`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Cancellation No. 92/043,579
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`KURT M. MARKVA,
`
`Petitioner,
`
`V.
`
`ENTREPRENEUR MEDIA, INC.,
`
`Registrant.
`
`PETITIONER’S OPPOSITION TO
`
`ENTREPRENEUR MEDIA’S MOTION TO DISMISS
`
`Pursuant 37 CFR 2.127(e), Petitioner, Kurt M. Markva (“Markva”), hereby responds to
`
`oppose Registrant’s motion to dismiss under Fed. R. Civ. P. 12(b) that is to be treated as a motion for
`
`summary judgment, and based on the following, Markva requests the Board to deny Registrant’s
`
`motion for summary judgment and to allow the proceedings to continue to completion.
`
`Introduction
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`In its motion to dismiss, Registrant alleges that the Petitioner “is associated with [Scott]
`
`Smith [without proof], quickly started a new ‘business’ and crafted a copycat trademark application
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`in Class 35” as if this petition was prepared on behalf of Scott Smith. Registrant alleges that
`
`Petitioner is an intermeddler and recounts Smith’s litigation with Registrant in the US. District
`
`Court for the Central District of California. Registrant urges the Board to find this court decision as
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`res judicata against Petitioner in this proceeding. That since Smith lost his litigation with Registrant,
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`no one else in America can challenge the Registrant’s genericness/descriptiveness of
`
`ENTREPRENEUR is ludicrous.
`
`As shown below, Petitioner became a self-employed entrepreneur in February 2004 after
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`I”
`
`10-20-2004
`U 5 Patent & wow/TM Ma'l Rep! Ct #79
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`

`

`Petitioner’s Opposition to Motion to Dismiss
`Cancellation No. 92/043,579
`
`Page 2
`
`being employed on Capitol Hill in Washington, DC. for 11 and half years, and working for over a
`
`year with a well-known public relations firm. Now Petitioner is sole principal of a Virginia LLC
`
`handling government resources and intellectual property matters on behalf of his entrepreneurial
`
`clients. Petitioner is in a position to have a right to use the generic/descriptive word “entrepreneur”
`
`with respect to his business, and to file an intent-to-use application for registration of his proposed
`
`trademark ENTREPRENEURGR-IP.
`
`Opposition to Registrant’s Motion to Dismiss
`
`In determining whether to grant a motion to dismiss under Federal Rule 12(b)(6), the Board
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`primarily considers the allegations in the petition to cancel, matters of public record, orders, items
`
`appearing in the record of the case, and exhibits attached to the petition. Hal Roach Studios v.
`
`Richard Feiner & C0., 896 F.2d 1542, 1555 n. 19 (9th Cir. 1990); Emrich v. Touche Ross & Co., 846
`
`F.2d 1190, 1198 (9th Cir. 1987); Mack v. South Bay Beer Distributors, Inc, 798 F.2d 1279, 1282
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`(9th Cir. 1986). The petition should be construed in the light most favorable to Petitioner, and its
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`allegations are taken as true. Scheuer, 416 US. at 237.
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`For Registrant to prevail on a motion to dismiss under Federal Rule of Civil Procedure
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`12(b)(6), it must appear beyond doubt that Petitioner can prove no set of facts in support of his claim
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`which would entitle him to relief. Conley v. Gibson, 355 US. 41, 45—46 (1957); Cervantes v. City of
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`San Diego, 5 F.3d 1273, 1274 (9th Cir. 1993). The purpose of a motion under Federal Rule 12(b)(6)
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`is to test the formal sufficiency of the statement of the claim for relief in the petition to cancel.
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`Rutman Wine Co. v. E. & J. Gallo Winery, 829 F.2d 729, 738 (9th Cir. 1987). It is not a procedure
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`for resolving a contest about the facts or the merits of the case. In reviewing the sufficiency of the
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`

