Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA946019
`01/08/2019
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding No.
`
`91241072
`
`Filing Party
`
`Other Party
`
`Plaintiff
`Entrepreneur Media, Inc.
`
`Defendant
`Mijan, LLC
`
`Pending Motion
`
`There is no motion currently pending and no other motion is being filed concur-
`rent with this consent motion.
`
`Attachments
`
`2019_01_08_Consent Motion to Suspend re Autopilot Entrepreneur.pdf(427968
`bytes )
`
`Consent Motion for Suspension in View of Civil Proceeding
`
`The parties are engaged in a civil action which may have a bearing on this proceeding. Accordingly, Entre-
`preneur Media, Inc. hereby requests suspension of this proceeding pending a final determination of the civil
`action. Trademark Rule 2.117.
`Entrepreneur Media, Inc. has secured the express consent of all other parties to this proceeding for the sus-
`pension requested herein.
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this filing has been served upon all parties, at their address of
`record by Email on this date.
`Respectfully submitted,
`/s/ Patrick Justman
`Patrick Justman
`patrick.justman@lw.com
`01/08/2019
`
`
`ESTTA946019
`01/08/2019
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding No.
`
`91241072
`
`Filing Party
`
`Other Party
`
`Plaintiff
`Entrepreneur Media, Inc.
`
`Defendant
`Mijan, LLC
`
`Pending Motion
`
`There is no motion currently pending and no other motion is being filed concur-
`rent with this consent motion.
`
`Attachments
`
`2019_01_08_Consent Motion to Suspend re Autopilot Entrepreneur.pdf(427968
`bytes )
`
`Consent Motion for Suspension in View of Civil Proceeding
`
`The parties are engaged in a civil action which may have a bearing on this proceeding. Accordingly, Entre-
`preneur Media, Inc. hereby requests suspension of this proceeding pending a final determination of the civil
`action. Trademark Rule 2.117.
`Entrepreneur Media, Inc. has secured the express consent of all other parties to this proceeding for the sus-
`pension requested herein.
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this filing has been served upon all parties, at their address of
`record by Email on this date.
`Respectfully submitted,
`/s/ Patrick Justman
`Patrick Justman
`patrick.justman@lw.com
`01/08/2019
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`In re the Application of Autopilot Entrepreneur
`Serial No. 87/569534
`Filed: August 15, 2017
`Trademark: AUTOPILOT ENTREPRENEUR
`Published: January 9, 2018
`
`
`Entrepreneur Media, Inc.,
`
`
`v.
`
`
`Mijan, LLC,
`
`
`
`
`
`
`
`Opposer,
`
`Applicant.
`
`)
`)
`) OPPOSITION NO. 91241072
`)
`)
`)
`)
`)
`)
`
`
`
`CONSENT MOTION TO SUSPEND PROCEEDING
`
`Pursuant to 37 C.F.R. § 2.117 and Rule 510.02(a) of the Trademark Trial and Appeal
`
`Board’s Manual of Procedure (“TBMP”), Opposer Entrepreneur Media, Inc. (“EMI”) hereby
`
`files this Consent Motion to Suspend this proceeding pending the outcome of the civil action,
`
`Entrepreneur Media, Inc. v. James P. Friel, et al., Case No. 6:18-cv-02067-ACC-DCI, pending
`
`in the U.S. District Court for the Middle District of Florida (the “Federal Court Action”). A copy
`
`of the complaint filed by EMI against Applicant in that matter is attached.
`
`The parties in this proceeding are the same parties involved in the Federal Court Action.
`
`The same registrations and application at issue in this proceeding are at issue in the Federal
`
`Court Action. The final determination of the Federal Court Action will have a bearing on the
`
`issues before the Board in this proceeding. Accordingly, the parties request that this proceeding
`
`be suspended.
`
`
`US-DOCS\105091689.1
`
`
`
`On January 4, 2019, EMI and Applicant Mijan, LLC (“Mijan”) conferred regarding the
`
`filing of this Consent Motion. Mijan provided its consent to the requested suspension of this
`
`proceeding.
