Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA510845
`ESTTA Tracking number:
`12/13/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92056538
`Defendant
`Cook Collection Attorneys , P.L.C.
`
`COOK COLLECTION ATTORNEYS PLC
`165 FELL STREET
`SAN FRANCISCO, CA 94102
`UNITED STATES
`Motion to Dismiss 2.132
`David J. Cook
`Cook@squeezebloodfromturnip.com
`/s/ David J. Cook
`12/13/2012
`20121213153432.pdf ( 17 pages )(565020 bytes )
`20121213150315.pdf ( 17 pages )(704888 bytes )
`20121213150637.pdf ( 10 pages )(346333 bytes )
`20121213150748.pdf ( 13 pages )(961650 bytes )
`20121213151140.pdf ( 29 pages )(1683185 bytes )
`20121213151339.pdf ( 30 pages )(903205 bytes )
`20121213151545.pdf ( 27 pages )(798546 bytes )
`20121213151732.pdf ( 29 pages )(798440 bytes )
`
`
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA510845
`ESTTA Tracking number:
`12/13/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92056538
`Defendant
`Cook Collection Attorneys , P.L.C.
`
`COOK COLLECTION ATTORNEYS PLC
`165 FELL STREET
`SAN FRANCISCO, CA 94102
`UNITED STATES
`Motion to Dismiss 2.132
`David J. Cook
`Cook@squeezebloodfromturnip.com
`/s/ David J. Cook
`12/13/2012
`20121213153432.pdf ( 17 pages )(565020 bytes )
`20121213150315.pdf ( 17 pages )(704888 bytes )
`20121213150637.pdf ( 10 pages )(346333 bytes )
`20121213150748.pdf ( 13 pages )(961650 bytes )
`20121213151140.pdf ( 29 pages )(1683185 bytes )
`20121213151339.pdf ( 30 pages )(903205 bytes )
`20121213151545.pdf ( 27 pages )(798546 bytes )
`20121213151732.pdf ( 29 pages )(798440 bytes )
`
`
`
`Id
`
`'4.)
`
`Us
`
`6
`
`9
`
`ll)
`
`16
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`SCOTT R. SMITH. an individual.
`
`Petitioner.
`
`VS.
`
`COOK COLLECTION ATTORNEYS.
`P.L.C.. a California corporation.
`
`Respondent.
`
`\—/\¢/%/%\_/é\/§/&%$/
`
`Cancellation No. 92056538
`
`Registration No. 3257604
`
`DECL;~\R~\TlOi\’ OF DAVID J. COOK, ESQ. IN SUPPORT OF
`MOTION TO DISMISS PETITION TO CANCEL
`
`1, DAVID J . COOK. hereby declare and state as follows:
`
`I.
`
`I am the Respondent in the above—entitled action. am duly authorized to practice before
`
`all courts in the State ofCalifomia. and am familiar with the facts and circumstances in this action.
`
`2. EMI filed its Complaint in the United States District Court. Central District of
`
`California, entitled EntrepreneurMedia, Inc. v. Scott S/nitli. Case No. CV-98-3607 FMC (Ctx ),
`
`:1
`
`true and correct copy of that Complaint is attached hereto marked Exhibit “A. "
`
`3. The Infringement Action went to trial. that led to the Findings of Fact and Conclusions
`
`of Law. a true and correct copy which is attached hereto marked Exhibit "B."
`
`4. Judgment was entered. a true and correct copy which is attached hereto marked E.\'Iu‘bit
`
`“C u
`
`5. This matter ultimately went on appeal. and a true and correct copy of the appellate
`
`opinion is attached hereto marked Ex/iibit “D. "
`
`6. During the midst of the Infringement Action and after the summary judgment. but
`
`before the reversal, Smith filed his Petition under Chapter 7 of the United States Bankruptcy Code
`
`in the United States Bankruptcy Court. Eastern District of California, (Sacramento) Case No. ()1
`
`25334 B 7. The Complaint was filed with essentially two courts. the first of which was to assert
`
`that the underlying infringement judgment was undertaken willfully and maliciously, and subject
`
`to the exemption from the discharge under Bkrtcy.C. § 523(a)(6). and to bar the discharge of Smith
`
`
`
`for certain misconduct arising out of the bankruptcy under Bkrtcy.C. § 727. During the course and
`
`l\J
`
`DJ
`
`scope of the bankruptcy proceeding. Judge Dorian issued an order to show cause for the failure to
`
`prosecute the Bkrtcy.C. § 727 action. which the succeeding Judge (Mcl\/lanus) discharged. which
`
`was upheld by the Bankruptcy Appellate Panel (see below). The Bk11cy.C. § 727 trial went to
`
`judgment, in favor of Smith. The Bkrtcy.C. § 523(a)(6) case went to trial, in which E.\~lI prevailed,
`
`and a true and correct copy of the Findings of Fact and Judgment are attached hereto marked
`
`E.\-hibit “E. "
`
`7. Smith appealed the matter to the Bankruptcy Appellate Panel which aflimied on all
`
`grounds. and a true and correct copy of the Opinion (Westlaw only) is attached hereto marked
`
`Exhibit “F. "
`
`8. During the court of the Enforcement Action. Smith has engaged in repetitive conduct to
`
`harass, humiliate. intimate. and oppress David J. Cook of Respondent. Petitioner liled in the
`
`Enforcement Action a DEFENDANTS MEMORANDUM OF POINTS AND AUTHORITIES IN
`
`OPPOSITION TO PLAINTIFI-“S MOTION FOR ASSIGNMENT OF RIGHTS. RESTRAINING
`
`ORDER. AND TURNOVER ORDER (Docket #82), a true and correct copy ofwhich is attached
`
`5
`
`hereto marked Exhibit "G."