`

`Petitioner’s Opposition to Motion to Dismiss
`Cancellation No. 92/043,579
`
`Page 3
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`petition to cancel, the issue is not whether Petitioner will ultimately prevail but whether Petitioner is
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`entitled to offer evidence to support the claims asserted. Scheuer v. Rhodes, 416 US. 232, 236, 94
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`S.Ct. 1683, 40 L.Ed.2d 90 (1974).
`
`In determining whether or not a litigant before the Board has stated a claim upon which relief
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`can be granted, the facts alleged in the petition are assumed to be true. Stanspec Co. v. American
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`Chain & Cable Co. , 531 F.2d 563, 566, 189 USPQ 420, 422 (CCPA 1976) (petition for cancellation
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`of a registered mark). Dismissal is appropriate “if it is clear that no relief could be granted under any
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`set of facts that could be proved consistent with the allegations.” Abbott Labs. v. Brennan , 952 F.2d
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`1346, 1353, 21 USPQ2d 1192, 1198 (Fed. Cir. 1991) (citations and internal quotations omitted).
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`Requirements for Petition to Cancel
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`Section 14 of the Lanham Act, which provides for cancellation to the registration of a mark,
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`provides in relevant part as follows:
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`. be
`A petition to cancel registration of a mark, stating the grounds relied upon, may. .
`filed .
`.
`. by any person who believes that he is or will be damaged by the registration of
`a mark on the principal register .
`.
`.
`.
`15 U.S.C. § 1064 (1994)
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`Section 14 has been interpreted as requiring a cancellation petitioner “to show (1) that it
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`possesses standing to challenge the continued presence on the register of the subject registration and
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`(2) that there is a valid ground why the registrant is not entitled under law to maintain the
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`registration.” Lipton Indus, Inc. v. Ralston Purina C0. , 670 F.2d 1024, 1026, 213 USPQ 185, 187
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`(CCPA 1982). The standing requirement is based on the statutory requirement that a cancellation
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`petitioner must believe that “he is or will be damaged by the registration” and cases defining the
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`scope of this language. See id. at 1028-29, 213 USPQ at 189; cf. Jewelers Vigilance Comm. , 823
`
`
`
`

`

`
`
`Petitioner’s Opposition to Motion to Dismiss
`Cancellation No. 92/043,579
`
`Page 4
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`F.2d at 492, 2 USPQ2d at 2023 (noting that “an opposer’s right-or standing-to bring an opposition
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`proceeding flows from” Section 13's requirement that such a party believes that he would be
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`damaged by the registration). An opposer’s allegation of damage to his business was sufficient to
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`establish standing. Young v. AGE, 47 USPQ2d 1752 (Fed. Cir. 1998).
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`The “valid ground” that must be alleged and ultimately proved by a cancellation petitioner
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`must be a “_s_tatu_tory ground which negates the appellant’s right to the subject registration." Lipton ,
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`670 F.2d at 1030, 213 USPQ at 190 (emphasis added). Although cancellation is most often premised
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`on the grounds listed in Section 2 of the Lanham Act, see 15 U.S.C. § 1052 (1994), other grounds
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`which negate entitlement to maintain a registration also exist in the Lanham Act. See, e.g. , Lipton ,
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`670 F.2d at 1031, 213 USPQ at 191 (entertaining a cancellation petition premised on when the
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`registered mark becomes the generic name for the goods or services under Section 14(3), 15 U.S.C.
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`§ 1064(3) (1994)).
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`Descriptiveness and Genericness Pleaded
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`Petitioner pleads that Registrant’s mark ENTREPRENEUR should be cancelled on the valid
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`ground that it is descriptive and generic when applied to it advertising and business services over the
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`Internet to the same target group of entrepreneurs for both parties. Petitioner also pleads that
`
`Registrant did not prove that its mark had acquired distinctiveness despite its descriptivcness; that
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`Petitioner has the equal right to use “entrepreneur” in his mark because it is descriptive/generic as
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`applied to his services; and that he will be irreparany damaged in his business and goodwill (Petition
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`to Cancel, paras. 3, 20-23). The petition is replete with pleaded evidence that shows “entrepreneur”
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`to be descriptive or generic of the entrepreneur target group for the parties’ services.
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`