`
`Dated: January 8, 2019
`
`
`
`
`
`By:
`
`Respectfully submitted,
`
`LATHAM & WATKINS LLP
`
`
`
`
`
`________________________________
`Patrick C. Justman
`LATHAM & WATKINS LLP
`12670 High Bluff Drive
`San Diego, California 92130-2071
`(858) 523.5400 / (858) 523-5450 Fax
`patrick.justman@lw.com; ipdocket@lw.com
`
`Attorneys for Opposer
`Entrepreneur Media, Inc.
`
`
`US-DOCS\105091689.1
`
`2
`
`
`
`
`
`
`
`ATTACHMENT
`
`ATTACHMENT
`
`
`
`
`
`Case 6:18-cv-02067 Document 1 Filed 11/30/18 Page 1 of 31 PageID 1
`
`UNITED STATES DISTRICT COURT
`MIDDLE DISTRICT OF FLORIDA
`
`ENTREPRENEUR MEDIA, INC., a
`California corporation,
`
`Civil Action No.
`
`Plaintiff,
`
`v.
`
`JAMES P. FRIEL, an individual;
`MIJAN, LLC, a Florida limited liability
`company; and DOES 1-10,
`
`Defendants.
`
`COMPLAINT
`
`DEMAND FOR JURY TRIAL
`
`INJUNCTIVE RELIEF SOUGHT
`
`NATURE OF ACTION
`
`1.
`
`Plaintiff Entrepreneur Media, Inc. (“EMI”) brings this complaint against
`
`James P. Friel, Mijan, LLC, and Does 1-10 (collectively “Defendants”) for federal
`
`trademark infringement and false designation of origin, and unfair competition in
`
`violation of the Lanham Act, 15 U.S.C. § 1051, et seq, Florida common law unfair
`
`competition and trademark infringement, and violations of the Florida Deceptive and
`
`Unfair Trade Practices Act (“FDUTPA”), and EMI alleges, with knowledge concerning
`
`its own acts and on information and belief as to all other matters (unless otherwise
`
`specifically stated), as follows:
`
`THE PARTIES
`
`2.
`
`EMI is a California corporation with its principal place of business at 18061
`
`Fitch Avenue, Irvine, California 92614.
`
`3.
`
`Defendant James P. Friel (“Friel”) is an individual residing in Daytona
`
`1
`
`
`
`Case 6:18-cv-02067 Document 1 Filed 11/30/18 Page 2 of 31 PageID 2
`
`Beach, Florida.
`
`4.
`
`Defendant Mijan, LLC (“Mijan”) is a Florida limited liability company
`
`with a primary place of business at 2665 North Atlantic Avenue, Suite 335, Daytona
`
`Beach, Florida 32118.
`
`5.
`
`At all relevant times, Friel was, as applicable, the principal, owner, director,
`
`officer, managing member, shareholder, member, central figure, and/or the representative
`
`of Mijan, and he authorized, approved, directed, controlled, ratified, participated in,
`
`instigated, and/or was otherwise the moving, active, central, and/or conscious force or
`
`figure behind the unlawful activity alleged herein.
`
`6.
`
`At all relevant times, Mijan was the alter ego of Friel, because there is a
`
`unity of interest and ownership between them, such that their separate personalities no
`
`longer existed and any failure to disregard the corporate form would result in a fraud or
`
`injustice.
`
`7.
`
`Does 1-10 are persons or entities responsible in whole or in part for the
`
`wrongdoing alleged herein (“Doe Defendants”). Each of the Doe Defendants participated
`
`in, ratified, endorsed, and/or was otherwise involved in the acts complained of, and they
`
`have liability for such acts. EMI will amend this Complaint if and when the identities of
`
`such persons or entities and/or the scope of their actions become known.
`
`8.
`
`At all relevant times, Friel, Mijan, and the Doe Defendants (collectively,
`
`“Defendants”) acted as the principal, agent, and/or representatives of each of the other
`
`Defendants. Any action by one of the Defendants was within the course and scope of the
`
`agency relationship between the Defendants and was with the permission, ratification,
`
`2
`
`
`
`Case 6:18-cv-02067 Document 1 Filed 11/30/18 Page 3 of 31 PageID 3
`
`and/or authorization of each of the other Defendants.
