Scott Smithv.Entrepreneur Media, Inc.

Trademark Trial and Appeal Board

Sep 22, 2011

No. 92053724 (T.T.A.B. Sep. 22, 2011)

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
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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
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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
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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
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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
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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
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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.