`

`Petitioner’s Opposition to Motion to Dismiss
`Cancellation No. 92/043,579
`
`Page 5
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`Despite Petitioner’s pleading of descriptiveness and genericness of its single word mark,
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`Registrant bases its motion on the alleged failure of Petitioner to state a claim upon which relief can
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`be granted, and states that “Markva lacks standing to bring this cancellation petition because he does
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`not plead a real commercial interest in his own mark or a reasonable basis for his belief that he
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`would be damaged by the existence of EMI’s” registrations. Registrant states that “Markva’s
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`petition fails to state sufficient ground for canceling EMI’s mark.”
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`The treatise, McCarthy on Trademarks, Section 20.50 states:
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`For a petitioner who alleges that the registered term is descriptive, “damage” is presumed
`or inferred if petitioner is one who has a sufficient interest in using the descriptive term
`in its business. To obtain standing to cancel on the ground that the registered mark is
`descriptive or generic, petitioner must plead and prove that the registration is inconsistent
`with petitioner’s equal right to use the term on similar goods as a descriptive or generic
`designation. However, it is not necessary that petitioner actually use the term in order
`to challenge on the basis of descriptiveness or genericness. All that is necessary is that
`petitioner be in a position to have a right to use that term. (Case citations omitted.)
`
`The “Real Interest” Test
`
`An opposer is required to show that he has a “real interest” in the outcome of a proceeding in
`
`order to have standing. See, e.g., Universal Oil Prod. Co. v. Rexall Drug & Chem. Co., 463 F.2d
`
`1122, 1123, 174 USPQ 458, 459 (CCPA 1972) (“Standing, within the meaning of § 13, is found
`
`when the opposer establishes a real interest in the proceeding.” (internal citation omitted)); Tanners’
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`Council ofAm., Inc. v. Gary Indus. Inc., 440 F.2d 1404, 1406, 169 USPQ 608, 609 (CCPA 1971)
`
`(“[A]n opposition may be filed by anyone having a real interest”) This “real interest” requirement
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`stems from a policy of preventing ‘mere intermeddlers’ who do not raise a real controversy from
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`bringing oppositions or cancellation proceedings in the PTO. See Lipton Indus, Inc. v. Ralston
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`Purina C0,, 670 F.2d 1024, 1028, 213 USPQ 185, 189 (CCPA 1982); see also Tanners' Council, 440
`
`
`
`

`

`
`
`Petitioner’s Opposition to Motion to Dismiss
`Cancellation No. 92/043,579
`
`Page 6
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`F.2d at 1406, 169 USPQ at 609; Singer Mfg. Co. v. Birginal—Bigsby Corp., 319 F.2d 273, 276-77,
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`138 USPQ 63, 66 (CCPA 1963) (An opposer who was not an intermeddler was permitted to oppose
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`a mark.)
`
`InRichie v. Simpson, 170 F.3d 1092, 1095, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999) the
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`Court states:
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`In no case has this court ever held that one must have a specific commercial interest, not
`shared by the general public, in order to have standing as an opposer. Nor have we ever
`held that being a member of a group with many members is itselfdisqualifying. The crux
`of the matter is not how many others share one's belief that one will be damaged by the
`registration, but whether that belief is reasonable and reflects a real interest in the issue.
`See 15 U.S.C. § 1063.
`
`Petitioner’s Real Personal Interest
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`Regarding Petitioner’s real personal interest in using the descriptive term in his business,
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`Markva pleads that he “recently began a consulting and lobbying business that requires certain
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`business and advertising services to be conducted over the world-wide Web” (Petition to Cancel,
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`para. 2).
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`In his declaration filed contemporaneously herewith, Petitioner proves his background for
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`providing such consulting and lobbying business services including his work as Chief of Staff for a
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`US. Congressman; his employment as Senior Vice President for Government Affairs for a large,
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`well-known public relations firm; and the organizing and management of his own Virginia business
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`entity after becoming a self-employed entrepreneur (Kurt M. Markva Decl. paras. 3-15).
`
`In 1991, he began to serve on Capitol Hill in Washington DC. for more than 11 and a half
`
`years under two different Members of Congress. For the 107th Congress, he served as Chief of Staff
`
`to US. Representative Donald A. Manzullo, who is Chairman of the US. House Committee on
`
`Small Business, Chairman of the U.S.-China Inter-Parliamentary Exchange, and Co—Chairman of the
`
`

