Magazine Industry Resource Library
Law - Publishing

Daniel Urbas is a lawyer with Woods & Partners. His practice focuses on media law, intellectual property, e-commerce and litigation. He can be reached at

The contents of Publishing Law should not be construed as legal advice offered by Masthead or Mr. Urbas. Readers should consult their own lawyers before acting.

Column for June 2002

Canadian magazine titles and U.S. trade-mark law

Magazine publishers of Canadian titles circulated in the U.S. should pay special attention to a recent U.S. Court of Appeal decision involving trade-mark law and magazine titles.

The decision is recommended reading for magazine publishers interested in learning whether or not their magazine title will present trade-mark issues in the U.S. The decision reviews the factors Courts apply in assessing whether or not there may be a likelihood of confusion between someone's magazine title and another's trade-mark.

The Court's decision provides magazine publishers with practical examples of what Courts look at in order to determine confusion.

A copy of the full text of the Ninth Circuit Court of Appeal decision can be accessed by visiting, clicking on "OPINIONS" at the foot of the web page and searching for either case no. 00-56559 or by parties' names: Entrepreneur Media, Inc. v. Scott Smith.


The litigation involved Entrepreneur Media, Inc. ("EMI") and Mr. Scott Smith doing business as EntrepreunerPR.

EMI publishes a monthly magazine titled ENTREPRENEUR aimed at small businesses and their owners. The magazine has a paid circulation of approximately 540,000 and sells for US$3.95. EMI also has a web site located at and, where web users can view online versions of ENTREPRENEUR magazine, and which serves to market and advertise the magazine and other services. EMI also advertises on broadcast and in print media.

In 1987, EMI registered ENTREPRENEUR as a trade-mark in the U.S. in association with wares described as "paper goods and printed matter"; namely magazines, books and published reports pertaining to business opportunities" as well as for "computer programs and programs/user manuals all sold as a unit". The trade-mark obtained what is known as an "incontestable status" after five consecutive years of use following registration. EMI later registered ENTREPRENEUR as a trade-mark for use in association with trade shows and seminars and also registered other trade-marks which include the term ENTREPRENEUR such as: ENTREPRENEUR EXPO, ENTREPRENEUR INTERNATIONAL, ENTREPRENEURIAL WOMAN and ENTREPRENEURMAG.COM.

In 1995, Mr. Smith launched a public relations company for small businesses. In 1997, he changed the name to ENTREPRENEURPR. He also adopted the trade-mark ENTREPRENEUR ILLUSTRATED as the new name for his publication which he distributes free of charge to approximately 3,800 media representatives.

In first instance, the district Court judge granted summary judgment in favour of EMI on its trade-mark infringement claim. Mr. Smith appealed and the Court of Appeal agreed in part with the district Court but reversed the remainder of the decision.

In the appeal, the only element of EMI's trade-mark infringement claim in dispute was whether or not Mr. Smith's use of ENTREPRENEURPR, ENTREPRENEUR ILLUSTRATED and ENTREPRENEURPR.COM were likely to cause confusion as to their origins, sponsorship or approval. EMI was successful only insofar as Mr. Smith used ENTREPRENEUR ILLUSTRATED to title his publication.

Eight-fact test to assess likelihood of confusion

The Court applied the following eight-factor test to assess the likelihood of confusion:

1. The strength of Plaintiff's trade-mark;
2. The similarity of the trade-marks;
3. The proximity or relatedness of the goods or services;
4. Defendant's intent in selecting the trade-marks;
5. Evidence of actual confusion;
6. The marketing channels used;
7. The likelihood of expansion of product lines; and
8. The degree of care consumers are likely to exercise.

These factors were accepted by the Court as the starting point to analyse whether confusion might exist between trade-marks. The decision is lengthy as each of the eight elements are examined in detail by the Court.

The Court stated that "the factors, not surprisingly, tend to overlap and interact, and the resolution of one factor will likely influence the outcome and relative importance of other factors." As the Court underlined, it is the "totality of facts" which lead to a finding on the question of likelihood of confusion.

EMI's ENTREPRENEUR is a "weak" trade-mark

Of special interest in the litigation is the Court's evaluation of what is a strong or a weak trade-mark. The Court explored the difference between strong trade-marks, which are "arbitrary" or "fanciful", and weak trade-marks, which are often referred to as "generic". The Court also explored the difference between "suggestive" and "descriptive" trade-marks.

