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Paragraph that sums the article: An attorney with the corporate law firm Latham & Watkins informed Castro that EMI owns the U.S. trademark for the word "entrepreneur." With 2,000 lawyers in 31 offices around the world, Latham polices EMI's intellectual property aggressively. The firm even instructed Castro to surrender his domain name to EMI. "If you fail to abide by these demands," the letter said, "Entrepreneur Media will have no choice but to take appropriate action to prevent continued use of an infringing mark and domain name."
Looks like an app store issue! How can a business trademark a single English word that effectively describes the industry?
You mean, like "realtor"? http://en.wikipedia.org/wiki/National_Association_of_Realtor...
> Realtor is a frequently-used word in many countries to describe any person or company involved in the real estate trade, regardless of their NAR status or American residence. However, in the United States, the National Association of Realtors in 1949 and 1950 obtained registrations for the words "Realtor" and "Realtors" as collective trade marks.
> In 2003, Jacob Joseph Zimmerman, a real estate agent who was not a member of NAR, petitioned the U.S. Patent and Trademark Office to cancel the trademarks, on the ground that "Realtor" and "Realtors" were generic terms rather than a trademark. On March 31, 2004, the USPTO's Trademark Trial and Appeal Board denied the petition.
But the term realtor was invented by the association to describe its members, specifically to differentiate them from other real estate agents. It's more like a "genericized brand name", not a previously existing English word.
To make things worse, they have to protect their trademark aggressively, else they do become generic:
"The courts read any failure to protect your trademark as good reason for the courts to not help you protect it later when you find the infringement significant. As the trademark attorney in the clip noted, Elevator, Thermos, Aspirin, and Trampoline all lost their rights to their trademarks, because they didn't "police" their trademarks."
From: http://stosselintheclassroom.org/video_activityMar08.html
(Important for startups:
http://blog.startupipservices.com/archives/top-startup-trade...
I'm sure you knew already, but it doesn't hurt to reinforce the importance of trademarks.)
Edit: dotBen made a similar point further down the thread
To make things worse, they have to protect their trademark aggressively, else they do become generic
So what is the downside in this scenario? How is Bayer hurt by not owning an Aspirin trademark any longer?
Quick: Who made Kleenex?
The answer is Kleenex. Now try to tell someone in a general conversation that you when you're talking about Kleenex, you meant 1) the actual company Kleenex, not the 2) product nor the 3) other generic tissue paper products. Because now you have to explain to consumers why your Kleenex is better than your competitors Kleenex, when before you could just say 'Kleenex, the brand that works' or 'Kleenex, the brand you trust' or just plain 'Kleenex'. Even if it's just a name, if you reduce the number of ways for you to differentiate your product from others, it just makes it harder to do so.
I knew there was a reason I hated that word - it always sounded phony.
I generally refer to them as agents or brokers. Those terms are more specific because, at least in the U.S., there is a legal distinction between the two.
I think the only times I've ever said "realtor" has been when it was informal. Having researched the NAR, MLS, etc. before selling my house, it seemed fairly obvious that realtor was a trade name and something I just assumed was trademarked.
Trademark law does not seem to care how inherently generic a term is, or about the history of the term. All that matters is whether the term currently serves as a distinctive trademark and whether the alleged infringing use is as a competing trademark.
This is why it's ok to use the word "entrepreneur" in general, but not as the name of a magazine or "communication product".
Great startup idea... trademark the word "Hacker" and you instantly have a new trademark troll business in your pocket.
I'm curious if it would stand up in court.
Microsoft owns the trademark for "Windows", but walk into a hardware store and you'll see dozens of companies that freely use windows in their name. I've never heard of Microsoft going after them.
Trademarks are granted for certain products and services. In Microsoft's case, it's computer services or something. If you try to offer an operating system with a name that has Windows in it, then you would be sued.
Here's an example: https://secure.wikimedia.org/wikipedia/en/wiki/Microsoft_vs....
You're right in general, but that example doesn't support it: MS didn't win, but bought the trademark. For $20 million.