`

`—
`
`Petitioner’s Opposition to Motion to Dismiss
`Cancellation No. 92/043,579
`
`Page 7
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`Congressional Manufacturing Caucus (Petitioner Exhibit BB).
`
`He spearheaded a variety of issues both for Chairman Manzullo’s personal and committee
`
`offices, making numerous contacts throughout Congress and in the lobbying world. His
`
`congressional focus included appropriations, agriculture, energy, environment, product liability,
`
`constitutional questions, immigration, intellectual property, telecommunications, technology,
`
`transportation and infrastructure. He worked closely on matters of personal importance to Chairman
`
`Manzullo including issues that were and continue to be of specific concern to his constituency such
`
`as job creation in the congressman’s 16th Congressional District in northern Illinois.
`
`After a Brazilian trade trip with the Brazil -U.S. Business Council, Markva kept in contact
`
`with key business representatives to encourage businesses to move to, or do business in the 16th
`
`Congressional District. He managed a variety of issues where several resulted directly in changes to
`
`federal law including the Clean Air Act, the Public Safety Officers’ Benefit Act, and the
`
`Telecommunications Act of 1996, among others. Markva was Chairman Manzullo’s top fund raiser
`
`- raising well over a $1 million in the 107th Congress for the member’s individual campaign, the
`
`National Republican Congressional Committee, and the Illinois Republican Party. He helped
`
`procure funds in the annual appropriations process handling and securing funds for wastewater
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`treatment facilities, airports, water projects, a federal courthouse, highways and bypasses,
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`environmental studies, and other infrastructure needs. Finally, Markva played a pivotal role in 1994
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`in obtaining the necessary commitments to open a Drug Enforcement Administration field office in
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`Rockford, Illinois within the 16th Congressional District.
`
`In December 2002, Markva left his public sector role and worked in a similar capacity as
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`

`

`—
`
`Petitioner’s Opposition to Motion to Dismiss
`Cancellation No. 92/043,579
`
`Page 8
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`Senior Vice President of Government Affairs for Golin/Harris International, Inc., a large public
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`relations organization, with whom he had an employment agreement with a non-competition clause
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`(Petitioner Exhibit CC). For the year 2003, he successfully secured federal appropriations for his
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`clients in a variety of issue areas including law enforcement, economic development, environment,
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`and education. Aside from his expertise in those federal appropriation areas, he managed
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`government affairs matters for a spectrum of small businessmen and entrepreneurs with interests in
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`the following policy arenas: homeland security, trade, financial services, agriculture, small business,
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`Brownfield redevelopment, community development, and environmental remediation, among others
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`(Petitioner Exhibit DD).
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`On February 10, 2004, he resigned as Senior Vice President of Golin/Harris International,
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`Inc. (Petitioner Exhibit EE). He first interviewed with another public relations firm, but afier much
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`thought, he decided to become an entrepreneur and form his own consulting and lobbying business.
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`He is now self-employed and the sole principal in Government Resources Group, LLC organized in
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`the Commonwealth of Virginia on March 17, 2004 (Petitioner Exhibit FF). According to the non-
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`competition clause, he was precluded from engaging in any “Competitive Activity” until August 10,
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`2004 (Petitioner Exhibit CC).
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`Markva’s expertise is congressional outreach, federal marketing, public relations, community
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`outreach, and providing general strategic advice for small business and entrepreneurial clients
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`needing to navigate through the legislative and regulatory process in Washington, DC. on an
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`assortment of federal governmental issues. As principal of Government Resources Group, LLC, he
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`lobbies key congressional members of Congress and committees in both the US. House and US.
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`