`
`9.
`
`Defendants conduct business in Florida and within this District, and have
`
`used and are involved in the use of the AUTOPILOT ENTREPRENEUR mark.
`
`10.
`
`As fully detailed below, Defendants use the AUTOPILOT
`
`ENTREPRENEUR mark (alternatively referred to as the “Infringing Entrepreneur
`
`Mark”) in such a manner that violates EMI’s longstanding and strong rights in the
`
`ENTREPRENEUR® mark.
`
`JURISDICTION AND VENUE
`
`11.
`
`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.
`
`12.
`
`Pursuant to 28 U.S.C. § 1338(b), this Court has supplemental jurisdiction
`
`over EMI’s state-law claims because those are joined with substantial and related claims
`
`under the Lanham Act. This Court also has supplemental jurisdiction over EMI’s state-
`
`law claims pursuant to 28 U.S.C. § 1367(a) because all of EMI’s claims arise out of a
`
`common nucleus of operative facts.
`
`13.
`
`This Court has personal jurisdiction over Defendants because Defendants
`
`reside within the state of Florida and within this District.
`
`14.
`
`Venue in this Court exists under (i) 28 U.S.C. §§ 1391(b)(1), (c)(2) as
`
`Defendants reside in this District and are subject to the Court’s personal jurisdiction; and
`
`(ii) § 1391(b)(2) as a substantial part of the events giving rise to EMI’s claims occurred
`
`within this District.
`
`3
`
`
`
`Case 6:18-cv-02067 Document 1 Filed 11/30/18 Page 4 of 31 PageID 4
`
`FACTS COMMON TO ALL CLAIMS FOR RELIEF
`
`EMI and Its Successful ENTREPRENEUR® Brand
`
`15.
`
`For over forty years, EMI (together with its predecessor companies) has
`
`published magazines and books, which provide editorial content and other information,
`
`as well as offered products and services related, or of interest, to businesses, business
`
`owners, and prospective business owners.
`
`16.
`
`EMI’s longstanding marketing and sales efforts have been conducted
`
`primarily under the mark ENTREPRENEUR® (the “ENTREPRENEUR Mark”).
`
`17.
`
`EMI is the publisher of ENTREPRENEUR® magazine and other
`
`publications incorporating the ENTREPRENEUR name in their titles.
`
`ENTREPRENEUR® magazine is published ten times per year with a current print and
`
`digital paid circulation, including both subscriptions and single-copy sales, of more than
`
`517,500 in the United States and worldwide.
`
`18.
`
`ENTREPRENEUR® magazine routinely features articles about and
`
`interviews with some of the biggest names in the business community, including Jeff
`
`Bezos (founder, chairman, and CEO of Amazon), Venus Williams (tennis icon), and
`
`4
`
`
`
`Case 6:18-cv-02067 Document 1 Filed 11/30/18 Page 5 of 31 PageID 5
`
`Sarah Michelle Gellar (actress and co-founder of startup Foodstirs).
`
`19.
`
`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:
`
`20.
`
`EMI also publishes and distributes within the United States and worldwide
`
`over 200 book titles under the ENTREPRENEUR Mark and ENTREPRENEUR PRESS®
`
`imprint:
`
`21.
`
`EMI also conducts seminars, workshops, and other educational programs
`
`geared towards teaching others to successfully start and operate businesses. These events
`
`have included: (i) the Entrepreneur® Masters & Mentors seminar series sponsored by
`
`Cathay Pacific and Nissan, (ii) Entrepreneur® Magazine’s GrowthCon conference
`
`5
`
`
`
`Case 6:18-cv-02067 Document 1 Filed 11/30/18 Page 6 of 31 PageID 6
`
`sponsored by Canon USA, and (iii) the Entrepreneur 360™, a conference sponsored by
`
`The Lincoln Motor Company, Canon USA, AXA Financial, and American Airlines.
`
`22.