Here's a list of other trademark litigation cases: https://secure.wikimedia.org/wikipedia/en/wiki/Microsoft_lit...
No one is likely to confuse panes of glass with an operating system. If those same hardware companies started selling branded software, or probably even computer hardware for that matter, it would likely be a different story.
Legend has it that DEC and Hoover periodically sued each other over the trademark for VAX.
That's because trademarks only apply to a particular line of business - specific 'goods and services'. Along the same lines, if I wanted to open a business called Dell in the line of plumbing, that would be fine as long as I stayed away from the computing business under that name. Sometimes, there's a conflict when the definitions may overlap - Apple Corps (Records) vs. Apple Computer, for instance.
In the US, there are two ways to infringe trademarks:
1) Using the trademark in a way likely to cause confusion - generally has to be in the same line of business.
2) Trademark dilution - using a famous, distinctive brand and making it a generic term.
Entrepreneur, Apple and Windows aren't distinctive in their own rights (the logos might be, however), but some names certainly are.
Some seminal examples of this (in Australia at least) include "McDonald's" (pretty much impossible to brand any good or service, no matter its class, as such) and "Nike" (the shoe manufacturer prevented the manufacture of "Nike" perfume).
Entrepreneur Magazine is the exact match domain of the magazine world. Because of the name entrepreneurs will always read it, but the content is rarely good enough to be worth buying or even shelf-reading.
I totally disagree about the content.
I find it to be the absolute best small business / entrepreneur magazine out there. I prefer it over Inc and others by far.
It opens your eyes beyond tech as it covers so much ground.
When I hear EMI, I don't think of Entrepreneur magazine. I think of the EMI Group, the British music company. It seems this "EMI" has some other brand confusions to take care of.
A quick search on uspto.gov reveals that there are several "EMI" trademarks.
> In the end, Ernst and EMI settled their differences confidentially and out of court.
Pragmatic.
Curious side-note: when it was first introduced into Victoria Australia, Hungry Jacks (Burger King in US) failed to trademark the term "whopper", because was a generic term. But, today, it's a registered trademark. Over time, advertising can create an association.
Should 50 people be allowed to create magazines titled "Entrepreneur", regardless of whether the word is commonly used. If you are the first to think of something, shouldn't you have some limited right to protect whatever investment you are making in developing the idea. It is certainly fair to ask if someone else's magazine title is sufficiently similar as to be confusing, but that isn't a question for a judge and/or jury to adjudicate.
As technologists, we may instinctively view most attempts to use the law to protect intellectual property as abusive, but at least there is a transparent, although expensive, way to solve conflicts.
Think for a moment about how brands, like Entrepreneur Magazine, are built on the internet. The authors work very hard to develop interesting content and then try to get Google to rank the content. Unless you get very large, or spend a lot of money in traditional brand advertising, it is unlikely that anyone will find your content without Google's help. If someone comes along and steals your content, and puts it on a more "trusted" site it may well be seen by more people than the original (there have been plenty of Hacker News articles pointing this out). In this case, the only redress is to try to get Google to listen - certainly an uphill battle. Again, as technologists, we may feel that Google system is fairer because its an algorithm, but when a spammer abuses the system there is rarely any redress.
Do any HN'ers actually read Entrepreneur magazine?
I used to. Like another comment says, because of the name many aspiring entrepreneurs read it.
The thing is, when you don't know what you don't know it takes a while to recognize good advice from piles of obvious bullshit like this magazine articles.
I used to subscribe. It's not bad: gives a nice overview of different businesses each month. But I let the sub. lapse after two years because it wasn't worth it. However, I did go to one of their (free) conferences and it was pretty good.
I'm not sure what the author of the article is trying to prove... that trademark law can be (and is being) abused? At least he had the integrity to quote the EMI lawyer throwing examples back of Bloomberg engaging in similarly questionable legal action.
As several people have already pointed out, there is Windows, there is Time. Oddly no-one has yet mentioned Face and Book.