`

`Petitioner’s Opposition to Motion to Dismiss
`Cancellation No. 92/043,579
`
`Page 9
`
`Senate, and in many departments and agencies of the Executive Branch on behalf of small
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`businessmen and entrepreneurs. In the online Office of Public Records for the US. Senate for 2004,
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`he is registered to lobby for ChildSafeNet, Inc. of Fairfax Station, Virginia and MC], Inc. of
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`Rockford, Illinois (Petitioner Exhibit GG).
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`Petitioner consults with entrepreneurs to provide general strategic advice concerning federal
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`government financing and marketing of their goods and services, and advises them concerning
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`intellectual property. For example, John P. Dal Santo is (a) inventor of the pupilometer, which is the
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`subject of US. Patent 6,022,109, and (b) an entrepreneurial principal in MCJ, Inc. identified in the
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`four (4) web pages from the website www.mcjeyecheck. com. (Petitioner Exhibit HH).
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`In the future, Petitioner will continue to promote the goods and services of entrepreneurs, and
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`proposes to provide business information including intellectual property information for the use of
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`entrepreneurs who are starting and operating small businesses by way of the world-wide Web. And
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`he proposes to perform web advertising services including an electronic newsletter for entrepreneurs
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`to inform them how Capitol Hill operates to provide information and resources in developing their
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`entrepreneurial ideas, products, and services, and to provide active links to the web sites of others
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`who have information for entrepreneurial activities.
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`Finally, Petitioner expects to use ENTREPRENEURGR-IP as a service mark for offering the
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`entrepreneurial field of entrepreneurs (for which no other term than “entrepreneur” is available to
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`address them) and to identify him and/or Government Resources Group, LLC as the source for such
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`proposed advertising and business services as set forth in his intent—to-use application for registration
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`of his proposed mark (Kurt M. Markva Decl. paras. 16-18).
`
`

`

`—
`
`
`
`
`
`Petitioner’s Opposition to Motion to Dismiss
`Cancellation No. 92/043,579
`
`Page 10
`
`Registrant argues that “Markva was not engaged in the field of offering business and
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`advertising services, or any related goods or services whatsoever, for any period of time prior to the
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`filing of his copycat intent—to-use application” (emphasis added). Petitioner shows that he became a
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`sole practitioner shortly after February 10, 2004, the date of his resignation from Golin/Harris. That’s
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`five (5) months of getting a new business up and running before filing his petition. Yet, the length of
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`time he has been in business is irrelevant. For he’s an entrepreneur who is entitled to the use of the
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`generic term “entrepreneur” as it relates to his legitimate consulting business for which he proposes
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`use of his mark in offering his business expertise to the target group of entrepreneurs.
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`Petitioner has standing and a valid ground to file this petition to cancel Registrant’s single
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`word mark ENTREPRENEUR.
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`Res Judicata
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`Registrant raises the issue of res judicata as a bar to Petitioner’s right to use the generic word
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`“entrepreneur,” and his right to cancel its registrations for the mark ENTREPRENEUR based on
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`genericness and/or descriptiveness.
`
`In US. District Court, Central District of California opinion of
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`Entrepreneur Media, Inc. v. Scott Smith attached to Registrant’s motion to dismiss, the Findings of
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`Fact and the Conclusions of Law show that the issue of genericness was neither found nor
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`concluded. Dictum by the judge in a footnote with no consideration of evidence of genericness is
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`not binding on the Board in this proceeding.
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`In any event, the term “res judicata” is a generic term for merger and bar or “claim
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`preclusion” and collateral estoppel or “issue preclusion.” See McCarthy on Trademarks, § 32:79.
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`Under the rule of issue preclusion, once a factual issue has been conclusively determined in a
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`

