published reports pertaining to business opportunities
`
`First Use in Commerce: May 2, 1978
`
`ENTREPRENEUR
`
`ENTREPRENEUR
`
`ENTREPRENEUR.COM
`
`35: 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 others
`
`First Use in Commerce: July 1992
`
`35: Arranging and conducting trade show exhibitions in the
`field of entrepreneurial activities, namely the start-up and
`operation of small business enterprises
`
`41: Educational services, namely, conducting seminars on the
`development and operation of businesses, and conducting
`workshops on computer technology, telecommunications,
`marketing, financing options, real estate management, tax
`planning and insurance
`
`First Use in Commerce: October 18, 1991
`
`9: Downloadable podcasts in the field of business, current
`events, lifestyle issues, and developments in science and
`technology
`
`35: Providing business information and advice via a website on
`a global computer network
`
`38: Broadcasting programs via a global computer network; and
`streaming of audio and video material via the Internet;
`telecommunications services, namely, transmission of podcasts
`
`First Use in Commerce: September 2002
`
`10
`
`
`
`

`
`Case 2:33-av-00001 Document 14249 Filed 03/05/12 Page 11 of 26 PageID: 270473
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`42: Online business networking services in the nature of
`creating and hosting a community for registered users to create
`professional profiles, to participate in group discussions, to
`make business contacts, and to upload onto the website
`materials promoting their businesses, products and services
`
`
`
`3,652,950
`
`July 14, 2009
`
`ENTREPRENEUR
`CONNECT
`
`
`
`ENTREPRENEUR
`ENESPANOL.COM
`
`ENTREPRENEUR
`PRESS
`
`3,266,532
`
`July 17, 2007
`
`
`
`3,470,064
`
`July 22, 2008
`
`
`
`First Use in Commerce: April 26, 2008
`
`35: Advertising and business services, namely, arranging for
`the promotion of goods and services of others by means of a
`global computer network and other computer online service
`providers; providing business information for the use of
`customers in the field of starting and operating businesses and
`permitting customers to obtain information via a global
`computer network and other computer online service providers;
`internet advertising services, namely, promoting the goods and
`services of others by providing a website with active links to
`their websites featuring their goods and services
`
`First Use in Commerce: October 13, 2006
`
`16: Paper goods and printed matter, namely, books, manuals,
`prepared reports, work books, study guides, legal and business
`forms, and newsletters concerning advice and information
`relating to the subjects of starting, running and operating a
`business, and individuals who succeeded in business, which
`subjects are of interest to entrepreneurs, new and existing
`businesses and members of the general public
`
`35: On-line ordering services featuring printed and
`electronically downloadable publications, namely, books, study
`guides, legal and business forms, and newsletters, concerning
`advice and information relating to the subjects of starting,
`running and operating a business and individuals who succeeded
`in business, which subjects are of interest to entrepreneurs, new
`and existing businesses and members of the general public
`
`First Use in Commerce: April 1999
`
`ENTREPRENEUR’S
`STARTUPS
`
`16: Paper goods and printed matter, namely, magazines, books,
`booklets and published reports pertaining to business
`opportunities
`
`3,204,899
`
`February 6, 2007
`
`First Use in Commerce: January 27, 2006
`
`
`
`
`
`27.
`
`The above marks are collectively referred to as the “EMI Marks.”
`
`The above registrations are collectively referred to as the “EMI Registrations.”
`
`28.
`
`EMI’s registration numbers 1,453,968, 2,263,883 and 2,502,032 for
`
`ENTREPRENEUR® are incontestable pursuant to 15 U.S.C. § 1065.
`11
`
`
`
`

`
`Case 2:33-av-00001 Document 14249 Filed 03/05/12 Page 12 of 26 PageID: 270474
`
`29.
`
`The EMI Registrations constitute prima facie evidence that the marks
`
`are valid, and that EMI is entitled to the exclusive use of the marks in commerce
`
`throughout the United States on the goods and services listed in the registrations.
`
`30.
