Entrepreneur Magazine weighs in on trademark defense.

"If you have a trademark, you have to aggressively defend it or you'll lose it," Rieva Lesonsky, vice president and editorial director at Entrepreneur Magazine, told NL/NL in response to an article we ran on her company's efforts to get other publications to stop using the word entrepreneur in their titles (NL/NL 2/15/04).

Entrepreneur Media Inc., the magazine's parent company, was granted a trademark on the word entrepreneur in 1982, long before it became the widely used word it is today.

Lesonsky, whom we could not reach before the NL/NL article was published, subsequently commented on the piece:

* We cited Scott Smith of Sacramento, Calif., who lost twice in court to EMI for his use of the word in the name of his PR firm, EntrepreneurPR, his website, EntrepreneurPR.com.

"Scott Smith calls us a big, bad guy." Lesonsky said. "We're not a big, bad guy. We're a small operation with fewer than 100 employees."

She said Smith used a logo similar to EMI's, "and that sort of confused people." She said that they tried to settle the matter out of court but that Smith persisted in using the same name and graphic presentation. So they sued for trademark protection and damages.

* For his part, Smith elaborated on our sentence, "Smith characterized Entrepreneur Magazine's trademark as 'weak ...."

He said that statement

  "was not simply my opinion, but is based on the much higher ranking
  9th Circuit Court of Appeals February 2002 ruling (which by the way
  overturned one of EMI's victories, and was a significant legal victory
  for us.)
    "In their very detailed and published ruling, three federal judges
  unanimously ruled as a matter of law that EMI's 'mark is weak' and the
  'common and necessary uses of the word "entrepreneur" in any mark
  identifying a printed publication addressing subjects related to
  'entrepreneurship.'"

That ruling was subsequently overturned, awarding EMI $1.4 million in damages and attorneys' fees. Smith, now doing business as Bizstarz, is again appealing the decision to the U.S. Court of Appeals.

* Lesonsky also questioned our quoting Forbes magazine, "Stephen Morris was thrilled when Entrepreneur Magazine plugged Atlanta-based Kids Way three years ago. Today, he and vice president Misty Elliott wish Entrepreneur had never heard of them."

Under pressure, Morris changed his title Young Entrepreneur to Y & E.

Lesonsky told us they have a good relationship with Morris and Elliott, and the two of them even contribute articles to EMI's magazine.

New intellectual property coalition

Meanwhile, Smith steered us to a February 23, 2004, article in The MicroEnterprise Journal, where Dawn Rivers Baker writes,

  "The Intellectual Property Protection Coalition (http://www.
  ipcoalition.com) is a membership organization for small and
  mediumsized enterprises with intellectual property interests. Its
  mission is to provide a forum for its members to 'enhance dialogue and
  outreach to Congress, the U.S. Patent and Trademark Office, and the
  business community.'
    "... The organization was founded by [Scott] Smith and the potent
  father-and-son team of Neil and Kurt Markva. Kurt Markva is a former
  chief-of-staff for House Small Business Committee Chairman Don
  Mansullo (R-IL), while his father Neil is a practicing attorney with
  forty years of stories to tell about problems with intellectual
  property issues."

EMI, 2445 McCabe Way, Irvine, CA 92614, 949-261-2325, www.entrepreneur.com

BizStarz, 5714 Folsom Blvd., #140, Sacramento, CA 95819, 916-453-8611, www.bizstarz.com