Does Your Show Have a Generic Name? Think Again.

TSE STAFF
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Irvine, CA- Choosing a name for a trade show may take into account the market, audience, location or product. What’s sometimes overlooked is whether the name includes seemingly generic words that may be trademarked.

Take “entrepreneur” for instance — a word that traces its French roots to the early 18th  century. While it would appear to be a mainstream generic word, someone does own it: Irvine, CA-based Entrepreneur Media Inc., publishers of Entrepreneur magazine and organizers of various Entrepreneur Expo events.

Entrepreneur Media also aggressively defends that trademark. Those who are caught offguard have ended up on the short end of the financial stick and been forced to revamp their event, company name, seminar or business expo because of it. Just ask Scott Smith, a Sacramento public relations professional who was forced to drop his “EntrepreneurPR” moniker when Entrepreneur Media attorneys successfully claimed trademark infringement for use of the word “entrepreneur.” Smith has fought a nearly two-decade battle over the issue and is still on the hook for more than $1.6 million in damages awarded to Entrepreneur Media nine years ago by the Ninth Circuit Court of Appeals and upheld twice since then through the bankruptcy courts.

Now, Smith has filed his own lawsuit claiming Entrepreneur Media committed fraud against the U.S. Patent & Trademark Office (PTO) in swearing to the PTO that it was still using the Entrepreneur Expo trademark when it was no longer producing expos.

Ryan Shea, president of Entrepreneur Media, told Trade Show Executive that the original expo format is no longer used; instead the company uses “Entrepreneur Expo” as the entity that organizes an annual expo sponsored by the UPS Store and for an annual awards event next slated for January in Dallas.

Shea said the company did not renew its “Small Business Expo” trademark in 2010 and that one expired in May 2011. “We hold our trademarks valuable and are planning to use the ones that we still have,” Shea said.

He said some uses might go unchallenged — perhaps versions such as “XYZ State Entrepreneur Expo”— because they’re unlikely to be confused with the magazine or Entrepreneur Media events. A quick Google search reveals at last half a dozen such expos in 2012 from coast to coast.

While it’s up to the courts to decide the merits of this case, show organizers might want to ratchet up their efforts to find out if anyone holds a trademark for that seemingly innocuous ‘fan festival,’ ‘olde book faire’ or Entrepreneur Expo, because ‘entrepreneur’ isn’t the only seemingly generic word at play in the trademark world.

Last year, Hobby Star Marketing of Toronto, which stages the Toronto Fan Expo, filed an injunction against organizers of the Ultimate Fighting Championship league and Reed Exhibitions over the use of the name “UFC Fan Expo” in Toronto. And San Diego’s Comic-Con International has been mentioned as ripe for the same sort of tussles, though some legal experts have opined that the use of the phrase prior to the existence of the convention and Comic-Con’s own liberal policy of allowing others to use the name might negate the possibility of trademarking.

Smith contends the bigger issue for trade shows is the integrity of the event. “If you get sued for your name, then sponsors, exhibitors, and possibly attendees may be reluctant to take part,” he said.

Some intellectual property scholars told Bloomberg News that recent federal trademark rulings have trended toward a new broad definition of what constitutes “consumer confusion” about trademarks. Given that, there may be an increased need to practice increased vigilance in the realm of intellectual property to protect the integrity of the brand that each show and organizer strives to build for itself.

Reach Scott Smith at (916) 453-8611 or scott@bizstarz.com; Ryan Shea at (949) 261-2325 or rshea@entrepreneur.com