`
`EMI also has extensive common law rights in the
`
`ENTREPRENEUR® Mark, based on its use of that mark over the last three
`
`decades.
`
`31.
`
`Through extensive use, marketing, branding and promotion, the
`
`ENTREPRENEUR® Mark is well-known and famous, enjoying substantial
`
`recognition, goodwill and association with EMI. The public distinguishes EMI’s
`
`goods and services from those of other publishers and providers of educational
`
`services on the basis of the ENTREPRENEUR® Mark. The ENTREPRENEUR®
`
`Mark is distinctive and has acquired secondary meaning in the United States.
`
`32.
`
`The U.S. District Court for the Central District of California held
`
`that:
`
`• “The extensive advertising and public recognition over the past 25 years
`
`have established [the ENTREPRENEUR® Mark] as a strong mark in the
`
`industry.”
`
`• The ENTREPRENEUR® Mark “is a strong distinctive mark, deserving of
`
`significant protection.”
`
`• The ENTREPRENEUR® Mark “has acquired secondary meaning.”
`
`12
`
`
`
`

`
`Case 2:33-av-00001 Document 14249 Filed 03/05/12 Page 13 of 26 PageID: 270475
`
`Entrepreneur Media, Inc. v. Smith, No. CV 98-3607 FMC (CTx), 2004 U.S. Dist.
`
`LEXIS 24078, at *9-10, 13 (C.D. Cal. June 23, 2004).
`
`33.
`
`The Ninth Circuit reviewed the District Court’s findings and
`
`affirmed them on appeal. Entrepreneur Media, Inc. v. Smith, 101 Fed. Appx. 212,
`
`2004 U.S. App. LEXIS 11567 (9th Cir. 2004).
`
`34.
`
`Recently both a Magistrate Judge and District Court judge in the
`
`Eastern District of Virginia found the ENTREPRENEUR® Mark to be distinctive.
`
`Entrepreneur Media, Inc. v. seattleentrepreneur.com, No. 1:11-cv-00409-LMB-
`
`JFA, Docket No. 22 (E.D. Va. Dec. 6, 2011).
`
`Defendants’ Unauthorized Use of EMI’s Marks
`
`35.
`
`Defendants offer a variety of business, educational and marketing
`
`services targeted at small and medium-sized business owners under several
`
`different marks that consist primarily of the word ENTREPRENEUR.
`
`36.
`
`Defendants operate a website at the domain name
`
`usentrepreneurtoday.com, which offers Defendants’ services under the US
`
`ENTREPRENEUR TODAY mark.
`
`37.
`
`The usentrepreneurtoday.com website also offers state-specific
`
`resources and services for several specific states, under the following marks: TX
`
`Entrepreneur Today; CT Entrepreneur Today; NY Entrepreneur Today; and PA
`
`Entrepreneur Today. (The marks discussed in paragraphs 35-36 will be
`
`13
`
`
`
`

`
`Case 2:33-av-00001 Document 14249 Filed 03/05/12 Page 14 of 26 PageID: 270476
`
`collectively referred to as the “US ENTREPRENEUR TODAY Marks”).
`
`38.
`
`Defendants also run a Facebook page for the NY ENTREPRENEUR
`
`TODAY mark at: facebook.com/#!/pages/NYEntrepreneurTodaycom.
`
`39.
`
`Defendants also provide their services targeted at New Jersey under
`
`the NJ ENTREPRENEUR mark through the njentrpreneur.com website.
`
`40.
`
`Additionally, the NJ ENTREPRENEUR website offers seminars and
`
`meetings under the mark ENTREPRENEURS EXCHANGE. (The marks
`
`discussed in paragraphs 38-39 will be collectively referred to as the “NJ
`
`ENTREPRENEUR Marks”).
`
`41.
`
`Defendants have filed a federal intent-to-use application (Serial No.
