Scott Smithv.Entrepreneur Media, Inc.Download PDFTrademark Trial and Appeal BoardSep 22, 2011No. 92053724 (T.T.A.B. Sep. 22, 2011) Copy Citation THIS OPINION IS NOT A PRECEDENT OF THE TTAB BUTLER Mailed: September 22, 2011 Cancellation No. 92053724 SCOTT SMITH v. ENTREPRENEUR MEDIA, INC. Before Walters, Cataldo and Wellington, Administrative Trademark Judges. By the Board: Petitioner seeks to cancel respondent's registration for the mark ENTREPRENEUR EXPO for "arranging and conducting trade show exhibitions in the field of entrepreneurial activities, namely the start-up and operation of small business enterprises."1 As grounds for cancellation, petitioner alleges that respondent committed fraud at the time it filed its underlying application, at the time it filed its five-year declaration of continued use under Trademark Act § 8, and at the time it filed its ten-year declaration of continued use under Trademark Act § 8; that respondent has abandoned use of its mark based on three consecutive years of nonuse, with no intent to resume use; and that the mark is a generic term for the services. 1 Registration No. 2391145, issued on October 10, 2003, claiming a date of first use anywhere and a date of first use in commerce of October 18, 1991. A disclaimer of the term EXPO is of record. Renewed. UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451 Cancellation No. 92053724 2 With respect to the fraud claim, petitioner alleges that, at the time respondent filed its underlying application, respondent had abandoned use of the mark for a period of at least three consecutive years with intent not to resume such use; that the specimen submitted in connection with the February 7, 2006 Section 8 filing (a photo of a woman standing in front of a sign which displayed "Welcome to Entrepreneur Expo") was staged by respondent because, at the time the photo was taken, the event occurring was not held under the mark ENTREPRENEUR EXPO and respondent was not hosting a trade show; and that the specimen submitted in connection with the November 16, 2010 Section 8 filing (a printout from Facebook which displayed the mark in the upper left corner) was a token use for the purpose of preserving rights in the mark. As to his standing, petitioner alleges that he owns the web addresses www.entrepreneurexpo.net and www.entrepreneurexpo.biz; that the sites are not live; and that, because of the litigious history between the parties, petitioner believes any actions he takes to utilize the sites will be met with retribution and court action by respondent. Petitioner, in his complaint, also provides some background addressing the parties' thirteen years of litigation. Petitioner alleges that the parties were first involved in the United States District Court for the Central District of California; that an appeal of the district court's summary judgment determination (in respondent's favor) was taken resulting in a partial reversal and Cancellation No. 92053724 3 remand, Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135 (9th Cir. 2002); that, after a bench trial, the district court found that petitioner had infringed respondent's trademark and ordered damages; that a second appeal was taken and the Ninth Circuit affirmed the district court; that petitioner sought bankruptcy protection; that the bankruptcy court "issued Findings of Fact and Conclusions of Law consistent with this judgment that EMI's claim … was non- dischargeable by Smith"; that judgment of the bankruptcy court was affirmed by the Bankruptcy Appellate Panel on December 17, 2009; and that petitioner has appealed such decision, which is pending, to the Ninth Circuit. This case now comes up on the following motions and matters: 1) respondent's fully briefed motion, filed May 17, 2011, for summary judgment;2 2) respondent's fully briefed motion, filed June 16, 2011, for entry of Fed. R. Civ. P. 11 sanctions against petitioner for filing the petition to cancel; 3) petitioner's fully briefed motion, filed June 20, 2011, for entry of Fed. R. Civ. P. 11 sanctions against respondent for filing its motion for Rule 11 sanctions; and 4) respondent's motion, filed June 20, 2011, to consolidate this cancellation with Cancellation No. 92053982. Respondent's motion for summary judgment In a motion for summary judgment, the moving party has the burden of establishing that there is no genuine dispute as to any 2 Respondent filed its motion as one to dismiss. However, because it involves matters outside the pleadings and preclusion based on a permanent injunction, the Board, on May 23, 2011, informed the parties that the motion is being considered as one for summary judgment. Cancellation No. 92053724 4 material fact and that it is entitled to judgment as a matter of law. See Fed. R. Civ. P. 56(a). A genuine dispute with respect to a material fact exists if sufficient evidence is presented such that a reasonable fact finder could decide the question in favor of the non-moving party. See Opryland USA Inc. v. Great American Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992). Thus, all doubts as to whether any particular factual issues are genuinely in dispute must be resolved in the light most favorable to the non-moving party. See Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992). 