Because magazines often adopt common elements in their titles, the Court's reasoning is of special assistance to Canadian publishers wishing to introduce their titles into the U.S. The Court said that "descriptive marks define qualities or characteristics of a product in a straightforward way that requires no exercise of the imagination to be understood".

Citing another case, the Court held that a "suggestive mark is one for which "a consumer must use imagination or any type of multi-stage reasoning to understand the mark's significance ... the mark does not describe the product's features, but suggests them'""(at page 2297 citing Kendall-Jackson Winery, 150 F. 3d at 1047 n. 8).

The Court described the result in various other Court decisions involving trade-mark which found the following magazines' titles to be descriptive: "Science", "Alaska", "Sport", "Time", "Travel", "Parent", "College Humor" and "Photoplay".

The Court also found other trade-marks listed on the U.S. trade-mark register for the same class of goods at Entrepreneur magazine and which contained the word ENTREPRENEUR: "Entrepreneur's Alert", "Entrepreneur's Notebook", "American Entrepreneurs' Association", Entrepreneur Insiders Newsletter", "Entrepreneurs Advantage Resource Network", The Entrepreneur's Program", and "The Anonymous Entrepreneur".

In discussing the similarity of the trade-marks, the U.S. Courts have developed three axioms:

1. Trade-marks should be considered in their entirety and as they appear in the marketplace;
2. Similarity is best adjudged by appearance, sound, and meaning; and
3. Similarities weigh more heavily than differences.

Recommended reading

To illustrate how useful the decision can be to magazine publishers, readers should review the decision at pages 2302-2305 to see how the Court examined whether or not the words ENTREPRENEUR and ENTREPRENEUR ILLUSTRATED would create confusion.

For example, to examine whether or not the words ENTREPRENEUR and ENTREPRENEUR ILLUSTRATED were similar, the Court considered the colours, the fonts and even the font sizes used by EMI and Mr. Smith. The Court also looked at how Mr. Smith used the word ILLUSTRATED and even examined how many syllables were in the competing titles and the length of the titles:

Smith's font size and obstructing artwork thus obfuscate the difference in the names of the publications, so that, as the district court concluded, "the word ENTREPRENEUR is the most prominent visual feature of both publications' covers" and consumers are likely to notice only the word "Entrepreneur" on the cover of Smith's publication.

Furthermore, the Court compared readership, advertising rates and content in order to decide whether or not a particular factor favoured one party more than another. Readers are encouraged to review how U.S. Courts might look at a newcomer's title and compare it against an existing trade-mark.

Court's conclusions

In the end, as a result of the Court's detailed analysis, the Court found that only Mr. Smith's use of ENTREPRENEUR ILLUSTRATED would create confusion with EMI's registered trade-mark ENTREPRENEUR for use in association with magazines. The Court of Appeals enjoined Mr. Smith's use of the term ENTREPRENEUR ILLUSTRATED on the cover of a printed publication if such use obstructs or otherwise downplays the word ILLUSTRATED. Mr. Smith can use the term ENTREPRENEUR ILLUSTRATED; he simply has to make sure that both words are the same size and that the word ILLUSTRATED is not obscured in any way. However, EMI failed to demonstrate that Mr. Smith had infringed its trade-mark for the balance of the allegations of trade-mark infringement.

The Court held that none of the eight factors weighed strongly in favour of finding a likelihood of confusion. The Court relied on the weaknesses of EMI's trade-mark which alone led the Court to conclude there was no infringement as a matter of law.

The Court concluded that "consumers will likely recognize that the word "entrepreneur" as used in Smith's mark refers to small, independent business owners, not to EMI, making EMI's showings as to other factors less persuasive on the ultimate question of likelihood of confusion than they otherwise would be."

A word of caution: while the Court decision is helpful, magazine publishers should still consult a U.S. lawyer before adding the word ENTREPRENEUR to a magazine title or commencing use of any other trade-mark in the U.S.

Note: Mr. Smith was represented in his litigation by Mr. Jeffrey S. Kravitz of Sacramento, California. He can be reached by telephone at 916-553-4072 or by e-mail at