By Eileen Ambrose, The Baltimore Sun
8:05 PM EST, November 15, 2013
Back in 2000, Entrepreneur's StartUps magazine featured an article about Janice McLean Deloatch as she was trying to launch a business in Maryland that dispensed pantyhose from vending machines.
The venture didn't take off. But the Abingdon resident took what she learned from the experience to create "The Entrepreneurs Edge," a monthly public access cable TV program dispensing advice for entrepreneurs and small businesses.
A dozen years after that favorable article, though, the magazine's parent sued McLean Deloatch for using the word "entrepreneur" in the show's title.
"They can't monopolize a word that's used in everyday language," McLean Deloatch said. "That's in the dictionary."
Apparently, the company can, and McLean Deloatch joined a growing list of entrepreneurs sued by the California-based media company for trademark infringement. Entrepreneur Media Inc., owner of Entrepreneur Magazine and other publications, maintains that it has used the Entrepreneur mark for more than 30 years and doesn't want consumers confusing its brand with others using similar names. But many see a paradox in the company's aggressive pursuit of those who are the publication's bread and butter — entrepreneurs.
"It does seem very unusual that the very people that would have the most interest in [the magazine] are the ones they are going after," said Stacey B. Lee, assistant professor of business law at the Johns Hopkins University.
Neither Entrepreneur Media nor its lawyers returned phone calls or emails seeking comment.
For Marylanders, this case might be reminiscent of the brouhaha after the discovery that Cafe Hon owner Denise Whiting had trademarked "Hon," a term regularly used by Baltimoreans. She later relinquished the trademark after much bad publicity and a drop in sales at her Hampden restaurant.
Trademark experts, though, say it's not unheard of for commonplace words to be trademarked.
"Think of Time magazine. We all use the word 'time' every day in conversation," said Hank Boyd, associate chair of the marketing department at the University of Maryland, College Park. "When you think of the brand of Time, they own it. That is their trademark and, therefore, they will protect it."
Indeed, Boyd said, a company can create a distinctive trademark but let it slip away by not protecting it, allowing the term to become generic.
That happened with aspirin, thermos, escalator, dry ice, shredded wheat, linoleum and trampoline — all terms that lost trademark protection as they fell into general use, said Darryl C. Wilson, a professor at the Stetson University College of Law in Florida.
Ed White, an intellectual property lawyer with LeClairRyan in Richmond, Va., said the strongest trademarks are arbitrary or fanciful, such as Kodak — a made-up word that firmly became associated with film.
But descriptive terms, such as entrepreneur, are weaker because they describe the nature of the person or the goods and services provided and thus more likely to be adopted by others, White said. And that means a company will have to be more vigilant about protecting its trademark.
Entrepreneur Media has been that. It opposes attempts by others trying to register a trademark with the word "entrepreneur" in them. And it has sued businesses that have used such names as Entrepreneur PR, U.S. Entrepreneur Today, Entrepreneur Hall of Fame, EntrepreneurOlogy, Seattleentrepreneur.com and entrepreneuressmag.com.
Sued by Entrepreneur Media this year, the Nashville Entrepreneur Center filed a countersuit alleging that "EMI has gained a reputation for suing entrepreneurs and stifling innovation by attacking small businesses, individuals and nonprofit organizations that use the word 'entrepreneur' to identify goods and services."
The legal battle was settled with the nonprofit agreeing to use its full legal name — it has called itself the Entrepreneur Center — and to give up its domain name, entrepreneurcenter.com.
"You have to be very careful when selecting a name for your company and product, and do the appropriate research," said Elana Fine, managing director at the Dingman Center for Entrepreneurship at College Park.
Fine said Entrepreneur Magazine supports startups and is the source for things related to entrepreneurship.
"They have a lot invested in their brand," she said. While she hasn't been following the cases, she conceded that the company "may be construed as going overboard."
Often it's difficult for small businesses to fight back.
"You need the money and the resources to take on those battles, and a lot of these startups and fledgling entities don't have that," Boyd said.
That was the case with "The Entrepreneurs Edge."
McLean Deloatch, who works part time at a Harford County school library, launched the cable program a decade ago to offer tips and resources information for entrepreneurs and small businesses.
According to Entrepreneur Media's lawsuit filed in July 2012, the company contacted McLean Deloatch several times about the potential for consumers to confuse her show with its business enterprise, but she continued to use the name. McLean Deloatch contends that she never received any cease-and-desist letters.
The lawsuit against McLean Deloatch and her businesses, JMD Entertainment Group and JMD Entertainment and Media Group, says that the Entrepreneur trademark has been used for decades by the publishing company and was first registered in 1987.
Entrepreneur Media Inc. said it is "very concerned that consumers will likely suffer confusion and mistakenly believe that defendants and their services are endorsed by or affiliated with EMI."
The company wanted McLean Deloatch to stop using "The Entrepreneurs Edge" name and to be awarded the domain name, entrepreneursedgetv.com.
"This magazine is supposed to help build entrepreneurs, not destroy them," McLean Deloatch said. "They are bullying us."
The U.S. District Court for Maryland twice gave McLean Deloatch an extension of time to hire an attorney to represent her businesses. But she said intellectual property lawyers often required a hefty retainer — money she didn't have.
"If I had $10,000 lying around, I would have a lawyer," she said.
The case required a lawyer to represent the businesses, and without one, McLean Deloatch missed a deadline to respond to the complaint. In a July decision, the court sided with Entrepreneur Media and ordered McLean Deloatch's businesses to pay $18,126 — their estimated profits over the years — to the media company.
Entrepreneur Media wanted triple damages and its legal fees paid, but the court denied that, saying financial hardship was the reason the defendants couldn't hire a lawyer.
Not everyone agrees with the court's decision.
"It's crazy to me," said Wilson, the law professor. The test, he said, is whether the general public would likely confuse the two enterprises.
"If anyone asked me about entrepreneurs, I would never think of Entrepreneur Magazine," he said.
McLean Deloatch said she's disappointed in the court's decision — and in the American dream that says hard work will be rewarded.
She stopped taping new "Entrepreneurs Edge" programs in May to take a break. She expects to launch a new program soon.
But this one will be called "The Janice McLean Show."
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