California Apparel News

Entrepreneur Media Inc., the owner of Entrepreneur magazine and other publications and Web sites, demanded that a San Diego apparel company withdraw a federal trademark application for the word “entrepreneur” and cease using the mark on its clothes.

Latham & Watkins LLP, the legal counsel for Irvine, Calif.–based Entrepreneur Media, sent a cease-and-desist letter in July 2004 to Heather L. Tornincasa, marketing director of 3Entrepreneurs LLC. Tornincasa had filed applications in April 2004 with the U.S. Patent and Trademark Office (USPTO) to register “entrepreneur” and “entrepreneur generation” for use on T-shirts, sweaters, hats, shoes and other clothing.

The patent and trademark office completed final review of her applications in December. Companies and individuals will soon be able to oppose her applications.

By receiving the cease-and-desist letter, Tornincasa joined a growing list of entrepreneurs who have been requested by Entrepreneur Media not to use “entrepreneur” in business names or products.

Entrepreneur Media has prevailed in various lawsuits it filed against small companies over trademark infringement. In 1998, the company sued Entrepreneur PR, a Sacramento, Calif.–based company that handles public relations for entrepreneurs. The case went to trial five years later. A federal judge ruled that Scott Smith, the owner of EntrepreneurPR, had to pay $1.4 million, including attorneys’ fees and damages, to Entrepreneur Media. The federal court ruled that “the mark ’entrepreneur’ is a strong, distinctive mark, deserving of significant protection.”

The U.S. Ninth Circuit Court of Appeals later upheld that ruling. Smith said he eventually changed his company’s name to BizStarz and filed for personal bankruptcy in 2001.

The case against Tornincasa underscores the difficulties for apparel companies launching new products and labels.

Greg Weisman, a partner at Silver & Freedman PLC in Los Angeles and chair of the law firm’s apparel practices group, said most apparel companies receive one ceaseand- desist letter regarding trademarks per year. “Odds are someone somewhere has used, is using or intends to use your mark on clothing,” he said. Weisman advised that the best trademark is a word you create yourself.

According to the electronic database for the USPTO, Entrepreneur Media has filed 85 trademark applications for phrases ranging from “entrepreneur” to “entrepreneurial woman” to “entrepreneur expo.”

Mark Finkelstein, a lawyer who is representing Entrepreneur Media in Latham & Watkins’ office in Costa Mesa, Calif., said Entrepreneur Media began registering numerous trademarks related to magazines, online businesses and other goods 20 years ago. He said the company did not apply for a trademark on clothing but it has branded promotional items such as T-shirts with the “entrepreneur” mark. If Tornincasa were to use the trademark on her clothing, “we think there is a likelihood of confusion for the public,” Finkelstein said. “Our goal is to have her abandon her trademark application and not use ’entrepreneur’ for these goods and services.”

Entrepreneur Media will likely oppose the trademark during the opposition period, Finkelstein said.

Tornincasa said in an e-mail that 3Entrepreneurs will act accordingly if anyone opposes its trademarks. She admitted that she did not respond to the cease-and-desist letter. She said 3Entrepreneurs plans to launch its first clothing line, called Entrepreneur Generation or E Generation.

—Khanh T.L. Tran