`
`EMI operates a number of websites to further disseminate and market its
`
`content and services, including entrepreneur.com, entrepreneurnetwork.com, and various
`
`social media channels and mobile apps.
`
`23.
`
`The website at entrepreneur.com has recently averaged more than thirteen
`
`million unique users and more than thirty-three million page views per month.
`
`24.
`
`EMI has also launched apps for iPhones/ iPads and Android:
`
`25.
`
`EMI offers a variety of podcasts, including a podcast offered through
`
`entrepreneur.com, and a podcast under the ENTREPRENEUR mark on iTunes, as well
`
`as other outlets:
`
`26.
`
`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
`
`6
`
`
`
`Case 6:18-cv-02067 Document 1 Filed 11/30/18 Page 7 of 31 PageID 7
`
`business. These co-branding relationships have most recently included: (i) contests
`
`sponsored by General Motors and Canon USA; (ii) content provided and branded by
`
`CNBC, Reuters, NFL Players Association, and Business Insider; (iii) Princeton Review
`
`(ranking top entrepreneurial schools); (iv) Great Place to Work® (annual Best Small &
`
`Medium Workplaces rankings); (v) Palo Alto Software (Entrepreneur Magazine’s
`
`Business Plan Pro® software); and (vi) an online forms and documents service with
`
`SeamlessDocs.
`
`27. Most recently and in particular, EMI has: (i) partnered with Steve Case’s
`
`Rise of the Rest™, a nationwide program to promote entrepreneurship in start-up
`
`ecosystems within middle America; (ii) hosted a contest with Canon USA under the
`
`rubric Project Grow Challenge, in which businesses were awarded money based on how
`
`they proposed to grow their businesses through increased productivity and consumer
`
`awareness; and (iii) partnered with Chivas Brothers Limited as its exclusive media
`
`content partner, in connection with and support of Chivas’ annual event known as The
`
`Venture, a worldwide competition to discover, celebrate, and award with investment
`
`dollars extraordinary startup businesses creating positive social change.
`
`28.
`
`Through careful cultivation of its various products and services, EMI has
`
`developed an outstanding reputation as an innovator in the field of business start-ups and
`
`strategy and has established an extremely loyal customer following.
`
`29.
`
`EMI has received a tremendous amount of public recognition and acclaim
`
`for the products sold and services provided under its ENTREPRENEUR Mark. Through
`
`EMI’s widespread and continuous use of the ENTREPRENEUR Mark, it has acquired
`
`7
`
`
`
`Case 6:18-cv-02067 Document 1 Filed 11/30/18 Page 8 of 31 PageID 8
`
`extensive goodwill, developed a high degree of distinctiveness, and become famous, well
`
`known, and recognized as identifying goods and services that originate from EMI.
`
`30.
`
`The fame and quality of the products and services bearing the
`
`ENTREPRENEUR Mark have been widely recognized through industry awards and
`
`commendations. For example, the 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 award 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 Mark was voted the #1 “Top 10 Social Networks for Entrepreneurs” by
`
`Mashable.com. EMI has also received multiple Integrated Marketing Awards from MIN
`
`for its magazine and website, including being selected as an awards finalist in 2015.
`
`31.
`
`In addition, both ENTREPRENEUR® magazine and the entrepreneur.com
`
`website have been named to BtoB magazine’s 2010, 2011, and 2012 lists of the top 50
`
`media outlets for business-to-business advertising. EMI’s management and staff have
`
`also been recognized for their contributions to publishing and the media industry,
`
`including such awards and recognitions in 2015 as (i) Folio’s designation of an EMI staff
`
`writer as one of the “Top Women in Media,” and (ii) Fast Company’s recognition on
`
`Twitter of EMI’s Editor-in-Chief as one of the “25 Smartest Women in Media.”
`
`8
`
`
`
`Case 6:18-cv-02067 Document 1 Filed 11/30/18 Page 9 of 31 PageID 9
`
`EMI’s Intellectual Property Rights
`
`32.