1. The parties' arguments In support of its motion, respondent argues that, because petitioner has been permanently enjoined from using ENTREPRENEUR or any other mark, trade name or domain name likely to cause confusion therewith, petitioner does not have a real interest in this proceeding and, thus, does not have standing. More specifically, respondent contends that petitioner's domain names do not provide standing because he is barred from using any domain name that is a colorable imitation of ENTREPRENEUR; that his interest in removing a purportedly abandoned mark so the term may be used by him and the public does not confer standing, again, because of the permanent injunction and because his interest is not that beyond the general public; and that the permanent injunction against use of ENTREPRENEUR bars his ability to use the term ENTREPRENEUR EXPO Cancellation No. 92053724 5 because the injunction "specifically includes, but is not limited to, the 'public relations' activities" previously provided by petitioner under petitioner's marks at issue in the court case.3 In response, petitioner argues that the permanent injunction does not bar the present proceeding because it applies only to use on "paper goods and printed matter" and "advertising and business services," but petitioner intends to utilize his domain names "in a generic fashion unrelated to printed publications, public relations, or advertising or business services." Petitioner also argues that he is not enjoined from using ENTREPRENEUR EXPO because the court never heard any evidence on or considered such mark; and that respondent has not presented any evidence that ENTREPRENEUR EXPO is confusingly similar to ENTREPRENEUR. Petitioner argues that res 3 Respondent also points out that petitioner previously sought to cancel respondent's Registration No. 2391145. In that consolidated case, involving Opposition No. 91180276 and Cancellation No. 92049001, respondent brought a motion to dismiss based on the final determination in the civil litigation. The Board, in an order dated August 7, 2008, elected not to consider respondent's motion to dismiss because petitioner's pleadings contained "an extraordinarily large number of extraneous, irrelevant, inflammatory, unclear, repetitive, superfluous, hyperbolic, and otherwise inappropriate allegations." The Board allowed petitioner (who then represented himself) time to submit a combined, amended pleading, expressly stating "Because the pleadings in these cases are entirely inappropriate and improper, they will not be further considered. Smith is allowed [time] to replead his allegations … and failure to timely file an amended pleading will result in dismissal of these proceeding, with prejudice." One day before the amended pleading was due, petitioner filed a withdrawal in the consolidated case. The consolidated proceedings were dismissed on September 17, 2008 without prejudice because no answer was of record. Trademark Rules 2.106(c) and 2.114(c). To be clear for purposes of the instant proceeding, the dismissal without prejudice in the earlier case is the operative determination. Thus, the determination in the earlier, consolidated Board proceeding does not now estop petitioner from bringing the same claims, based on the same set of transactional fact. Cf. Orouba Agrifoods Processing Co. v. United Food Import, 97 USPQ2d 1310 (TTAB 2010) (petition to cancel dismissed with prejudice where earlier opposition against the then-pending application, based on the same claims and same set of transactional facts, was dismissed with prejudice). Cancellation No. 92053724 6 judicata does not apply to this case because the set of facts used by the court to determine infringement are distinct from the set of facts that are involved in this cancellation. Petitioner argues that he pleaded sufficient facts to confer standing in view of the ownership of his domain names and his reasonable belief of damage in light of the litigation history between the parties. Petitioner's response is supported by his declaration and accompanying exhibits, including a copy of the