ENTREPRENEUR MEDIA V SMITH

FOR PUBLICATION

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

ENTREPRENEUR MEDIA, INC., A

California Corporation,

No. 00-56559 Plaintiff-Appellee,

D.C. No. v. CV-98-03607-FMC SCOTT SMITH, an Individual dba

OPINION

ENTREPRENEURPR,

Defendant-Appellant.

Appeal from the United States District Court

for the Central District of California

Florence Marie Cooper, District Judge, Presiding

Argued and Submitted

September 11, 2001--Pasadena, California

Filed February 11, 2002

Before: Betty B. Fletcher, Thomas G. Nelson, and

Marsha S. Berzon, Circuit Judges.

Opinion by Judge Berzon

2288

2289 COUNSEL

Jeffrey S. Kravitz, Sacramento, California, for the defendant-

appellant.

Mark A. Finkelstein, Latham & Watkins, Costa Mesa, Cali-

fornia, for the plaintiff-appellee.

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OPINION

BERZON, Circuit Judge:

Entrepreneur Media, Inc. ("EMI"), publisher of Entrepre-

neur magazine, contends that Scott Smith infringed EMI's

federally registered trademark "ENTREPRENEUR" by using

the word "entrepreneur" in connection with his public rela-

tions company. The district court, Cooper J., granted sum-

mary judgment in favor of EMI on its trademark infringement

claims, and Smith appeals. We affirm in part, reverse in part,

and remand for a trial on the merits.

I. BACKGROUND

A. Entrepreneur Media, Inc.

Since 1978, the appellee EMI has published Entrepreneur

magazine, a monthly publication geared towards small busi-

nesses and their owners. Entrepreneur has a paid circulation

of approximately 540,000 and sells for $3.95 on newsstands.

Advertisements in Entrepreneur cost the advertiser from

$12,000 to just over $60,000 per issue. EMI also publishes

other magazines, books, computer software, and audio and

2290

video tapes, and participates in trade shows and seminars, all

in connection with the world of small business.

EMI has a Web site with the domain names "entrepre-

neur.com" and "entrepreneurmag.com." On the Web site, vis-

itors can view on-line versions of Entrepreneur magazine,

subscribe to the publication, interact with other visitors, and

learn about business opportunities. EMI uses the Web site for

marketing and advertising, and also advertises on radio, on

television, and in print. Additionally, EMI promotes small

business events and sends complimentary copies of its maga-

zine to other members of the media.

In 1987, EMI registered the term "ENTREPRENEUR " as

a trademark on the federal Principal Register in International

Class 16 for "paper goods and printed matter; namely maga-

zines, books and published reports pertaining to business

opportunities" and in International Class 9 for"computer pro-

grams and programs/user manuals all sold as a unit. " The

mark has attained incontestable status for the paper good and

computer program categories. 1 In 1995, EMI registered the

term "ENTREPRENEUR" as a service mark for trade show

exhibitions, seminars, and workshops. EMI has also registered

various other marks, including: "ENTREPRENEUR EXPO,"

"ENTREPRENEUR INTERNATIONAL," "ENTREPRE-

NEURIAL WOMAN," and "EntrepreneurMag.com."

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1 A mark attains incontestable status in a category if the registrant con-

tinuously uses the mark for five consecutive years after registering it in

that category and certain other requirements have been met. This status

gives EMI the exclusive right to use the mark on or in connection with that

category. 15 U.S.C. §§ 1115(b), 1065.

Thus, if Smith used in one of the protected categories a mark identical

to EMI's, he would necessarily infringe EMI's trademark. Smith, how-

ever, uses marks that incorporate, but nonetheless differ from, EMI's

mark. Incontestability therefore does not resolve the infringement issue,

and we must decide if the trademark protection to which EMI is entitled

encompasses the marks Smith uses.

B. Scott Smith d/b/a EntrepreneurPR

In 1995, the appellant Smith started a public relations com-

pany for small businesses called ICON Publications. ICON

produced a publication entitled Yearbook of Small Business

Icons, containing copyright-free articles about ICON's clients,

and distributed the Yearbook free of charge to various media

contacts, with the goal of increasing the clients' media cover-

age. ICON also operated a Web site, at iconpub.com.