There is a difference: Microsoft Windows has nothing to do with panes of glass in walls; Time Magazine is not about clocks or watches. You're not supposed to be able to trademark a pre-existing industry term within its own industry; Lowe's Hardware should not be able to register "plywood" as trademark for plywood and sue Home Depot.
They also own a magazined called "StartUps": http://www.entrepreneur.com/magazine/startup/index.html
Does that mean they will sue all the companies with the word "startups" in their domain name as well?
Here's a sideways look at this:
If you have a trademark you are legally required and compelled to go after anyone who is infringing on it. Otherwise it is deemed that you have let it lapse into the public domain.
enter debate on trademarks, patents, blah blah etc...
My point is that clearly EMI should not have been awarded a trademark on the term "entrepreneur" in the first place. However, once that trademark was granted, there was no other option but for them to start aggressively guarding it.
(and to a lesser extent EMI, if they had any decency, shouldn't have attempted to trademark it).
Don't hate the player, hate the game, etc
Don't hate the player, hate the game, etc
I'm amazed that almost invariably, when a business doing something egregiously despicable pops up hear, someone here comes up with a "don't hate the player..." type argument.
But the argument falls flat in this case. Entrepreneur Magazine could give up with their trademark tomorrow if they wished. The only thing your argument shows is that to keep their evil, parasitical business model, they have to keep aggressively pushing that evil, parasitical legal extortion on all concerned - they can't just lazily extract only a few unearned bucks from a few unlucky folks.
I think we can hate the player and the game here...
As I said elsewhere, if they gave up the trademark, someone else would probably register it and do the same. Thus hate the game.
And I suppose if I didn’t <negative action verb> your <relative>, some other bloke would?
And that person would be despicable as well, thus it is a false dichotomy for anyone to assert that because the game is worth hating, those who choose to play a hated game are exempt from scorn.
…clearly EMI should not have been awarded a trademark on the term "entrepreneur" in the first place.
They didn't get awarded the trademark in the first place.
As the article says, Chase Revel, who started Entrepreneur in the '70s, registered the trademark for "entrepreneur" and began to enforce the mark. The trademark went along with the magazine when it was sold in '87.
Don't you think this might be taking pedantry a bit too far? While technically true, it doesn't really add value to the conversation.
No, I don't think this is taking pedantry a bit too far.
As other replies to the parent comment show, people seem to feel that this sort of abuse (meaning the registering of absurdly generic trademarks) is typical of a large organisation like EMI.
The fact is, this is a false belief (at least in this case).
It's false as EMI didn't trademark the word. We can go around blaming cultures like EMI's for mistakes made by individuals decades earlier, but I don't think that's a valid way to argue. Do you?
(and to a lesser extent EMI, if they had any decency,
shouldn't have attempted to trademark it).
The other central problem is that the US courts seem to support this blatant abuse of the law.
That's kind of a can of worms.
On one hand, you probably wouldn't be noticed for not suing people for the name. No one would really have the opportunity to appreciate your benign decision to not engage an exclusivity to your trademark.
On the other hand, if you were so benign, then one day another magazine comes along, called "New Entrepreneur", and you try to defend yourself - only to find your case thrown out when they can prove you routinely don't defend your trademark.
But then again, doesn't that lead to another point? You can defend that you don't seek to have the trademark ubiquitously across industries, just in the magazine and publication industry.
Or is trademark law so sweeping that a business is unable to have a trademark in only the practicing industry? (If so, Square & Square Enix come to mind as outliers from this example.)
Both are guilty of this. EMI wasn't under duress to trademark it.
Unless someone else was threatening to trademark it instead.
I have personal experience of someone having to trademark something simply because if they didn't the other party was going to and then they'd have no choice but to lose all rights to it.
Like I said enter discussion about the brokenness of patents, trademarks, etc
Given this article, I'm kind of surprised that they are using @EntMagazine for their Twitter handle. Why not sue @entrepreneur into submission too?
Stardock was one of the victims that had a game called it.
quoth: EMI sees no irony, let alone bullying. In an e-mail, the company's lead attorney at Latham, Perry J. Viscounty...
lol Perry J. Viscounty
Wow