`
`9.
`
`In an ensuing liling, Smith sought to defend the filing, and a true and correct copy 0 I‘ his
`
`I\/l€ITlOl‘21I1CiUl‘Il
`
`in Opposition is attached hereto marked Exliibit "H."
`
`10. Smith filed a near duplicate Petition. a true and correct copy of the Petition to Cancel
`
`which is attached hereto marked E.\‘ln'b1't “I. "
`
`l I. Dcclarant is informed and believes that Smith now warehouses on GoDaddy
`
`SQUEEZEBLOODFROMATURNIP.INFO.
`
`I declare under penalty of perjury under the laws of the State of C alifomia that the
`
`foregoing is true and correct.
`
`Executed on December 13. 2012 at San Francisco. California.
`
`F:\USERS‘tD.lCNE\Vicook trademark.dismiss2 dcc
`
`/s/ David J. Cook
`
`DAVID J. COOK. ESQ. (SBN 060859)
`
`Ix)
`
`
`
`CERTIFlCA'l'E OF SERVICE
`
`Ix)
`
`L»
`
`SCOTT R. SMITH
`
`5714 Folsom Blvd., Suite 140
`Sacramento, CA 95819
`
`I declare:
`
`I am employed in the County of San Francisco, Califomia. I am over the age of eighteen
`(18) years and not a party to the within cause. My business address is 165 Fell Street. San
`Francisco. CA 94102. On the date set forth below. I served the attached:
`
`DECI..~\R—\TION OF DAVID J. COOK, ESQ. IN SUPPORT OF MOTION TO
`DISMISS PETITION TO CANCEL
`
`on the above—named person(s) by:
`
`XXX (BY MAIL) Placing a true copy thereof, enclosed in a sealed envelope with postage
`thereon fully prepaid. in the United States mail at San Francisco, California. addressed to the
`person(s) served above.
`
`I declare under penalty of perjury that the foregoing is true and correct.
`
`Executed on December 13. 2012 at San Francisco. California.
`
`/s/ David J. Cook
`
`DAVID J. COOK (SBN 0608598)
`
`
`
`A EXIT “A”
`
`
`
`UNITED STATES DISTRICT COURT
`
`CENTRAL DISTRICT OF CALIFORNIA
`
`S——
`ENTREPRENEUR MEDIA,
`INC., a
`CASE NUMBER
`
`California corpol§'EA:%ho,f_1fFF(S)
`
`Cv_ 98’
`
`
`
`vs.
`ENTREPRENEURPR,
`a corporation,
`and
`
`INC.,
`
`V
`5 U H H 0 N S
`
`SCOTT SMITH, an individual
`DEFENDANTS(S)
`
`TO THE ABOVE-NAMED DEFENDANT(S), You are hereby summoned ind réquiréd to
`rue with this ‘court. and sérvo upon
`
`HENRY M. BISSELL
`HENRY M. BISSELL IV
`
`9;a1nt1rr's aezornoy. uhooé address 1::
`HENRY BISSELL, A PROFESSIONAL LAW coaroaarrou
`6820 La Tijera Boulevard, Suite 106 _
`Los Angeles, California
`90045
`
`-
`
`to tho Eohp1a1nc which is horévith sorvca upon you
`an ahsuér
`wit!-11n_2__Q__da_'y'_s'.__'a.tjto'r ‘sérvicé of this Sufidiis upon you, éidlustva
`or the day at service.
`It you 9:11 to do so,
`judcnune by détsult
`
`e111 bé taken against you tor thé réliéf daaindéd in and coaulatnc.
`
`Om MAY 0 81998
`
`cnaax, 0.3. nrsrfircr coon?
`
`
`
`
`
`
`
`S U H H O N S
`
`
`
`(
`
`C“.
`
`HENRY M. BISSELL
`HENRY M. BISSELL IV
`
`EECODPV
`
`(310) 645-5531
`
`HENRY BISSELL, A PROFESSIONAL LAW CORPORAT
`6820 La Tijera Boulevard, Suite 106
`Los Angeles, California
`90045
`Telephone:
`(310) 645-1088
`Telecopier:
`
`Attorney for Plaintiff
`
`UNITED STATES DISTRIC COURT
`
`CENTRAL DISTRICT OF CALIFORNIA
`
`INC.,
`ENTREPRENEUR MEDIA,
`a California corporation,
`
`Plaintiff,
`
`v.
`
`INC.,
`
`ENTREPRENEURPR,
`a corporation,
`and
`
`SCOTT SMITH,
`an individual,
`
`Defendants.
`
`gas_a~asa\asa~.4\.as.a~a\.asa§vs.r\y~.r
`
`98- 3607 lGB<8onx)
`Case No.
`
`COMPLAINT FOR:
`
`TRADEMARK INFRINGEMENT: AND
`UNFAIR COMPETITION
`
`l!Bl§Ql§IlQH_AND_!EEQ§
`
`1.
`
`This is an action for trademark infringement arising
`
`under the trademark laws of the United States, Title 15 United
`
`States Code,
`
`§§ 1051 et seq.: and for related claims of unfair
`
`competition, Title 15 United states code,
`
`§ 1125(a).