When Smith decided to publish the Yearbook on a quarterly

rather than yearly basis he also decided that name changes

were in order. Smith hired a name-consultation firm, had a

trademark search performed, and, in 1997, settled on"Entre-

preneurPR" as the new name for his company, Entrepreneur

Illustrated as the new name for the Yearbook , and entre-

preneurpr.com as his new Web site address.

EntrepreneurPR's clients pay $10,000 per year for inclu-

sion in Entrepreneur Illustrated, distributed to approximately

3,800 media representatives free of charge. Entrepreneur

Illustrated does not otherwise accept paid advertisements.

C. Procedural History

EMI filed this case in 1998, alleging trademark infringe-

ment, unfair competition, and counterfeiting under the Lan-

ham Act, 15 U.S.C. § 1125, and unfair competition under the

California Business and Professions Code § 17200. Both par-

ties moved for summary judgment. The district court granted

EMI's motion on the trademark infringement and unfair com-

petition claims, denied EMI's motion on the counterfeiting

claim, and denied Smith's motion in its entirety. EMI there-

upon dismissed its claim for counterfeiting. After supplemen-

tal briefing, the court, on August 29, 2000, awarded EMI

$337,280 in damages and enjoined Smith from using any

marks confusingly similar to "Entrepreneur," including the

terms "Entrepreneur," "EntrepreneurPR,""Entrepreneur Illus-

trated," and "Entrepreneur.com" [sic].

Smith filed a timely Notice of Appeal on September 11,

2000. On October 23, 2000, this court denied Smith's emer-

gency motion to stay the judgment pending appeal. We have

jurisdiction pursuant to 28 U.S.C. § 1291.

II. ANALYSIS

A. Standard of Review

This court reviews the district court's grant of summary

judgment de novo. See Interstellar Starship Servs., Ltd. v.

Epix, Inc., 184 F.3d 1107, 1109 (9th Cir. 1999). We must

determine whether, "viewing the evidence in the light most

favorable to the nonmoving party, . . . there are any genuine

issues of material fact, and whether the district court correctly

applied the relevant substantive law." Wendt v. Host Interna-

tional, Inc., 125 F.3d 806, 809-10 (9th Cir. 1997). "Because

of the intensely factual nature of trademark disputes, sum-

mary judgment is generally disfavored in the trademark

arena." Interstellar, 184 F.3d at 1109 (citing Levi Strauss &

Co. v. Blue Bell, Inc., 778 F.2d 1352, 1356 n.5 (9th Cir.

1985)).

B. The Trademark Infringement Claim

"The Lanham Act provides national protection of trade-

marks in order to secure to the owner of the mark the good-

will of his business and to protect the ability of consumers to

distinguish among competing producers." Park`N Fly, Inc. v.

Dollar Park and Fly, Inc., 469 U.S. 189, 198 (1985). To

achieve these goals, the Act allows for civil liability against

"[a]ny person who, on or in connection with any goods or ser-

vices, . . . uses in commerce any word, term, name, symbol,

or device, or any combination thereof . . . , which (A) is likely

to cause confusion . . . as to the origin , sponsorship, or

approval" of the goods or services. 15 U.S.C.§ 1125(a)(1)

(emphasis added).

The only element of EMI's trademark infringement

claim in dispute is whether Smith's use of the terms"Entre-

preneurPR," "Entrepreneur Illustrated, " and "entrepreneur-

pr.com" are "likely to cause confusion" as to their "origin,

sponsorship, or approval." Id. "The test for likelihood of con-

fusion is whether a `reasonably prudent consumer' in the mar-

ketplace is likely to be confused as to the origin of the good

or service bearing one of the marks." Dreamwerks Production

Group, Inc. v. SKG Studio, 142 F.3d 1127, 1129 (9th Cir.

1998).

In AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49

(9th Cir. 1979), this court developed an eight-factor test "in-

tended to guide the court in assessing the basic question of

likelihood of confusion." E. & J. Gallo Winery v. Gallo Cattle

Co., 967 F.2d 1280, 1290 (9th Cir. 1992). The Sleekcraft fac-

tors, as applied to this case, are:

1. The strength of EMI's trademark; 2. The similarity of the marks; 3. The proximity or relatedness of the goods or ser- vices; 4. Smith's intent in selecting the 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 exer- cise.

Sleekcraft, 599 F.2d at 348-49. The ultimate question of like- lihood of confusion "is predominantly factual in nature," as is each factor within the Sleekcraft likelihood of confusion test. Wendt, 125 F.3d at 812.

Although the Sleekcraft test plays an important role in the

analysis of whether a likelihood of confusion exists, "[i]t is

the totality of facts in a given case that is dispositive." Rodeo

Collection, Ltd. v. West Seventh, 812 F.2d 1215, 1217 (9th

Cir. 1987). After applying the Sleekcraft analysis, we agree

with the district court's ultimate finding of likelihood of con-

fusion as a matter of law only as to the use of the mark "En-

trepreneur Illustrated" on the cover of EntrepreneurPR's

printed publication. We therefore reverse the grant of sum-

mary judgment and remand except as to that issue; we affirm

the grant of summary judgment on the question whether

Smith infringed EMI's trademark by his use of the mark "En-

trepreneur Illustrated" on the cover of that publication.

1. Overview of the Sleekcraft Analysis

The Sleekcraft factors are, as E. & J. Gallo says, a "guide"

to decision-making, intended to channel the analytical process

but not dictate any result. 967 F.2d at 1290. Since each factor

represents only a facet of the single dispositive issue of likely

confusion, 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. For

instance, as this case demonstrates, if the trademark holder's

mark is weak, "only if the marks are quite similar, and the

goods closely related, will infringement be found. " Sleekcraft,

599 F.2d at 350.

Thus, we do not decide whether confusion is likely by con-

sidering mechanically the number of Sleekcraft factors that

weigh in favor of either party, or by giving the same weight

to a particular factor from case to case. Brookfield Communi-

cations, Inc. v. West Coast Entertainment Corp., 174 F.3d

1036, 1054 (9th Cir. 1999). To do so would be entirely mis-

leading, as the determination of one factor is often, in essence,

only another way of viewing the same considerations already

taken into account in finding the presence or absence of

another one. Rather, as we apply the Sleekcraft test, we con-

sider what each factor, and -- more importantly -- what the

analysis as a whole, reveals about the ultimate question before

us: the likelihood of consumer confusion as to the origin of

the product or service bearing the allegedly infringing mark.

2. Application of the Eight Factors

a. The Strength of EMI's Mark

The scope of the trademark protection that we give marks

depends upon the strength of the mark, with stronger marks

receiving greater protection than weak ones. See Miss World

(UK) Ltd. v. Mrs. America Pageants, Inc., 856 F.2d 1445,

1448 (9th Cir. 1988). This is so because a strong mark is "in-

herently distinctive," Sleekcraft, 599 F.2d at 349, and there-

fore it is more likely that consumers will be confused by

another's use of the same or similar mark. Since we conclude

on this record that EMI's mark is weak, this factor does not

weigh in favor of a likelihood of consumer confusion.

"The strength of a mark is determined by its placement

on a continuum of marks." E. & J. Gallo, 967 F.2d at 1291

(citation and internal quotation marks omitted). The strongest

marks -- that is, those which receive the maximum trademark

protection -- are "arbitrary" or "fanciful." Id. The weakest

marks, entitled to no trademark protection, are"generic." Id.

In between lie "suggestive" and "descriptive" marks; sugges-

tive marks have the greater strength of the two. Id. The issue

here is whether EMI's mark "ENTREPRENEUR" falls within

the suggestive or descriptive category. 2

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2 A fanciful mark is "a coined word or phrase, such as Kodak, invented

solely to function as a trademark." Official Airline Guides, Inc. v. Goss,

"Descriptive marks define qualities or characteristics of a

product in a straightforward way that requires no exercise of

the imagination to be understood." Kendall-Jackson Winery,

150 F.3d at 1047 n.8 (emphasis omitted); see also Brookfield,

174 F.3d at 1058 n.19 ("Descriptive terms directly describe

the quality or features of the product."). A suggestive mark is

one for which "a consumer must use imagination or any type

of multistage reasoning to understand the mark's significance,

. . . the mark does not describe the product's features, but sug-

gests them." Kendall-Jackson Winery, 150 F.3d at 1047 n.8

Whether a mark suggests or describes the goods or services

of the trademark holder depends, of course, upon what those

goods or services are. We therefore adjudge a mark's strength

"by reference to the goods or services that it identifies,"