`

`Petitioner’s Opposition to Motion to Dismiss
`Cancellation No. 92/043,579
`
`Page 11
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`previous lawsuit, it is settled between the parties to the suit in all later suits. Petitioner was not a
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`party to the lawsuit in question. So even if the factual issue of genericness were determined against
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`Scott Smith, it is elemental that a person cannot be estopped from litigating a fact determined in a
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`prior proceeding where that person was not a party, or in privity with a party, to the prior
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`determination. Parklane Hosiery Co. v. Shore, 439 US. 322, n.7, 58 L.Ed.2d 552, 99 S.Ct. 645
`
`(1979); Gunter v. Howard D. Johnson C0,, 161 U.S.P.Q. 233, 1969 WL 9036 (T.T.A.B. 1969).
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`Petitioner was not a party to the “protracted litigation brought by Scott Smith” in 1998. For
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`Petitioner was a government employee working for a US. Congressman. He was no entrepreneur as
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`he is now, and did not have an ongoing business directed to entrepreneurs as he now does.
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`Privity may exist if a third party to the previous litigation controlled the presentation in the
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`prior litigation. Marshak v. Treadwell, 240 F.3d 184, 57 U.S.P.Q.2d 1764 (3d Cir. 2001) (defendant
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`did not present evidence that the third party exercised any control over the prior litigation and thus
`
`collateral estoppel could not bar the third party). Far Out Productions, Inc. v. OSkar, 247 F.3d 986,
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`58 U.S.P.Q.2d 1702 (9th Cir. 2001) (the previous judgment did not involve the same parties “and
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`therefore should not collaterally estop the [present party] from relitigating whether they legitimately
`
`own the trademark”).
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`Registrant has not proven that privity exists with respect to Petitioner who worked on Capitol
`
`Hill when Registrant’s suit was filed against Smith. There is no evidence on the record that
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`Petitioner controlled or had any control whatsoever over the presentation of Smith’s case or evidence
`
`in the prior litigation. Therefore, what happened in the Entrepreneur Media, Inc. v. Smith decision
`
`does not apply to this cancellation proceeding.
`
`

`

`
`
`Petitioner’s Opposition to Motion to Dismiss
`Cancellation No. 92/043,579
`
`Summary and Conclusions
`
`Page 12
`
`Petitioner has a personal interest in using the descriptive/generic term in his business, and is
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`in a position to have a right to use the term “entrepreneur.” Registrant’s single word mark
`
`ENTREPRENEUR is inconsistent with petitioner’s equal right to use the term on similar goods and
`
`services as a descriptive or generic designation. Petitioner has a consulting and lobbying business of
`
`securing federal appropriations for entrepreneurs and proposes use of ENTREPRENEURGR-IP to
`
`inform his target group of entrepreneurs of his government resource and intellectual property
`
`information services. He deems the word “entrepreneur” to be generic and the only word available
`
`to refer to his target group of entrepreneurs. Therefore, Petitioner has standing, and a valid ground
`
`for cancellation of Registrant’s single word mark. And EMI’s victory over Scott Smith does not
`
`preclude Petitioner in obtaining his right to use the generic term.
`
`For the foregoing reasons and the reported experience of others in defending against EMI’s
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`aggressive enforcement of its registered marks (Petitioner Exhibit II), Markva respectfully requests
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`that Registrant’s motion to dismiss be denied, and that this cancellation proceeding be allowed to
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`resume for a determination of the issues of descriptiveness and/or genericness.
`
`A second petition to cancel Registration 1,453,986, which EMI introduced in its motion to
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`dismiss, is filed contemporaneously herewith, with a motion to consolidate the two proceedings. For
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`the identical issue of genericness is involved.
`
`
`
`Attorney for Petitioner
`
`8322-A Traford Lane
`
`Springfield, Virginia 22152
`(703) 644-5000
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`KURT M. MARKVA,
`
`Petitioner,
`
`V.
`
`ENTREPRENEUR MEDIA, INC.,
`
`Registrant.
`
`VVVVVVVVV
`
`Cancellation No. 92043579
`
`DECLARATION OF KURT M. MARKVA IN OPPOSITION TO
`
`ENTREPRENEUR MEDIA, INC.’S MOTION TO DISMISS
`
`Kurt M. Markva hereby declares:
`
`1.
`
`He makes this declaration based on his own knowledge, and on information and belief, and if
`
`called as a witness, he could and would competently testify thereto.
`
`2.
`
`He is the petitioner in this cancellation proceeding and the applicant in the intent-to-use
`
`Application Serial No. 76/603,630, filed July 23, 2004, for registration of a service mark
`
`ENTREPRENEURGR-IP (Petitioner Exhibit AA).
`
`3.
`
`He worked in Washington DC. beginning on Capitol Hill in 1991 for more than 11 and a
`
`half years under two different Members of Congress, and served in almost every staffing
`
`capacity through 2002. For the 107th Congress, he served as Chief of Staff to US.
`
`Representative Donald A. Manzullo, who is Chairman of the US. House Committee on
`
`Small Business, Chairman of the U.S.-China Inter—Parliamentary Exchange, and Co-
`
`Chairman of the Congressional Manufacturing Caucus (Petitioner Exhibit BB).
`
`4.
`
`He spearheaded a variety of issues both for Chairman Manzullo’s personal and committee
`
`offices, making numerous contacts throughout Congress and in the lobbying world. His
`
`congressional focus included appropriations, agriculture, energy, environment, product
`
`