`
`2. Original jurisdiction of this action is conferred
`
`upon this Court by Title 28, United States Code,
`
`§§ 1331 and
`
`1338(a), and,
`
`for the related claim of unfair competition, by §
`
`EIYR-SHl.LlY
`
`1
`
`10
`
`ll
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`12
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`13
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`14
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`15
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`16
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`22
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`25
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`24
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`25
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`26
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`27
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`28
`
`
`
`1338(b).
`
`§ 1391.
`
`3.
`
`Venue is proper in this district under 28 U.S.C.
`
`1 i l I
`
`EL
`
`4.
`
`Plaintiff, Entrepreneur Media,
`
`Inc.
`
`(hereinafter
`
`"Entrepreneur")
`
`is a California corporation with its principal
`
`place of business
`
`located in Irvine, California, within this
`
`judicial district.
`
`5.
`
`Plaintiff is informed and believes,
`
`and on that
`
`basis alleges, that defendant EntrepreneurPR, Inc. is a California
`
`corporation having a principal place of business in Sacramento,
`
`California.
`
`6.
`
`Plaintiff is informed and believes,
`
`and on that
`
`basis alleges,
`
`that defendant Scott Smith is a resident of the
`
`State of California having a principal place of business in
`
`Sacramento, California.
`
`7.
`
`Defendants EntrepreneurPR,
`
`Inc., and Scott Smith
`
`will hereinafter be collectively referred to as "defendants" unless
`
`otherwise» specified .
`
`BACK§B0!_Jfl D Fggzs
`
`8.
`
`Plaintiff is a well—known publisher and source of
`
`magazines, business materials and services which are principally
`
`directed to a ‘market.
`
`including owners and operators of
`
`small
`
`businesses, members of the public“ interested in small businesses
`
`and other individuals and industries who are interested in such
`
`amt-su1.Ln'
`
`2
`
`up(>3{U9*‘
`<O®\1OICJ')
`
`10
`
`ll
`
`12
`
`13
`
`14
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`15
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`16
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`1'7
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`18
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`19
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`20
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`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`2.7
`
`28
`
`
`
`if
`
`(7
`
`operations
`
`and opportunities.
`
`Its
`
`flagship publication is?
`
`ENTREPRENEUR MAGAZINE which is published monthly with a current;
`paid circulation, both subscriptions and newsstand sales, of more’
`
`than 500,000 in the United States. Plaintiff also has substantial
`
`paid circulation in approximately 60 foreign countries, as well as
`
`newsstand sales in many of those countries.
`
`9.
`
`Continuously, beginning about 1978, plaintiff has
`
`used the trademark ENTREPRENEUR to identify-its magazines, business
`
`guides, video and audio tapes,
`
`computer software programs, web
`
`pages, on—line services, other services in conducting trade shows
`
`and educational seminars, promotional, advertising, membership and
`
`business services under the trademark ENTREPRENEUR.
`
`In addition
`
`plaintiff has prominently displayed the mark on letterheads,
`
`promotional
`
`literature, media advertising and
`
`in periodicals
`
`distributed throughout the United States. Plaintiff has common law
`
`rights in said trademark.
`
`10.
`
`Plaintiff
`
`is
`
`the owner of all
`
`rights
`
`to the
`
`ENTREPRENEUR trademark for printed publications,
`
`specifically
`
`including magazines, books and published reports in International
`
`Class 16. Plaintiff is the owner of United States trademark Reg.
`
`Nos. 1,453,968 and 1,892,783. Copies of these registrations are
`
`attached hereto as Exhibits
`
`A
`and B,
`registrations are in full force and effect.
`
`respectively.
`
`Both
`
`
`
`:i- __._—.—....:._....._........__...,
`
`I
`
`11. Plaintiff has distributed and sold the goods and
`
`services listed in paragraphs 8 and 9 hereof under the trademark
`
`registrations enumerated in paragraph 10
`
`throughout
`
`the United
`
`States since 1978. As a-result, plaintiff has developed invaluable
`
`EMT!-SNLLIT
`
`‘
`
`3
`
`N (
`
`24
`
`‘O03Q03U1:9-
`
`10
`
`11
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`12
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`15
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`14
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`15
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`26
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`27
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`28
`
`
`
`‘OO)\?O)U!053-01(DI-‘
`
`good will
`
`in connection with the marks covered by the aforesaid
`
`registrations.
`
`ElRSI_QLAlM_EQB_EELlEE
`
`IBAQEHAB§_lEEBlH§§H§E2
`
`C.
`
`0 1 at se .
`
`12. Plaintiff re-alleges each and every allegation set
`
`forth in paragraphs 1 through 11, and incorporates them herein by
`
`10
`
`this reference.
`
`ll
`
`12
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`13
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`14
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`15
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`13. Plaintiff is informed and believes,
`
`and on that
`
`basis alleges,
`
`that defendants have been providing goods
`
`and
`
`services under the mark and trade name "EntrepreneurPR", which
`
`constitutes infringement of plaintiff's trademark rights.
`
`14.
`
`Plaintiff is informed and believes,
`
`and on that
`
`basis alleges,
`
`that defendants have been operating an Internet
`
`website in association with the URL www.entrepreneurpr.com, which
`
`URL title infringes plaintiff's trademark rights.