`
`85/249474, filed February 23, 2011) for the word mark
`
`USENTREPRENEURTODAY in Class 35 for “[p]roviding marketing services and
`
`marketing consulting services in the field of entrepreneurship”; Class 36 for
`
`“[p]roviding financing services for entrepreneurship”; and Class 41 for
`
`“[p]roviding a website featuring resources, namely, non-downloadable publications
`
`in the nature of newsletters regarding entrepreneurship, financing, marketing,
`
`government programs, university technology and commercialization and a range of
`
`other subjects that is informative and helpful to entrepreneurs and small
`
`businesses, including educating individuals about resources available within a
`
`national or state boundaries; educational services, namely, conducting webinars,
`
`14
`
`
`
`

`
`Case 2:33-av-00001 Document 14249 Filed 03/05/12 Page 15 of 26 PageID: 270477
`
`conferences, seminars and educational meetings regarding subjects such as
`
`entrepreneurship, financing, marketing, government programs, university
`
`technology and commercialization and a range of other subjects that is informative
`
`and helpful to entrepreneurs and small businesses, including educating individuals
`
`about resources available within a national or state boundaries.” EMI filed a
`
`Notice of Opposition to this application on February 21, 2012.
`
`42.
`
`Defendants also filed a trademark application for the mark
`
`NJENTREPRENEUR on August 26, 2009 in Class 16 for “newsletters in the field
`
`of providing entrepreneurs with relevant information” (Serial No. 77/812840).
`
`EMI’s registration in Class 16 was cited against this application on the basis of a
`
`likelihood of confusion. The Examiner refused registration, in concluding that
`
`“[b]oth marks are similar in sound, appearance, and meaning . . . [and] present a
`
`similar appearance and connote similar meanings. The minor difference between
`
`the two marks does not alter the commercial impression of the marks.” Defendants
`
`subsequently abandoned the application based on this refusal.
`
`43.
`
`Given EMI’s renown, online presence, and its long history of
`
`providing articles, profiles and recognition for entrepreneurs via
`
`ENTREPRENEUR® magazine, the entrepreneur.com and related websites,
`
`seminars and other educational events, and providing networking services via its
`
`Entrepreneur Connect site, EMI is very concerned that consumers are likely to be
`
`15
`
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`
`

`
`Case 2:33-av-00001 Document 14249 Filed 03/05/12 Page 16 of 26 PageID: 270478
`
`confused and in their confusion, to mistakenly believe that Defendants and their
`
`services are endorsed by or affiliated with EMI.
`
`44.
`
`This potential for confusion is heightened by Defendants’ actual use
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`of their marks, which offset the surrounding words, such as “Today” or “NJ”, from
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`“Entrepreneur,” thereby making “Entrepreneur” the central focus of the marks and
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`rendering the remaining words as mere additions or indicators of a regional
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`association with ENTREPRENEUR®. Similarly, Defendants’ use of “Today” may
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`be understood to indicate that Defendants are offering a daily version of EMI’s
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`well-known services and content.
`
`45.
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`Defendants will thus enjoy the benefits of EMI’s reputation and
`
`goodwill based on this consumer confusion, to EMI’s detriment.
`
`46.
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`EMI contacted Defendants several times to express EMI’s concerns
`
`regarding this potential for confusion, but Defendants have refused to cease use of
`
`the infringing marks.
`
`EMI Is Suffering Harm from Defendants’
`Continuing Infringement and Unlawful Conduct
`
`47.
`
`Defendants’ continued use of the US ENTREPRENEUR TODAY
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`Marks and NJ ENTREPRENEUR Marks in commerce in violation of EMI’s
`
`valuable intellectual property rights in the EMI Marks is knowing, intentional and
`
`willful, and is causing damage to EMI.
`
`48.
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`Due to Defendants’ willful continuing infringement and unlawful
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`conduct, EMI is now forced to bring this Complaint to protect its valuable and
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`longstanding intellectual property rights. EMI had to retain counsel and incur
`
`substantial fees and costs (and continues to incur those fees and costs) to prosecute
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`this suit and pursue its claims.
`
`49.
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`EMI’s interest in protecting its intellectual property rights, and
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`products and services from customer confusion outweigh any harm to Defendants.
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`The public interest is best served by granting the requested relief to EMI against
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`Defendants in this case.
