Tonight I received, in the mail, a letter from the law offices of Latham & Watkins (Big expensive law firm) Â demanding that I remove my application for trademark of Entrepreneur The Arts.
According to Entrepreneur Magazine’s attorney’s, my trademark could be easily confused with their trademark.Â If you read Entrepreneur, or ever have read it,Â do you really think there is anything to confuse you?
This is the second time in my life that this kind of letter has been sent to me, actually.Â The first time I was about six months into starting my first business in my college dorm room. A sheriff knocked on my door and served me with a “cease andÂ desist” letter from a company that claimed that my name was too similar to theirs. Their letter demanded that if I did not stop using myÂ chosen nameÂ they would take legal action against me, if I did not change it. Not really any different then this letter I received tonight. (Incidentally, I did manage to keep my name the first time.)
Through that firstÂ experience, which certainly was scary,Â IÂ learned a valuable lesson that I will share with you now:
Any word that is used to describe an activity, like computer or consulting or entrepreneur, cannot become the property of one company because it is a word used to describe an activity that is universally known and required to describe that activity. It would be like taking the word computer or consulting or entrepreneur away from the rest of the world to useÂ so that only one single company could use it for their exclusiveÂ purpose. Â Â
What would we call that thing we use to read the web, blog, do our work and write our email’s on if we could no longerÂ could use the word computer; because Apple Computer,Â through their trademark, took that word away from all ofÂ us??Â Now I am exaggerating a bit to demonstrate my point– because the wordÂ computer, using my example,Â would reallyÂ only apply in the context ofÂ the use of a business name, and not the use of the word in any context. However, you can clearly see the impact to every business if basic common words were no longer available to be used.
As long as the rest of the words, after that descriptive word, are uniquely different, there is no basis for the claim; which in my case is definitely the case.Â ThusÂ Apple Computers and Dell Computers can co-exist as can Â Kleenex Tissue and Scott Tissue, and every other example you can think of.
However the test I described aboveÂ is only one of eightÂ tests for what constitutes a trademark infringement.Â Â Here are the other 7 that contribute to the decision by a judge.
- Strength of the trademark
- Proximity of goods or deliver-ables
- Evidence of actual confusion
- Marketing channels used are similar
- Types of goods and the degree of care likely to be exercised by the purchaser are similar
- Defendant’s intent in selecting the mark
- The likelihood of expansion of the product line
The difference between the first time this happened to meÂ and this time, isÂ back thenÂ I did not realize that I needed an attorney toÂ research my names choices and advise me on issues related to duplication of trademarksÂ for potential litigation or that would raise concern.Â Â However in this case,Â I worked closely with an attorney who specializes in trademarksÂ who did his homework before we applied for the trademark.
Now having said all that, these kinds of matters can be costly to resolve, especially when fighting a giant;Â which will be something to consider. However before any fight ensues, my trademark attorney will talk to Entrepreneur Magazine’s attorney and see if this can be resolved before any action is taken.Â Â A good attorney is worth every cent if he protects you and makes potential litigation something that is as remote and asÂ minimal as possible. Every start-up business needs an attorney and here is a great example of one of many reasons why you do.
Not sure how this will play out but I would love your opinion on the matter.Â Would you confuseÂ Entrepreneur The Arts with Entrepreneur ( theÂ Magazine)?