`
`15. Plaintiff is informed and believes,
`
`and on that
`
`basis alleges,
`
`that defendants have been publishing; selling or
`
`otherwise distributing printed publications
`
`under
`
`the mark
`
`"Entrepreneur
`
`Illustrated", which title infringes plaintiff's
`
`trademark rights.
`
`16. Plaintiff is informed and believes,
`
`and on that
`
`basis alleges,
`
`that defendants have caused their publications
`
`bearing the infringing title "Entrepreneur Illustrated", as well.as
`goods and services bearing the infringing mark and trade name
`
`"EntrepreneurPR",
`
`to
`
`enter
`
`into
`
`Interstate
`
`Commerce
`
`and,
`
`EHTR-Sll.LIT
`
`4
`
`
`
`particularly, have distributed their offending materials through ;
`
`numerous channels within the State of California and this judicial
`
`district.
`
`Such
`
`use
`
`of plaintiff's
`
`ENTREPRENEUR
`
`trademark
`
`constitutes false designation of origin,
`
`false or misleading
`
`description of fact and false or misleading representations which
`
`are likely to cause confusion, to cause mistake or to deceive as to
`
`the affiliation,
`
`connection or association of defendants withf
`
`II i
`
`plaintiff, or as to the origin, sponsorship, or approval of said:
`
`publications and services by plaintiff. Accordingly, defendants’:
`
`acts are in violation of 15 U.S.C.
`
`5 1125(a)(1).
`
`17.
`
`By
`
`reason of defendants’
`
`acts alleged herein,
`
`plaintiff has suffered and will continue to suffer damage to its
`
`business,
`
`reputation and good will and the loss of sales and
`
`profits which it would have made but for defendants’ acts.
`
`18. Defendants
`
`threaten to continue to do the acts
`
`complained of herein and, unless restrained and enjoined, will
`continue to do so, all to plaintiff's.irreparable damage.
`It would
`
`be difficult to ascertain the amount of compensation which could
`
`afford plaintiff adequate relief for such continuing.acts, and a{
`
`judicial
`
`proceedings
`
`would
`
`be
`
`required.
`
`multiplicity
`
`of
`
`Plaintiff's remedy at
`
`law is not adequate to compensate it for
`
`injuries threatened.
`
`19. Plaintiff is informed and believes,
`
`and on that
`
`basis alleges,
`
`that defendants have engaged in and continue to
`
`EllTR'-SlH.UT
`
`engage in the aforementioned infringing uses, despite notice of
`
`plaintiff ’s trademark rights,
`
`thereby constituting deliberate and
`
`willful infringement of plaintiff’ s trademark.
`
`.
`
`,5
`
`<OG>\'lO3U1o£=-01100-‘
`
`5-‘ O
`
`I-‘ I--‘
`
`F‘ to
`
`5-‘ CH
`
`0-’#-
`
`|'-‘ CH
`
`I-‘ O’:
`
`l-‘ <1
`
`P-‘ on
`
`H no
`
`N O
`
`to0-‘
`
`ID to
`
`[0 0|
`
`(0 IP-
`
`25
`
`26
`
`27
`
`28
`
`
`
`<ooJ~2ozm.:>o:zu;—I
`
`10
`
`ll
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
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`19
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`20
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`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`C
`
`-7‘
`
`20. Defendants’ use of plaintiff's ENTREPRENEUR mark and
`
`variants
`
`thereof has been wholly without
`
`the permission or
`
`authorization of plaintiff.
`
`21. The
`
`foregoing acts
`
`and
`
`conduct of defendants
`
`constitute willful
`
`and deliberate infringement
`
`of‘ plaintiff's
`
`ENTREPRENEUR. mark and plaintiff's United States registrations
`
`therefor in violation of §32 of the Lanham Act
`
`(15 U.S.C. 51114).
`
`§§QQND_£LAlM_£QB_B§LlEE
`
`. gngun COMPETITION
`
`U.
`
`5 -
`
`ss
`
`fe
`
`Code
`
`17200
`
`22. Plaintiff re-alleges each and every allegation set
`
`forth in paragraph 1
`
`through 11,
`
`and
`
`13
`
`through 21,
`
`and
`
`incorporates them herein by this reference.
`
`23.
`
`In or about July,
`
`1997,
`
`defendants
`
`represented
`
`themselves to be Icon Publications with a. website address of
`
`“iconpub.com". Based on those representations, defendants sought
`
`and were chosen by plaintiff to have a link to their website from
`
`plaintiff's website known
`
`as
`
`"Entrepreneur Magazine's
`
`small
`
`Business Square" and given permission to reproduce on their website
`
`plaintiff's registered service mark "Small Business Square" and
`
`certain text associated with their
`
`selection by plaintiff.
`
`Plaintiff is informed and believes,
`
`and thereon alleges,
`
`that
`
`defendants thereafter proceeded deliberately and intentionally to
`
`misrepresent
`
`the nature and extent of
`
`their relationship with
`
`plaintiff,
`
`including without limitation:
`
`ENTR-SNI.L!T-
`
`M
`
`6
`
`u
`
`
`
`«[3CAtoI-‘
`
`U1
`
`<OCIJ\703
`
`10
`
`ll
`
`12
`
`13
`
`14
`
`15
`
`16
`
`l7
`
`l8
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`19
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`20
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`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`a.
`
`Changing
`
`the
`
`name
`
`of
`
`their website
`
`to
`
`"EntrepreneurPR.com";
`
`b.