`

`
`
`Kurt M. Markva Declaration
`
`Page 2
`
`liability, constitutional questions, immigration, intellectual property, telecommunications,
`
`technology, transportation and infrastructure.
`
`He worked closely on matters of personal importance to Chairman Manzullo including issues
`
`that were and continue to be of specific concern to his constituency such as job creation in
`
`the 16th Congressional District in northern Illinois that the congressman represents. After a
`
`Brazilian trade trip with the Brazil -U.S. Business Council, he kept in contact with key
`
`business representatives to encourage businesses to move to, or do business in the 16th
`
`Congressional District.
`
`He managed a variety of issues where several resulted directly in changes to federal law
`
`including the Clean Air Act, the Public Safety Officers’ Benefit Act, and the
`
`Telecommunications Act of 1996, among others.
`
`He was Chairman Manzullo’s top fund raiser - raising well over a $1 million in the 107th
`
`Congress for the member’s individual campaign, the National Republican Congressional
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`Committee, and the Illinois Republican Party.
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`He helped procure funds in the annual appropriations process handling and securing funds for
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`wastewater treatment facilities, airports, water projects, a federal courthouse, highways and
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`bypasses, environmental studies, and other infrastructure needs.
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`He played a pivotal role in 1994 in obtaining the necessary commitments to open a Drug
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`Enforcement Administration field office in Rockford, Illinois within the 16m Congressional
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`District.
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`10.
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`In December 2002, he left his public sector role and worked in a similar capacity as Senior
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`Vice President of Government Affairs for Golin/Harris International, Inc., a large public
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`relations organization, with whom he had an employment agreement with a non-competition
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`Kurt M. Markva Declaration
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`clause (Petitioner Exhibit CC).
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`Page 3
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`ll.
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`For the year 2003, he successfully secured for his clients federal appropriations in a variety of
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`issue areas including law enforcement, economic development, environment, and education.
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`Aside from his expertise in those federal appropriation areas, he managed government affairs
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`matters for a spectrum of small businessmen and entrepreneurs with interests in the following
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`policy arenas: homeland security, trade, financial services, agriculture, small business,
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`Brownfield redevelopment, community development, and environmental remediation, among
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`others (Petitioner Exhibit DD).
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`12.
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`On February 10, 2004, he resigned as Senior Vice President of Golin/Harris International,
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`Inc. (Petitioner Exhibit EE). He first interviewed with another public relations firm, but after
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`much thought, he decided to become an entrepreneur and form his own consulting and
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`lobbying business. He is now self-employed and the sole principal in Government Resources
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`Group, LLC organized in the Commonwealth of Virginia on March 17, 2004 (Petitioner
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`Exhibit FF).
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`13.
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`His expertise is congressional outreach, federal marketing, public relations, community
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`outreach, and providing general strategic advice for small business and entrepreneurial clients
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`needing to navigate through the legislative and regulatory process in Washington, DC. on an
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`assortment of federal governmental issues.
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`14.
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`As the principal of Government Resources Group, LLC, he lobbies key congressional
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`members of Congress and committees in both the U.S. House and U.S. Senate, and in many
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`departments and agencies of the Executive Branch on behalf of small businessmen and
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`entrepreneurs (Petitioner Exhibit GG).
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`15.
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`He consults with entrepreneurs to provide general strategic advice concerning federal
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`—
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`Kurt M. Markva Declaration
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`Page 4
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`government financing and marketing of their goods and services, and advises them
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`concerning intellectual property (Petitioner Exhibit HH).
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`16.
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`He proposes to promote the goods and services of entrepreneurs, and provide business