`
`EMI owns, and has obtained United States federal registrations for, the
`
`ENTREPRENEUR Mark, as well as a family of related marks incorporating the term
`
`ENTREPRENEUR, as follows:
`
`TRADEMARK
`
`CLASS: GOODS/SERVICES
`
`ENTREPRENEUR
`
`16: Paper goods and printed matter; namely
`magazines, books, and published reports
`pertaining to business opportunities
`
`ENTREPRENEUR
`
`ENTREPRENEUR
`
`ENTREPRENEUR
`
`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
`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
`38: Streaming of video and digital material on
`the Internet
`
`ENTREPRENEUR
`
`9: Downloadable computer software and
`software for mobile devices for the reproduction,
`
`REG. NO.
`REG.
`DATE
`1,453,968
`August 25,
`1987
`
`2,263,883
`July 27,
`1999
`
`2,502,032
`October 30,
`2001
`
`4,260,948
`December
`18, 2012
`4,345,424
`June 4, 2013
`
`9
`
`
`
`Case 6:18-cv-02067 Document 1 Filed 11/30/18 Page 10 of 31 PageID 10
`
`REG. NO.
`REG.
`DATE
`
`5,256,907
`August 1,
`2017
`
`TRADEMARK
`
`CLASS: GOODS/SERVICES
`
`ENTREPRENEUR
`
`display, and distribution of digitized content
`
`9: Pre-recorded audio and audiovisual recordings
`of programs concerning strategies and other
`how-to information about starting and
`successfully operating businesses, successful
`business owners and other information of
`interest to business owners and members of the
`general public interested in owning and
`operating a business, in the form of
`downloadable recordings
`38: Streaming of audiovisual and multimedia
`content via the internet; transmission and
`delivery of audiovisual and multimedia content
`via the internet; video-on-demand transmission
`services; mobile media services in the nature of
`electronic transmission, wireless broadcasting
`and electronic delivery of audio, video and
`multimedia entertainment content, namely, text,
`data, images, audio, video, and audiovisual files
`provided via the internet; video broadcasting
`services over the internet or other
`communications network, namely, electronically
`transmitting video clips; internet broadcasting
`services; providing streaming of audio and video
`in the nature of programs concerning strategies
`and other how-to information about starting and
`successfully operating businesses, successful
`business owners and other information of
`interest to business owners and members of the
`general public interested in owning and
`operating a business, namely, audio, visual, and
`audiovisual matter for others via global
`computer networks; broadcasting and
`transmission of analog television, digital
`television, cable television, satellite television,
`pay television, interactive television, radio, and
`internet programs; broadcasting of internet
`programs via radio and television; broadcasting
`of programs provided over the internet;
`
`10
`
`
`
`Case 6:18-cv-02067 Document 1 Filed 11/30/18 Page 11 of 31 PageID 11
`
`TRADEMARK
`
`CLASS: GOODS/SERVICES
`
`REG. NO.
`REG.
`DATE
`
`streaming audio, video, and audiovisual content,
`data and information on the Internet,
`communications networks and wireless
`telecommunications networks; providing video
`on-demand transmission of audio, video and
`audiovisual content, data and information;
`transmission of audio, video and audiovisual
`content, data and information on the Internet,
`communications networks and wireless
`telecommunications networks.
`41: Entertainment services, namely, the
`production, presentation, distribution and
`syndication of on-going television, internet and
`non-downloadable audio and audiovisual
`recordings, all of the aforementioned concerning
`strategies and other how-to information about
`starting and successfully operating businesses,
`successful business owners and other
`information of interest to business owners and
`members of the general public interested in
`owning and operating a business
`35: Online ordering services featuring printed
`and electronically downloadable publications,
`namely, books, study guides, legal and business
`forms, and newsletters, concerning advice and
`information relating to starting and operating a
`business and other topics concerning and of
`interest to entrepreneurs, new and existing
`businesses, and members of the general public
`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: Online ordering services featuring printed
`and electronically downloadable publications,
`
`11
`
`4,612,937
`September
`30, 2014
`
`3,470,064
`July 22,
`2008
`
`ENTREPRENEUR
`BOOKSTORE
`
`ENTREPRENEUR
`PRESS
`
`
`
`Case 6:18-cv-02067 Document 1 Filed 11/30/18 Page 12 of 31 PageID 12
`
`TRADEMARK
`
`CLASS: GOODS/SERVICES
`
`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
`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: Online 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
`9: Downloadable computer software and
`software for mobile devices for the reproduction,
`display, distribution, and sharing of digitized
`content; downloadable electronic publications,
`namely, magazines in the fields of business,
`finance, sales, marketing, current events,
`lifestyle issues, and developments in science and
`technology
`16: Paper goods and printed matter; namely,
`magazines, books, booklets, and published
`reports pertaining to business opportunities
`
`12
`
`ENTREPRENEUR’S
`STARTUPS
`
`ENTREPRENEUR’S
`STARTUPS
`
`REG. NO.