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`FIRST CLAIM FOR RELIEF
`Federal Trademark Infringement – 15 U.S.C. § 1114
`
`50.
`
`51.
`
`EMI incorporates by reference the factual allegations set forth above.
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`EMI owns the EMI Marks and the EMI Registrations. The
`
`trademarks reflected in the EMI Registrations are strong and distinctive,
`
`designating EMI as the source of all products and services advertised, marketed,
`
`sold or used in connection with the EMI Marks. In particular, the
`
`ENTREPRENEUR® Mark has been used for over thirty years, and has been
`
`recognized by federal district courts as a strong and distinctive mark.
`
`52.
`
`EMI is the senior user of the EMI Marks, as it began use of the
`
`marks in interstate commerce prior to Defendants’ first use of the NJ
`
`ENTREPRENEUR Marks and US ENTREPRENEUR TODAY Marks.
`
`53.
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`Defendants do not have authorization, license or permission from
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`EMI to market and sell their services under the EMI Marks or the
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`ENTREPRENEUR® Mark, which are confusingly similar to the NJ
`
`ENTREPRENEUR Marks and US ENTREPRENEUR TODAY Marks, and closely
`
`related to the particular products and services with which the EMI Marks and the
`
`ENTREPRENEUR® Mark have come to be associated.
`
`54.
`
`Defendants were aware of the EMI Marks and the
`
`ENTREPRENEUR® Mark, as Defendants were on constructive notice based on
`
`EMI’s longstanding federal registrations, as well as on actual notice based on
`
`(1) the citation of EMI’s registration against Defendants’ application for NJ
`
`ENTREPRENEUR, and (2) EMI’s numerous communications to Defendants about
`
`this issue. Thus, Defendants’ unauthorized use of EMI’s Marks was knowing,
`
`intentional and willful.
`
`55.
`
`As a direct and proximate result of Defendants’ wrongful conduct,
`
`EMI has been and will continue to be damaged.
`
`56.
`
`57.
`
`Defendants’ actions thus constitute trademark infringement.
`
`Unless an injunction is issued enjoining any continuing or future use
`
`of the NJ ENTREPRENEUR Marks and US ENTREPRENEUR TODAY Marks
`
`by Defendants, such continuing or future use is likely to continue to cause
`
`confusion, mistake, or deception as to source, origin, affiliation or sponsorship, and
`
`thereby will damage EMI irreparably.
`
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`58.
`
`Defendants’ activities have caused and will continue to cause
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`irreparable harm to EMI, for which it has no adequate remedy at law, in that:
`
`(i) the EMI Marks and the ENTREPRENEUR® Mark comprise unique and
`
`valuable property rights that have no readily determinable market value;
`
`(ii) Defendants’ infringement constitutes interference with EMI’s goodwill and
`
`customer relationships and will substantially harm EMI’s reputation as a source of
`
`high-quality goods and services; and (iii) Defendants’ wrongful conduct, and the
`
`damages resulting to EMI, are continuing. Accordingly, EMI is entitled to
`
`injunctive relief pursuant to 15 U.S.C. § 1116(a).
`
`59.
`
`Pursuant to 15 U.S.C. §1117(a), EMI is entitled to an order:
`
`(a) requiring Defendants to account to EMI for any and all profits derived by
`
`Defendants from their actions, to be increased in accordance with the applicable
`
`provisions of law; and (b) awarding all damages sustained by EMI caused by
`
`Defendants’ conduct.
`
`60.
`
`Defendants’ conduct was intentional and without foundation in law,
`
`and pursuant to 15 U.S.C. § 1117(a), EMI is, therefore, entitled to an award of
`
`treble damages against Defendants.
`
`61.
`
`Defendants’ acts make this an exceptional case under 15 U.S.C.
`
`§ 1117(a), with the result that EMI is entitled to an award of attorneys’ fees/costs.
`
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`SECOND CLAIM FOR RELIEF
`Federal Unfair Competition/False Designation of Origin – 15 U.S.C. § 1125(a)
`
`62.
`
`63.