`
`Falsely indicating that plaintiff had selected
`
`them as "Link of the Week" and had given them
`
`an "E rating";
`
`c.
`
`Changing the name of their online and print
`
`publication from "Yearbook of Small Business
`
`Icons" to "Entrepreneur Illustrated": and
`
`d.
`
`Ascrihing certain statements to plaintiff,
`
`which purported to recommend
`
`or
`
`endorse
`
`defendants and their products and/or services.
`
`24. Defendants’ false and fraudulent misrepresentations
`
`as described above constitute unfair competition, unfair business
`
`practices and infringement of plaintiff's rights in and to its
`
`registered trademarks and service marks.
`
`25. Defendants’ conduct constitutes the use in commerce,
`
`in connection with goods or services, of
`
`false or misleading
`
`representations of fact which are likely to cause confusion, or to
`
`deceive as
`
`to the affiliation,
`
`connection,
`
`or association of
`
`defendants with the goods and services of plaintiff.
`
`26. Defendants’ conduct is likely to deceive and confuse
`
`the public into believing that the activities of defendants are
`
`those of plaintiff or are sponsored by,
`
`licensed by, endorsed by,
`
`authorized by, or are otherwise associated with plaintiff, thereby
`
`resulting in the misappropriation of plaintiff's ENTREPRENEUR mark
`
`and the goodwill and reputation which are associated therewith.
`
`27. Defendants threaten_ to continue to do the acts
`
`EIITR-SMLLIT
`
`.
`
`7
`
`
`
`I 1
`
`C"
`
`F
`
`I
`complained of herein and, unless restrained and enjoined will
`
`
`
`continue to do so, all to plaintiff's irreparable damage
`
`It would ’
`
`be difficult to ascertain the amount of compensation which could
`
`i
`
`afford plaintiff adequate relief for such continuing acts, and a
`
`multiplicity
`
`of
`
`judicial
`
`proceedings
`
`would.
`
`be
`
`required.
`
`Plaintiff's remedy at
`
`law is not adequate to compensate it for
`
`injuries threatened.
`
`28. Defendants’ conduct constitutes unfair competition
`
`in violation of §43(a) of the Lanham Act, 15 U.S.C. §ll25(a).
`
`PQAYER EOR RELIEE
`
`
`
`WEEREFORE, plaintiff further prays for judgment against
`
`each and every defendant for its acts of trademark infringement and
`
`unfair competition in reference to plaintiff's ENTREPRENEUR mark,
`
`to include the following:
`
`1.
`
`An order preliminarily and permanently enjoining and
`
`restraining each and every defendant,
`
`its officers,
`
`agents,
`
`servants,
`
`employees and attorneys and those persons in active
`
`concert or participation therewith and having actual notice hereof
`
`from using
`
`in
`
`any manner
`
`the
`
`designations
`
`ENTREPRENEUR,
`
`ENTREPRENEURPR,
`
`and
`
`ENTREPRENEUR
`
`ILLUSTRATED,
`
`or
`
`any
`
`other
`
`designation, mark, word, term or title which is confusingly similar
`
`to Entrepreneur's ENTREPRENEUR trademark for goods and services to
`
`be sold or rendered to the same, similar, or overlapping channels
`
`of trade.and purchasers.as the.goods and services of Entrepreneur;
`
`ENTR-SNI.LlT
`
`3
`
`1 2
`
`O1
`
`4 .
`
`5 6 7 8 9
`
`10
`
`ll
`
`12
`
`15
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`25
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`-D‘Cal(05-‘
`IOGNIOSUI
`
`10
`
`ll
`
`12
`
`2.
`
`An 0rder'pre1iminari1y and.permanently enjoining and
`
`restraining each and every defendant,
`
`its officers,
`
`agents,
`
`servants,
`
`employees and attorneys and those persons
`
`in active:
`
`concert or participation therewith and having actual notice hereof
`
`from committing any acts of unfair competition and unfair business
`
`practices with respect to Entrepreneur's ENTREPRENEUR trademark.and
`
`Entrepreneur's goods and services:
`
`3.
`
`An Order preliminarily and permanently directing
`
`defendants to publish and distribute corrective advertising and
`
`promotional materials;
`
`4.
`
`An order preliminarily and permanently directing
`
`15.
`
`each.and every defendant, its officers, agents, servants, employees
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`and attorneys and those persons in active concert or participation
`
`therewith and having actual notice hereof to surrender up for
`
`destruction all
`
`advertising,
`
`publications,
`
`goods,
`
`or
`
`other
`
`materials that bear any representation of Entrepreneur Illustrated
`
`or EntrepreneurPR or
`
`any other
`
`term which may be considered
`
`confusingly similar to plaintiff's ENTREPRENEUR trademark;
`
`5.
`
`An Order directing defendants
`
`to account
`
`and
`
`disgorge to plaintiff any and all profits derived by reason of said
`
`acts of infringement and unfair competition complained of herein;
`
`6.
`
`An award to plaintiff of compensatory damages in an
`
`amount to be determined at trial:
`
`7.
`
`An award to plaintiff of treble damages and profits
`
`on account of defendants’ willful and deliberate infringement of
`
`plaintiff's trademark, pursuant to 15 U.S.C. §lll7;
`
`8%
`
`An award to plaintiff of enhanced.damages in an
`
`ant:-suz.Lx1
`
`i9
`
`
`
`(
`
`F
`
`amount to be determined at trial:
`
`9.