`REG.
`DATE
`
`3,470,063
`July 22,
`2008
`
`4,532,577
`May 20,
`2014
`
`3,204,899
`February 6,
`2007
`
`
`
`Case 6:18-cv-02067 Document 1 Filed 11/30/18 Page 13 of 31 PageID 13
`
`REG. NO.
`REG.
`DATE
`5,052,999
`October 4,
`2016
`
`TRADEMARK
`
`CLASS: GOODS/SERVICES
`
`ENTREPRENEUR
`360
`
`16: Annual featured issue of magazine featuring
`the achievements of successful non-franchise
`and privately-owned businesses and publications
`related thereto, providing information and
`incentive to others to pursue excellence in
`business pursuits by presenting awards on an
`annual basis, and promoting award recipients
`and providing recognition by the way of awards
`to demonstrate excellence in the field of
`business.
`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 to
`customers in the field of starting and operating
`non-franchise and privately-owned businesses
`by means of a global computer network and
`other computer online service providers;
`advertising services, namely, providing
`advertising space in a magazine featuring news
`and information concerning the field of non-
`franchise and privately-owned businesses;
`providing statistics, ratings, and rankings and
`other information capable of being updated on a
`continuing basis through an interactive database
`and about businesses which are not franchises
`and are privately-owned.
`41: Recognizing the achievements of successful
`non-franchise and privately-owned businesses
`and providing incentive to others to pursue
`excellence in business pursuits by presenting a
`wards on an annual basis and promoting award
`recipients; providing recognition by the way of
`awards to demonstrate excellence in the field of
`business; arranging and conducting educational
`conferences; educational services, namely,
`developing, arranging, and conducting
`educational conferences and programs and
`providing courses of instruction in the field of
`
`13
`
`
`
`Case 6:18-cv-02067 Document 1 Filed 11/30/18 Page 14 of 31 PageID 14
`
`TRADEMARK
`
`CLASS: GOODS/SERVICES
`
`REG. NO.
`REG.
`DATE
`
`business administration and management
`
`33.
`
`The above marks are collectively referred to as the “EMI Marks.” The
`
`above registrations are collectively referred to as the “EMI Registrations.”
`
`34.
`
`EMI’s three U.S. registrations for the ENTREPRENEUR Mark (Nos.
`
`1,453,968; 2,263,883; 2,502,032) and several other of the foregoing registrations are also
`
`incontestable pursuant to 15 U.S.C. § 1065, which constitutes conclusive evidence of the
`
`registrations’ validity, as well as EMI’s entitlement to the exclusive use of the marks in
`
`commerce throughout the United States on the goods and services listed in the
`
`registrations.
`
`35.
`
`Further, 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.
`
`36.
`
`EMI, and its predecessors in interest, have been and are now engaged in the
`
`business of developing, creating, distributing, marketing, advertising, and selling a wide
`
`variety of goods and services under the EMI Marks, and in particular under the
`
`ENTREPRENEUR Mark. In fact, EMI has used the ENTREPRENEUR
`
`Mark in commerce for over forty years, having first adopted that mark for magazines at
`
`least as early as May 2, 1978, and it is famous, well known, and recognized as identifying
`
`goods and services that originate from EMI.