Rodeo Collection, 812 F.2d at 1218, and "as it appears in the

marketplace." Official Airlines Guide, 6 F.3d at 1392.

On the record before us, it is apparent that the mark

"ENTREPRENEUR" as applied to EMI's magazine and to

computer programs and manuals falls within the descriptive

category. 3 The word "entrepreneur" describes both the subject

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6 F.3d 1385, 1390 (9th Cir. 1993). An arbitrary mark is a common word

that is "non-descriptive of any quality of the goods or services." Id. "Ge-

neric marks give the general name of the product; they embrace an entire

class of products." Kendall-Jackson Winery, Ltd. v. E. & J. Gallo Winery,

150 F.3d 1042, 1047 n.8 (9th Cir. 1998) (emphasis omitted).

"ENTREPRENEUR" is descriptive of a quality of EMI's magazine, and

it is not a coined word. Thus, EMI's mark is not arbitrary or fanciful. See

Official Airline Guides, 6 F.3d at 1390. At the other end of the spectrum,

"ENTREPRENEUR" does not state the general name of EMI's product --

a magazine -- and therefore does not fit within the generic category. See

Kendall-Jackson Winery, 150 F.3d at 1047 n.8. But see CES Publ'g Corp.

v. St. Regis Publ'ns, Inc., 531 F.2d 11, 13 (2d Cir. 1975) (holding that

"Consumer Electronics," as the name of a magazine in that industry, is

generic).

3 A descriptive mark is entitled to trademark protection only if "it has

acquired secondary meaning, i.e., it `has become distinctive of the appli-

matter and the intended audience of the magazine and pro-

grams; an entirely unimaginative, literal-minded person

would understand the significance of the reference. As such,

the word "describes the qualities or characteristics" of EMI's

products, and is not merely suggestive. Park`N Fly, 469 U.S.

at 194; Kendall-Jackson Winery, 150 F.3d at 1047 n.8; see

also McGraw-Hill Publ'g Co. v. American Aviation Assocs.,

117 F.2d 293, 295 (D.C. Cir. 1940) (discussing the magazine

"Aviation": "It is difficult to conceive of a term that would be

more descriptive of the contents of the plaintiff's magazine.

The plaintiff suggests that a descriptive word designates some

physical characteristic. But that magazines may be described

by their subject matter is too clear to be doubted.") (citations

omitted); Scholastic, Inc. v. Macmillan, Inc. , 650 F. Supp.

866, 871 (S.D.N.Y. 1987) ("The Court finds that`Classroom'

is no more than a descriptive trademark. . . . A consumer of

ordinary intelligence would immediately and inevitably con-

clude that a magazine called `Classroom' dealt with the

instruction of students."). 4

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cant's goods in commerce.' " Park `N Fly, 469 U.S. at 194 (quoting 15

U.S.C. §§ 1052(e), (f)). Suggestive marks, on the other hand, receive

trademark protection without proof of secondary meaning. Sleekcraft, 599

F.2d at 349. Thus, whether a mark is descriptive or suggestive can be a

hotly disputed issue.

The distinction has little relevance here, however, because the incon-

testable status of EMI's mark serves as conclusive proof that the mark has

secondary meaning. Park `N Fly, 469 U.S. at 205. Smith cannot, therefore,

defend on the ground that EMI's mark is descriptive and without second-

ary meaning, and thus entitled to no trademark protection at all.

We note that, although determining whether EMI's mark is descriptive

or suggestive does not affect whether EMI must prove secondary meaning,

the relative strength or weakness of EMI's mark does affect whether a

consumer would likely be confused by the marks Smith uses. Moreover,

the incontestable status of EMI's mark does not require a finding that the

mark is strong. Miss World, 856 F.2d at 1449.