`
`A finding by the Court that this is an exceptional
`
`case and that plaintiff be awarded its reasonable attorneys’ fees
`
`and costs incurred herein, pursuant to 15 U.S.C. §l117:
`
`10.
`
`Such other,
`
`further and different relief as the
`
`Court deems just and proper under the circumstances.
`
`Dated:
`
`May 0,
`
`1998
`
`Entrepreneur Media, Inc.
`
`flail.
`
`
`Ronald L.
`
`¢.. _.
`
`:m~sm.m
`
`1°
`
`
`
`Int. 03.: 9 and 16
`
`Prior U.S. CL: 38
`
`United States Patent and Trademark Office
`
`Reg. No. 1,453,968
`Recistercd Aug. 25,1987
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`ENTREPRENEUR
`
`E INC. (CALIFORNIA CORPO-
`KAUON)
`1311 PONITUSAVENUE
`LOS ANGELES. CA: K3642
`
`FOR: COMPUTER PROGRAMS AND PRO-
`GRAMS USER MANUAl...S«A.LL QDLD AS, is
`UN1T.IN*CLA.SS-'9(U.S.C!L3l).
`FIRST USE S-19-19837
`IN COMMERCE
`5-19-1983.
`PAPER GOODS» AND‘ PRINTS}
`FOR:
`MATTER; NAMELY MAGAZINES. BOOKS:
`
`AND PUBLISHED REPORTS’ PERTAINING TO
` OP% INCLASS l&(U.S.
`FIRST USE S-2-197$:
`IN ®M)-IERCB
`5-2;-I978".
`OWNER OF US. REG. NOS. 1.130.333. 1.23.35;
`AND OTHERS.
`SEC. 20') ONLYASTO CLASSW16-GOODS.
`
`SER. NO. 537.579: FILE) 5-16‘-198$.
`
`6.1‘. GLYNN. BEAMINING A:'I'I'ORNEY
`
`Exuualr A“
`
`11
`
`
`
`,«
`
`C.
`
`"o
`
`Int. CIs.: 35 and 41
`
`Prior U.S. 05.: 101 and 107 ‘
`
`Reg. No. 1,892,783
`United States Patent and Trademark Office
`Registered May 1. 1995
`
`SERVICE MARK
`SUPPLEMENTAL REGISTER
`
`ENTREPRENEUR
`
`ENTREPRENEUR MEDIA. INC. (CALIFORNIA
`CORPORATION)
`2392 MORSE AVENUE
`IRVINE. CA 927146325
`
`FOR: ARRANGING AND CONDUCTING
`TRADE SHOW EXHIBITIONS IN THE FIELD
`OF
`ENTREPRENEUIU.A1.
`ACTIVITIES:
`NAMELY; THE START-UP AND OPERATION
`OF SMALL BUSINESS ENTERPRISES.
`IN
`CLASS 35 (U5. CL 101)-
`FIRST USE
`10-18-l99l:
`l0-18-I991.
`FOR: EDUCATIONAL SERVICES: NAMELY.
`®NDUCTl'NG SEMINARS ON THE DEVEI..~
`OPMENT AND OPERATION OF BUSINESSES.
`
`IN COMMERCE
`
`AND CONDUCTING WORK SHOPS ON COM-
`PUTER TECHNOLOGY. TELECOMMUNICA-
`TIONS. G. FINANCING OPTIONS.
`REAL ESTATE MANAGEMENT. TAX FLAN-
`NING AND INSURANCE. IN CLASS $1 (U.S.
`CI... 107).
`FIRST USE
`IO-I8-1991.
`OWNER OF U.S. REG. NO. 1.453.968.
`
`IN COMMERCE
`
`10-18-1991:
`
`SER. NO. 74-371.737. FILED P.R. J-Z5-1993:
`AM.S.IL8-24-I994.
`
`ANDREW D. LAWRENCE ECAMINING AT-
`TORNEY
`
`Exam B
`
`12
`
`
`
`EIT “B”
`
`
`
`Case 2:98 v-03607-FMC -CT Document 239
`
`Filed 06/23/03 Page 1 of 11 Page ID #:120
`
`1
`
`2
`
`3
`
`.';;‘.::."" 2
`
`.__
`Enter
`.._..
`Closed
`JS-S/IS-6 ...__.
`
`J5-2/JS-3 ._
`Scan Only.__
`
`4 5 6 7
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`8
`9 ENTREPRENEUR MEDIA, INC.,
`CV 98-3607 FMC (CTx)
`
`FINDINGS OF FACT AN I
`CONCLUSIONS OF LAW
`
`-
`
`
`
`10
`H V
`
`s.
`
`Plaintiff,
`
`12 SCOTT SMITH,
`ENTREPRENEURPR,
`
`dba
`
`Defendants.
`
`13
`
`14
`15
`
`16
`
`The matter was tried before the Court, sitting with u
`
`2
`
`30, and May 2, 2003. At the conclusion of presentation of evidence, counsel
`
`17 were given a briefing schedule for written closing arguments. The Court has
`
`18
`
`19
`
`20
`
`21
`
`22
`
`now read and considered the parties’ closing argument briefs and reviewed the
`
`testimony and exhibits presented at trial. The Court now makes the following
`
`findings of fact and conclusions of law:
`
`Findin
`
`F ct
`
`1.