district court's findings of facts and conclusions of law in Entrepreneur Media, Inc. v. Smith, CV 98-3607 FMC (CTx) (C.D. Cal. June 23, 2003). In reply, respondent argues that the services covered by the injunction are very broad and include "online services"; and that, because petitioner is enjoined from using ENTREPRENEUR, which forms part of ENTREPRENEUR EXPO, petitioner is enjoined from using ENTREPRENEUR EXPO. 2. The Court's Findings of Fact The following are among the district court's findings of fact: Entrepreneur Media, Inc. has continuously used the mark ENTREPRENEUR since at least 1978 in connection with its magazine, Entrepreneur; and uses its mark on its website, which may be accessed at the domain name entrepreneur.com. (Page 1, paragraph Nos. 1 and 2). Entrepreneur Media, Inc. publishes other magazines within the Entrepreneur family including Entrepreneur's Be Your Own Boss, Entrepreneur International, and Entrepreneur's Start-Ups. (Page 1-2, paragraph No. 3.) Entrepreneur Media, Inc. has an incontestable federal trademark registration for the mark ENTREPRENEUR for computer programs and printed publications, Cancellation No. 92053724 7 specifically including magazines and published reports pertaining to business opportunities; and a federal trademark registration for the mark ENTREPRENEUR for advertising and business services by means of a global computer network and other online services providers. (Page 2, paragraph Nos. 5 and 6.) Entrepreneur Media, Inc. has federal trademark registrations for ENTREPRENEUR EXPO; ENTREPRENEUR INTERNATIONAL; ENTREPRENEURIAL WOMAN; ENTREPRENEURMAG.COM; ENTREPRENEUR'S HOME OFFICE; ENTREPRENEUR'S FRANCHISE & BUSINESS OPPORTUNITIES; and ENTREPRENEUR MAGAZINE ONLINE. (Page 2, paragraph No. 7.) Mr. Smith changed the name of his company (originally Icon Publications) to EntrepreneurPR in October 1997; the name of his magazine was Entrepreneur Illustrated; and his domain name was entrepreneurpr.com. (Page 3, paragraph Nos. 10 and 17.) Entrepreneur and Smith both use their marks in connection with identical goods and services, in that the marks are 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. (Page 4, paragraph No. 24.) 3. The Court's conclusions of law Among its conclusions of law, the district court determined that respondent's ENTREPRENEUR mark is strong in the industry. (Page 6, paragraph No. 6.) The court concluded that, because respondent has an incontestable registration for the mark ENTREPRENEUR, the mark has acquired secondary meaning, and is a strong distinctive mark, deserving of protection. (Page 8, paragraph No. 14 and 15.) Cancellation No. 92053724 8 4. The Permanent Injunction On July 9, 2003, the district court entered its Judgment and Permanent Injunction whereby Mr. Smith (petitioner herein) was enjoined from using ENTREPRENEUR, ENTREPRENEURPR, ENTREPRENEUR ILLUSTRATED, and/or ENTREPRENEURPR.COM, or any mark, trade name, or domain name that is a colorable imitation thereof or likely to cause confusion therewith, in commerce or in connection with the sale, offering for sale, distribution, and/or advertising of (1) paper goods and printed matter, and/or (2) advertising and business services, including online services. This permanent injunction specifically includes, but is not limited to, the "public relations" activities that Scott Smith dba EntrepreneurPR has previously provided under the referenced marks. 5. The issue of petitioner's standing. A plaintiff has standing within the meaning of Section 14 of the Act, when it shows that it has a direct and personal stake in the outcome of the cancellation proceeding and a reasonable basis for its belief that it will be damaged. See Ritchie v. Simpson, 170 F.3d 1092, 1098, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999). There is no requirement that any actual damage be proven to establish standing. The issue in determining standing is not necessarily whether petitioner is entitled to a registration or owns the mark, but rather whether the presumptions flowing from the registration at issue are damaging to petitioner’s legal and continuous use of that term. See J. Thomas McCarthy, 3 McCarthy on Trademarks and Unfair Competition, § 20:46 (4th ed. 2011); see also, Harjo v. Pro Football, 30 USPQ2d 1828, 1832 (TTAB 1994) (party may establish standing by showing it has personal interest beyond that of general Cancellation No. 92053724 9 public with no requirement that actual damage be pleaded and proved). Standing to assert that a term is generic or has been abandoned, for example, may be shown where plaintiff has a real interest in the proceeding because it is one who has a present or prospective right to use the