4 Our analysis is in accord with numerous other court decisions; the fol-

lowing magazine titles have also been found descriptive: "Science,"

The need of others in the marketplace to use the term "en-

trepreneur" to describe their goods or services confirms that

EMI's mark is descriptive. See Rodeo Collection , 812 F.2d at

1218. We note initially that if there are numerous synonyms

for a common trademarked word, others will have less need

to use the trademarked term. We are not aware of, nor has

EMI suggested, any synonym for the word "entrepreneur." 5

Furthermore, "although English is a language rich in imagery,

we need not belabor the point that some words, phrases or

symbols better convey their intended meanings than others."

New Kids on the Block v. News America Publ'g, Inc., 971

F.2d 302, 306 (9th Cir. 1992). In other words, while Smith

could have used a phrase such as "Small Business Innovator

Illustrated," he would have lost both nuance and economy of

language by doing so.

Widespread use of a word by others may serve as confirma-

tion of the need to use that word. See Sleekcraft, 599 F.2d at

349 (commenting on the lack of evidence that "others have

used or desire to use Slickcraft [the trademarked word] in

describing their goods"); American Int'l Group, Inc. v. Ameri-

can Int'l Bank, 926 F.2d 829, 834 (9th Cir. 1991) (Kozinski,

J., dissenting) (listing the number of times the trademarked

words occurred in various phone books as evidence of the

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"Alaska," "Sport," "Time," "Travel," "Parent," "College Humor," and

"Photoplay." See Gruner + Jahr USA Publ'g v. Meredith Corp., 991 F.2d

1072, 1076 (2d Cir. 1993); Photoplay Publ'g Co. v. LaVerne Publ'g Co.,

269 F. 730 (3d Cir. 1921); American Ass'n for the Advancement of Science

v. Hearst Corp., 498 F. Supp. 244, 255-56 (D.D.C. 1980) (citing cases);

Collegiate World Publ'g Co. v. DuPont Publ'g Co., 14 F.2d 158 (N.D. Ill.

1926), aff'd 25 F.2d 1018 (7th Cir. 1928).

5 The district court and the parties define "entrepreneur" as a "small,

independent business owner." The Oxford English Dictionary defines "en-

trepreneur," in its most relevant sense, as "one who undertakes an enter-

prise; one who owns and manages a business; a person who takes the risk

of profit or loss." The Compact Oxford English Dictionary 522 (2d ed.

1991) (hereinafter "OED").

mark's weakness). Smith's expert identified at least six other

magazines in which the word "entrepreneur" makes up part of

the title. 6 Numerous companies have registered marks that

include the word "entrepreneur." 7 Over one thousand Web

site domain names contain the word "entrepreneur. " Smith's

expert also provided extensive evidence of the frequent use of

the word "entrepreneur" as a common noun. 8

Although the incontestable status of EMI's trademark"EN-

TREPRENEUR" gives EMI the exclusive right to use its

trademark in printed publications pertaining to business

opportunities, the common and necessary uses of the word

"entrepreneur" provide strong evidence that EMI cannot have

the exclusive right to use the word "entrepreneur" in any mark

identifying a printed publication addressing subjects related to

entrepreneurship. Moreover, that the marketplace is replete

with products using a particular trademarked word indicates

not only the difficulty in avoiding its use but also, and

directly, the likelihood that consumers will not be confused by

its use. "The fact that the term . . . resides in the public

domain lessens the possibility that a purchaser would be con-

fused and think the mark came from a particular single

source." Gruner + Jahr, 991 F.2d at 1078 (internal citation

omitted); see also Miss World, 856 F.2d at 1449 (discussing

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6 They are: Hispanic Entrepreneur, Hong Kong Entrepreneur, Minority

Business Entrepreneur, High Tech Entrepreneur, The Skinflint Entrepre-

neur, and Big Farmer Entrepreneur.