`
`Since at least 1978, Entrepreneur has continuously used the mark
`
`23 ENTREPRENEUR in connection with its magazine, Entrepreneur.
`
`24
`
`2.
`
`Entrepreneur also uses the mark ENTREPRENEUR on its web site,
`
`25 which can be accessed at the domain name enzrepreneuncom. On that web site,
`
`26
`
`people can subscribe to Entrepreneur magazine,
`
`read online versions
`
`27 Entrepreneur’s magazines, and learn about current business opportunities.
`
`28
`
`3.
`
`Entrepreneur publishes many magazines within the Entrepreneur
`
`£357
`
`
`
`.Case 2:98 v-03607-FMC —CT Document 239
`
`Filed 06/23/03 Page 2 of 11 Page ID #:]21
`
`family including Entrepreneur’s Be Your Qwg Boss, Entrepreneur
` and -'
`
`4.
`
`Entreprenegr magazine has paid circulation in the United States of
`
`approximately 550,000,
`
`including subscriptions and newsstand sales.
`
`Entrepreneur magazine has a total audience of approximately 2 million readers
`
`per issue. In addition, there are approximately 2-3 million visitor sessions each
`
`month on enrrepreneuncom.
`
`5.
`
`Entrepreneur has an incontestable federal trademark registration
`
`for the mark ENTREPRENEUR in International Classes 9and 16 for computer
`
`programs and printed publications, specifically including magazines and
`
`published reports pertaining to business opportunities, Reg. No. 145968.
`
`Pursuant to 15 U.S.C. § l057(b), the foregoing registration is prima facie
`
`evidence of the validity of the registration, of Entrepreneur’s ownership of the
`
`mark, and of its exclusive right to use the mark in commerce. Pursuant to 15
`
`U.S.C. § 1065, this registration is incontestable.
`
`6.
`Entrepreneur has a federal trademark registration for the mark
`2 ENTREPRENEUR for advertising and business services by means of a global
`
`7.
`Entrepreneur
`ENTREPRENEUR EXPO (Reg. No.
`1856997),
`INTERNATIONAL (Reg. No. 2033423), ENTREPRENEURIAL WOMAN
`(Reg. No.
`2190653), ENTREPRENEURMAGCOM (Reg.
`2287413),
`
`registrations
`
`for
`
`ENTREPRENEUR
`
`has
`
`federal
`
`trademark
`
`23
`
`1 ENTREPRENEUR’S HOME OFFICE (Reg.
`
`No.
`
`2174757),
`
`ENTREPRENEUR’S FRANCHISE & BUSINESS OPPORTUNITIES (Reg.
`
`No. 1854603), and ENTREPRENEUR MAGAZINE ONLINE (Reg. No.
`
`2215674).
`
`8.
`
`Entrepreneur is well-known for its fltgeppengur magazine, as well
`
`2
`
`
`
`Case 2:98
`
`v-03607-FMC -CT Document 239
`
`Filed 06/23/03 Page 3 of 11 Page ID #2122
`
`as for the other magazines and services it produces and provides.
`
`9.
`
`Entrepreneur promotes its products and services through its
`
`Internet web site, by sending out complimentary copies of its magazine to the
`
`media, by advertising, and by promoting events featuring small businesses.
`
`10.
`
`In 1995, defendant Scott Smith dba EntrepreneurPR started a
`
`business called ICON Publications, which promoted small businesses. In 1997,
`
`ICON created a magazine that featured articles about small businesses, which
`
`was distributed to members of the media so that the media could report on the
`
`companies within the featured articles.
`
`11.
`
`ICON Publications’ magazine was entitled Ygbook of Small
`
`Business Icons.
`
`12.
`
`As part of Entrepreneur’s efforts to promote small businesses, in or
`
`about December
`
`1996, Entrepreneur
`
`listed ICON Publications on
`
`Entrepreneur’s “Small Business Links” pages of Entrepreneur's web site, and
`
`provided a direct link to Smith’s web site, icanpub.com.
`
`13.
`
`Smith sent out letters to his clients touting iconpub.com’s selection
`
`on Entrepreneur’s Small Business Links page.
`
`14.
`
`Shortly after iconpub.com was selected to appear on Entrepreneufs
`
`Small Business Links page, Smith decided to change the name ofhis company,
`
`magazine, and domain name.
`
`15.
`
`Smith was familiar with Entrepreneur and its services. In addition,
`
`Smith conducted a trademark search that revealed Entrepreneur’s federal
`
`registrations for the mark ENTREPRENEUR.
`
`16.
`
`In soliciting customers for his yearbook, Smith often represented
`
`that he was affiliated or associated with Entrepreneur Magazine in order to
`
`persuade people to sign up for his services.
`
`17.
`
`In October 1997, Smith changed the name of his company to
`
`EntrepreneurPR, the name ofhis magazine to Entrepreneur Illustrated, and his
`
`17
`
`18
`
`19
`
`2o
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`23
`
`3
`
`,
`
`
`
`v-03607-FMC -CT Document 239
`
`Filed 06/23/03 Page 4 of 11 Page ID #:123
`
`domain name to entrepreneurpncom.
`
`18.
`
`Press releases on plaintiffs masthead concerning Icon’s yearbook
`
`as the public-relations firm for plaintiff.
`
`19.
`
`Thereafter, Smith printed on his web site statements Entrepreneur
`
`made about his former company, magazine, and domain name.
`
`20.