`
`EMI incorporates by reference the factual allegations set forth above.
`
`The EMI Marks, and in particular the ENTREPRENEUR® Mark, are
`
`strong and distinctive, designating EMI as the source of all goods and services
`
`advertised, marketed, sold or used in connection with those marks. In addition, by
`
`virtue of EMI’s decades-long use of the ENTREPRENEUR® Mark in connection
`
`with its products and services, and its extensive marketing, advertising, promotion
`
`and sale of its products and services under that mark, the EMI Marks, and in
`
`particular the ENTREPRENEUR® Mark, have acquired secondary meaning,
`
`whereby the consuming public of this District, the State of New Jersey, and
`
`throughout the United States, associate the EMI Marks with a single source of
`
`products and services.
`
`64.
`
`EMI is the senior user of the EMI Marks, as it began use of the
`
`marks in interstate commerce prior to Defendants’ first use of the NJ
`
`ENTREPRENEUR Marks and US ENTREPRENEUR TODAY Marks.
`
`65.
`
`Defendants were aware of the EMI Marks and the
`
`ENTREPRENEUR® Mark, as Defendants were on constructive notice based on
`
`EMI’s longstanding federal registrations, as well as on actual notice based on
`
`(1) the citation of EMI’s registration against Defendants’ application for NJ
`
`ENTREPRENEUR, and (2) EMI’s numerous communications to Defendants about
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`this issue. Thus, Defendants’ unauthorized use of EMI’s Marks was knowing,
`
`intentional and willful.
`
`66.
`
`On information and belief, through their use of the confusingly
`
`similar NJ ENTREPRENEUR Marks and US ENTREPRENEUR TODAY Marks,
`
`Defendants intended to, and did in fact, confuse and mislead consumers into
`
`believing, and misrepresented and created the false impression, that EMI somehow
`
`authorized, originated, sponsored, approved, licensed or participated in
`
`Defendants’ use of the confusingly similar NJ ENTREPRENEUR Marks and US
`
`ENTREPRENEUR TODAY Marks.
`
`67.
`
`In fact, there is no connection, association or licensing relationship
`
`between EMI and Defendants, nor has EMI ever authorized, licensed or given
`
`permission to Defendants to use the EMI Marks in any manner whatsoever.
`
`68.
`
`On information and belief, Defendants’ use of the NJ
`
`ENTREPRENEUR Marks and US ENTREPRENEUR TODAY Marks is likely to
`
`cause confusion as to the origin and authenticity of Defendants’ websites and
`
`related products/services and is likely to cause others to believe that there is a
`
`relationship between Defendants and EMI.
`
`69.
`
`As a direct and proximate result of Defendants’ wrongful conduct,
`
`EMI has been and will continue to be damaged.
`
`70.
`
`Defendants’ actions thus constitute false designation of origin and
`
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`unfair competition.
`
`71.
`
`Defendants’ activities have caused and will continue to cause
`
`irreparable harm to EMI, for which it has no adequate remedy at law, in that:
`
`(i) the EMI Marks and the ENTREPRENEUR® Mark comprise unique and
`
`valuable property rights that have no readily determinable market value;
`
`(ii) Defendants’ infringement constitutes interference with EMI’s goodwill and
`
`customer relationships and will substantially harm EMI’s reputation as a source of
`
`high-quality goods and services; and (iii) Defendants’ wrongful conduct and the
`
`damages resulting to EMI are continuing. Accordingly, EMI is entitled to
`
`injunctive relief pursuant to 15 U.S.C. § 1116(a).
`
`72.
`
`Pursuant to 15 U.S.C. §1117(a), EMI is entitled to an order:
`
`(a) requiring Defendants to account to EMI for any and all profits derived by
`
`Defendants from their actions, to be increased in accordance with the applicable
`
`provisions of law; and (b) awarding all damages sustained by EMI caused by
`
`Defendants’ conduct.
`
`73.
`
`Defendants’ conduct was intentional and without foundation in law,
`
`and pursuant to 15 U.S.C. § 1117(a), EMI is, therefore,