`
`14
`
`
`
`Case 6:18-cv-02067 Document 1 Filed 11/30/18 Page 15 of 31 PageID 15
`
`37.
`
`Through careful cultivation of its goods and services provided under the
`
`EMI Marks, and in particular the ENTREPRENEUR Mark, EMI has developed an
`
`outstanding reputation as an innovator in the field of business start-ups and strategy and
`
`has established an extremely loyal customer following. Through EMI’s widespread and
`
`continuous use of its family of EMI Marks, these marks have acquired extensive
`
`goodwill, developed a high degree of distinctiveness, and become well known and
`
`recognized as identifying goods and services that originate from EMI.
`
`38.
`
`Numerous courts have recognized the strength of the EMI Marks,
`
`including:
`
`i.
`
`The U.S. District Court for the Central District of California held that “[t]he
`
`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”; and the ENTREPRENEUR Mark “has
`
`acquired secondary meaning.” Entrepreneur Media, Inc. v. Smith, No. 98-
`
`3607, 2004 U.S. Dist. Lexis 24078, *9–10, 13 (C.D. Cal. June 23, 2004).
`
`ii.
`
`The Ninth Circuit reviewed the District Court’s findings and affirmed them
`
`on appeal. Entrepreneur Media, Inc. v. Smith, 101 Fed. App’x 212, 215
`
`(9th Cir. 2004).
`
`iii.
`
`The U.S. District Court for the Central District of California recently
`
`adopted the holding of the district court in the Smith case and once again
`
`found that “the mark ENTREPRENEUR is a strong distinctive mark,
`
`15
`
`
`
`Case 6:18-cv-02067 Document 1 Filed 11/30/18 Page 16 of 31 PageID 16
`
`deserving of significant protection” and that “EMI’s ENTREPRENEUR
`
`mark is a strong mark.” See Entrepreneur Media, Inc. v. Eric M. Dye, et
`
`al., No. 18-cv-0341-DOC (PLAx), Docket No. 22 (C.D. Cal., Sept. 11,
`
`2018).
`
`iv.
`
`The U.S. District Court for the Central District of California has further
`
`held on two separate occasions that “the ENTREPRENEUR Mark and
`
`EMI’s related marks have developed a high degree of distinctiveness and
`
`become well-known and recognized as identifying goods and services that
`
`originate from EMI.” Entrepreneur Media, Inc. v. Entrepreneurs
`
`Opportunities, LLC, No. 17-cv-01341-JVS-KES, Docket No. 20 (C.D. Cal.,
`
`Jan. 14, 2018); Entrepreneur Media, Inc. v. The Innovation Initiative, et al,
`
`No. 17-cv-2261-JVS-KES, Docket No. 23 (C.D. Cal., August 2, 2018)
`
`(finding the same).
`
`v.
`
`The U.S. District Court for the District of Colorado held that “the EMI
`
`Marks, and in particular the ENTREPRENEUR® mark, have acquired
`
`extensive goodwill, developed a high degree of distinctiveness and
`
`secondary meaning, and become well known, famous, and recognized as
`
`identifying goods and services that originate from EMI, such that they are
`
`deserving of strong protection.” Entrepreneur Media, Inc. v. Spencer et al.,
`
`No. 1:17-cv-01637-RBJ, Docket No. 20, at pg. 8 (D. Colo. Dec. 15, 2017).
`
`vi.
`
`The U.S. District Court for the District of Connecticut has recognized that
`
`“the EMI Marks, and in particular the ENTREPRENEUR Mark, have
`
`16
`
`
`
`Case 6:18-cv-02067 Document 1 Filed 11/30/18 Page 17 of 31 PageID 17
`
`acquired extensive goodwill, developed a high degree of distinctiveness and
`
`secondary meaning, and become well known and recognized as identifying
`
`goods and services that originate from EMI, such that they are deserving of
`
`strong protection.” Entrepreneur Media, Inc. v. Whitehill et al., No. 13-cv-
`
`01819(MPS), Docket No. 19 (D. Conn. Aug. 19, 2015).
`
`vii.