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`information including intellectual property information for the use of entrepreneurs who are
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`starting and operating small businesses by way of the world-wide Web.
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`17.
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`He proposes to perform web advertising services including an electronic newsletter for
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`entrepreneurs to inform them how Capitol Hill operates to provide information and resources
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`in developing their entrepreneurial ideas, products, and services, and to provide active links
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`to the web sites of others who have information for entrepreneurial activities.
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`18.
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`He proposes to use the mark ENTREPRENEURGR-IP for offering the entrepreneurial field
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`of entrepreneurs (for which no other term than “entrepreneur” is available to address them)
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`and to identify him and/or Government Resources Group, LLC as the source for such
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`proposed advertising and business services as set forth in his intent-to-use application for
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`registration of his proposed mark.
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`19.
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`On information and belief, Entrepreneur Media Inc. (“EMI”) owns U.S. Registrations
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`1,453,968 and 2,263,883 for the single word mark ENTREPRENEUR as applied to printed
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`goods, and advertising and business services over the Internet, and he fears what will happen
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`to him if he goes ahead with his proposed use of his mark based on the reported experience of
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`others in defending themselves against EMI’s aggressive enforcement of its registered marks
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`(Petitioner Exhibit II).
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`20.
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`On information and belief, the mark ENTREPRENEUR is merely descriptive and/or generic
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`in that it identifies a group (entrepreneurs) to whom EMI directs its goods and services over
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`the Internet, and that the registered marks are inconsistent with his equal right to use the
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`Kurt M. Markva Declaration
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`Page 5
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`generic word “entrepreneur” in connection with the same or similar goods and services.
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`21.
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`On information and belief, it is not necessary that he actually use the term “entrepreneur” to
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`challenge EMI’s registered marks on the basis of descriptiveness or genericness, but all that
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`is necessary is that he be in a position to have a right to use of that term.
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`22.
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`On information and belief, the intended users of EMI’s printed goods, and advertising and
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`business services over the Internet are entrepreneurs, but that EMI’s registered marks prohibit
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`his own entrepreneurial efforts to use any form of the descriptive/generic word
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`“entrepreneur” as a part of his proposed mark as an identification of source.
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`23.
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`On information and belief, a way that he may use any form of the word “entrepreneur” as an
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`identity of source is for him to petition the Trademark and Appeal Board to cancel EMI’s
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`registered marks ENTREPRENEUR because of their descriptiveness and/or genericness of
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`the intended users of its goods and services.
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`I declare that all statements made herein of my own knowledge and belief are true; that all
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`statements made on information and belief are believed to be true; and further that these statements
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`were made with the knowledge that willful false statements and the like so made are punishable by
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`fine or imprisonment, or both, under Section 1001 of Title 18 of the United States Code. I declare
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`further under God and the penalty of perjury under the laws of the U ited States that the foregoing is
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`true and correct and that this Declaration was executed on
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`at Broad Run,
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`Virginia.
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`. W
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`Kurt M. Markva
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`
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`KURT M. MARKVA,
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`Petitioner,
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`V.
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`ENTREPRENEUR MEDIA, INC