`
`Smith’s new company name and magazine were prominently
`
`10
`
`featured on his web site, located at entreprenempncom.
`
`¢_. 1
`
`L
`
`21.
`
`Smith sent out his publication of Entrepgggpr Illustrated to
`
`53—-
`
`r—-u--§'li§3'.P§3S‘.‘..’o$oo'Sn3v.z.'.§Gc~.>
`
`; thousands of members of the media four times each year.
`
`22.
`
`Smith featured on his web site Entrepreneur’s registered design
`
`mark SMALL BUSINESS SQUARE after being expressly told he did not have
`
`permission to do so.
`
`23.
`
`The 'marks ENTREPRENEUR, on the one hand,
`
`and
`
`ENTREPRENEURPR, ENTREPRENEUR ILLUSTRATED and
`
`ENTREPRENEURPRCOM are substantially similar in appearance, sound and
`
`meaning in that
`“entrepreneur.”
`
`the dominant portion of all
`
`the marks is identical -
`
`I
`
`24.
`
`Entrepreneur and Smith both use their marks in connection with
`
`identical goods and services, in that the marks are all used in connection with
`
`magazines featuring articles about small businesses, as well as on the Internet.
`
`In addition, Entrepreneur offers public relations services on its web site through
`
`its partnership with PR Newswire, which services are substantially similar to
`
`Smith’s public relations services.
`
`25.
`
`Entrepreneur and Smith’s marketing channels overlap, since both
`
`entities target small businesses, send their publications free of charge to the
`
`4
`
`
`
`.Case 2:98 , v-03607-FMC -CT Document 239
`
`Filed 06/23/03 Page 5 of 11 Page ID #1124
`
`g_. media, and use the Internet to market and advertise their services.
`
`26.
`
`There is substantial evidence that EntrepreneurPR’s clients believed
`
`there was a relationship between Entrepreneur and EntrepreneurPR, which
`
`constitutes evidence of factual confusion.
`
`27. Manywitnesses, whom the Court found to be very credible, testified
`
`that they believed, when they were solicited by Smith, that defendant was
`
`associated with Entrepreneur Media or Entrepreneur Magazine, or that the two
`
`publications were the same. They testified that they were led to believe that by
`
`1 signing up for defendant’s services, they would be featured in Entrepreneur
`
`2 Magazine. They were almost uniform in their position that they would not have
`
`j paid any money to defendant had they known he was not connected with
`
`I—I—I
`
`12 .
`
`plaintiff. Defendant Smith denied the allegations of all of those witnesses. His
`
`13
`
`u—A vfi
`
`'
`
`testimony in that, and many other respects, was not credible.
`28.
`The Court accepts the testimony ofplaintiffs expert, who calculated
`
`._.._.,_.._.OO\lO\£II
`
`MMNNNNNNN-—.oO~lO\lJIJ.‘sbJl0*~O\O
`
`. defendant’s net profit throughout the period of infringement at $544,998, plus
`
`interest of $124,658, representing total profits of $669,656.
`
`To the extent a conclusion of law is deemed to be an uncontroverted fact,
`
`_ it is incorporated herein by this reference as if set forth in full.
`
`Conc si
`
`of L w
`
`|grisdicg'on and Venue.
`
`1.
`
`This Court has jurisdiction over this case pursuant to 15 U.S.C.
`
`' § 1121 and 28 U.S.C. § 1338(b).
`
`2.
`
`Venue is proper in this District pursuant to 28 U.S.C. § l39l(b)
`
`since a substantial portion of the events giving rise to the claims arose here. In
`
`. addition, Smith failed to object to venue in this District, and thus venue is
`
`5 appropriate in this District. Libby, Mg1_\]ei1l & Libby x. City Ngfl Bank, 592
`
`‘ F.2d 504, 510 (9*'* Cir. 1973).
`
`
`
`.Case 2:98 ‘ v-O3607—FMC -CT Document 239
`
`Filed 06/23/03 Page 6 of 11 Page ID #:j25
`
`3.
`
`15 U.S.C. § 1114(1) provides that “[a]ny person who shall without
`
`I‘ some connection’ with those ofthe registrant." HMLI Eub1’g Q9. 2, Brincat, 504
`F.2d 713, 715.17, n.7 (9"* Cir. 1974).
`
`12 1
`
`S.
`
`In evaluating whether a likelihood of confusion exists, the Ninth
`
`} Circuit has enumerated eight relevant factors:
`
`(1) strength of the mark; (2)
`
`6.
`
`In its ruling on defendant’s Appeal from this Court's Summary
`
`Iudgment Order,
`
`the Ninth Circuit concluded that plaintiffs mark was
`
`descriptive, and that on the record before the Court, the mark was not strong
`
`enough to support a finding of likeliness of confusion. The Court observed,
`
`; nonetheless, that “[a]t trial, EMI will have the opportunity to prove that its
`
`26
`
`27
`
`. mark is stronger than it currently appears.” Entrepreneur Media 3:. Smith, 279
`
`F.3d. 1135 (9"‘ Cir. 2002). Plaintiff has done so. The extensive advertising and
`
`.
`
`28
`
`public recognition over the past 25 years have established plaintiffs mark as a
`
`
`
`-Case 2:98 v-03607-FMC -CT Document 239
`
`Filed 06/23/03 Page 7 of 11 Page ID #:126
`
`strong mark in the industry.
`
`:5~ooo\aosuAwco
`u-)I\>'-‘
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