`
`The U.S. District Court for the District of Maryland has twice recognized
`
`the EMI Marks as valid, strong, and distinctive. Entrepreneur Media, Inc.
`
`v. JMD Entertainment Group, LLC, et al., No. RDB-12-1970, Docket No.
`
`30 (D. Md. July 23, 2013); id., Docket No. 47 (Apr. 7, 2014).
`
`viii.
`
`Both a Magistrate Judge and a District Court Judge in the Eastern District
`
`of Virginia found the ENTREPRENEUR Mark to be distinctive.
`
`Entrepreneur Media, Inc. v. seattleentrepreneur.com, No. 11-00409,
`
`Docket No. 22 (E.D. Va. Dec. 6, 2011).
`
`Defendants’ Unauthorized Use of EMI’s Marks
`
`39.
`
`Defendants own the jamespfriel.com domain name and operate a website
`
`there using the AUTOPILOT ENTREPRENEUR mark.
`
`40.
`
`Under the AUTOPILOT ENTREPRENEUR mark, Defendants produce
`
`content, such as educational videos, articles, and blog posts, for successful entrepreneurs
`
`and small business owners who want to be able to generate income without significant
`
`time commitment.
`
`41.
`
`Defendants advertise their services under the AUTOPILOT
`
`ENTREPRENEUR mark on the social media platform Facebook (the “Social Media
`
`17
`
`
`
`Case 6:18-cv-02067 Document 1 Filed 11/30/18 Page 18 of 31 PageID 18
`
`Account”): https://www.facebook.com/groups/autopilotentrepreneur/.
`
`42.
`
`Defendants also filed an Application (Serial No. 87/569534) with the
`
`United States Patent and Trademark Office (“USPTO”) to register the AUTOPILOT
`
`ENTREPRENEUR mark for use with the following services: “Business management
`
`consulting and advisory services” in Class 35 (the “Infringing Entrepreneur
`
`Application”). EMI opposed this application on May 9, 2018 (see Opposition No.
`
`91241072), and this opposition remains pending.
`
`43.
`
`In light of EMI’s renown, online presence, and long history of providing
`
`goods and services under the ENTREPRENEUR Mark, EMI is concerned that consumers
`
`will likely be confused and mistakenly believe that Defendants and their goods and/or
`
`services are endorsed, approved, or sponsored by, or affiliated, connected, or associated
`
`with, EMI.
`
`44.
`
`Defendants will thus reap the benefits of EMI’s reputation and goodwill
`
`based on this consumer confusion, to EMI’s detriment.
`
`45.
`
`EMI has attempted to reconcile its concerns with Defendants, including by
`
`opposing Defendants’ Infringing Entrepreneur Application based on a likelihood of
`
`confusion with EMI’s ENTREPRENEUR Mark, as well as subsequent negotiations
`
`following the opposition. Defendants, however, have refused to meaningfully engage in
`
`negotiations regarding the Infringing Entrepreneur Mark and Infringing Entrepreneur
`
`Application, and continue to use the Infringing Entrepreneur Mark.
`
`46.
`
`Given Defendants’ intransigence, and their continuing use of the mark,
`
`EMI has brought this suit to fully litigate and resolve the trademark issues between the
`
`18
`
`
`
`Case 6:18-cv-02067 Document 1 Filed 11/30/18 Page 19 of 31 PageID 19
`
`parties.
`
`EMI Is Harmed By Defendants’ Continuing
`Infringement & Unlawful Conduct
`
`47.
`
`Defendants’ continued use of the confusingly similar Infringing
`
`Entrepreneur Mark in commerce violates EMI’s valuable intellectual property rights in
`
`the EMI Marks and EMI Registrations, and Defendants’ knowing, intentional, willful,
`
`and malicious use of this mark is damaging to EMI and EMI’s property.
`
`48.
`
`Defendants have used the Infringing Entrepreneur Mark to unfairly usurp
`
`and capitalize on the value and goodwill of the EMI Marks and EMI Registrations,
`
`particularly the ENTREPRENEUR Mark. Defendants are aware of EMI’s strong
`
`trademark rights and reputation in the marketplace, but nevertheless us
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