term descriptively [or generically] in its business. See Nobell.com LLC b. Qwest Communications International, Inc., 66 USPQ2d 1300, 1304 (TTAB 2003). The Board must give deference to the determinations of the district court and consider the terms of permanent injunctions. See DaimlerChrysler Corp. v. Maydak, 86 USPQ2d 1945 (TTAB 2008). The permanent injunction prohibits petitioner from using marks he previously used (i.e., ENTREPRENEURPR, ENTREPRENEUR ILLUSTRATIONS and ENTREPRENEURPR.COM) as well as respondent's ENTREPRENEUR mark, or any other mark, trade name, or domain name that is a colorable imitation thereof or likely to cause confusion therewith. Petitioner bases his standing on his domain names that include the term ENTREPRENEUR as part of "entrepreneurexpo," which he indicates he intends to use in a generic manner. Petitioner has not indicated any other manner in which he intends to use the term except, broadly, "in a generic fashion." Nor has petitioner indicated the services he intends to provide in connection with his planned use of the term. However, even if petitioner had provided such information, petitioner was enjoined from using the term Cancellation No. 92053724 10 ENTREPRENEUR as part of a domain name.4 Moreover, and contrary to petitioner's position that the court did not consider the mark ENTREPRENEUR EXPO, it is clear that the court was aware of respondent's registration for the mark ENTREPRENEUR EXPO when it entered judgment in favor of respondent and issued a permanent injunction against petitioner. The Board notes, too, that respondent has disclaimed the term EXPO, thus acknowledging that it does not have the exclusive right to use the term apart from the composite mark.5 See Dena Corp. v. Belvedere International, Inc., 950 F2d. 1555, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991). There is no genuine issue of material fact that the injunction, barring petitioner from “using ENTREPRENEUR … or any mark, trade name, or domain name that is a colorable imitation thereof or likely to cause confusion therewith, …†encompasses his stated interest in using the term ENTREPRENEUR EXPO as part of his domain name at some point in the future. While petitioner argues that he has a reasonable belief in damage in the form of retribution or litigation from respondent if he uses his domain names, he is prevented from 4 If petitioner disputes the terms and meaning of the permanent injunction, his remedy is to return to the court that issued it and seek a clarification or modification. 5 The issue of the acquired distinctiveness of respondent's ENTREPRENEUR mark was tried before the district court and found in favor of respondent. (Conclusions of Law, page 8, paragraph Nos. 13-15.) If an issue is actually and necessarily determined by a court of competent jurisdiction, that determination is conclusive in a subsequent suit involving the same issue and the same parties. See Mayer/Berkshire Corp. v. Berkshire Fashions Inc., 424 F.3d 1229, 76 USPQ2d 1310 (Fed. Cir. 2005); Jet Inc. v. Sewage Aeration Systems, 223 F.3d 1360, 55 USPQ2d 1854 (Fed. Cir. 2000); and Larami Corp. v. Talk To Me Programs Inc., 36 USPQ2d 1840, 1843-1844 (TTAB 1995). Thus, there is no basis for petitioner's allegation that the term ENTREPRENEUR is "clearly generic." (Paragraph No. 65 of the petition to cancel.) Cancellation No. 92053724 11 doing so by the permanent injunction. As a result, his belief in damage is unfounded. In view thereof, no genuine dispute of material fact exists, and petitioner, who is enjoined from using the term ENTREPRENEUR or any colorable imitation thereof or any confusingly similar term thereto, does not have a real interest in cancelling respondent's registration for the mark ENTREPRENEUR EXPO and, thus, petitioner's stated basis for standing is insufficient.6 Accordingly, respondent's motion for summary judgment is granted, and the petition to cancel is dismissed with prejudice.7 *** 6 Our conclusion is based on an application of the terms of the permanent injunction issued by the district court to the facts herein, not specifically on res judicata with respect to that proceeding, except where specifically addressed (e.g., concerning the acquired distinctiveness of respondent's ENTREPRENEUR mark). 7 In view of this dismissal, each party's motion for entry of sanctions against its adversary, and respondent's motion for consolidation, are deemed moot. Inasmuch as petitioner is permanently enjoined from using ENTREPRENEUR or any colorable imitation thereof, the Board will look with great disfavor upon any further actions brought by petitioner against respondent based thereupon. Copy with citationCopy as parenthetical citation