7 The following marks are listed on the federal register in the same class

(Class 16) as Entrepreneur magazine: "Entrepreneur's Alert" registered by

Amerilawyer, Chartered; "Entrepreneur's Notebook, " registered by The

Chamber of Commerce of the United States; "American Entrepreneurs

Association" and "Entrepreneur Insiders Newsletter," registered by Chase

Revel, Inc.; "Entrepreneurs Advantage Resource Network," registered by

Dorothy M. Conrad; "The Entrepreneur's Program, " registered by The

Hume Group, Inc.; "The Anonymous Entrepreneur, " registered by Chad

J. Simmons.

8 For instance, in 180 days of The Sacramento Bee, the word "entrepre-

neur" occurred in more articles than did the words "juror" and "banker."

a "crowded field of marks" and stating: "In such a crowd, cus-

tomers will not likely be confused between any two of the

crowd and may have learned to carefully pick out one from

the other.") (citation and internal quotation marks omitted).

We recognize, however, that "[a]lthough a suggestive or

descriptive mark . . . is inherently a weak mark, it`may be

strengthened by such factors as extensive advertising, length

of exclusive use, public recognition . . . .' " American Int'l

Group, 926 F.2d at 832 (quoting Accuride Int'l, Inc. v. Accu-

ride Corp., 871 F.2d 1531, 1536 (9th Cir. 1989)). The record

indicates that EMI has used the trademark ENTREPRENEUR

to identify its magazine since 1978 and that EMI sells more

than a half million copies of Entrepreneur magazine monthly,

with the total number of readers over two million monthly.

Nonetheless, EMI has not demonstrated that it has so

strengthened its mark as to weigh this factor in favor of find-

ing likely confusion. At trial, EMI will have the opportunity

to prove that its mark is stronger than it currently appears. For

present purposes -- that is, for assessing whether EMI was

entitled to summary judgment as to the likelihood of confu-

sion -- we credit the "ENTREPRENEUR" mark with only

descriptive strength, because on this record EMI has demon-

strated no more.

b. Similarity of the Marks

"Obviously, the greater the similarity between the two

marks at issue, the greater the likelihood of confusion."

Goto.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1206 (9th

Cir. 2000). We have developed three axioms that apply to the

"similarity" analysis: 1) 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. Id. We con-

sider in turn Smith's three allegedly infringing marks accord-

ing to these principles:

1. The Title of Smith's Publication: Entrepreneur Illustrated

EMI and Smith print on the covers of their publications the words "Entrepreneur" and "Entrepreneur Illustrated," respectively. Colors and font styles of the titles of the two publications differ. Smith uses font sizes, however, that lessen the effect of the name differences: "Illustrated " appears on his publication in a much smaller (one-half, perhaps) font size than does "Entrepreneur." See Miss World , 856 F.2d at 1451 ("Mrs. World" and "Mrs. of the World""appear somewhat similar because `Mrs. of the World' is designed on letterhead and promotional material in a manner that deemphasizes the `of the' in the title."). Moreover, the artwork on two of Smith's covers included in the record obstructs much of the word "Illustrated." 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 ENTRE- PRENEUR is the most prominent visual feature of both publi- cations' covers," and consumers are likely to notice only the word "Entrepreneur" on the cover of Smith's publication. Furthermore, although "Entrepreneur Illustrated" is not a typ- ical magazine, Smith's publication does look like a typical magazine, which lends visual similarity to the marks as they appear in the marketplace. For all these reasons, Smith's use of the mark "Entrepreneur Illustrated" on his publication's cover is similar to EMI's use of its trademark, and the district court correctly weighed this factor -- as to this use -- in favor of likely confusion. See Hearst, 498 F. Supp. at 247 (finding that "publishing Science Digest with the word `Sci- ence' given overwhelming prominence" infringes Science magazine's mark).

The terms "Entrepreneur" and "Entrepreneur Illustrated"

are, of course, used in the marketplace in contexts other than

the publication covers. See Dreamwerks, 142 F.3d at 1131

(considering the fact that a mark sometimes appears without

a logo); Sleekcraft, 599 F.2d at 351 (same). Both parties, for

example, refer to their respective publication titles in textual

sentences on their web sites. In this type of use, both marks

presumably appear in black, and font type and size simply

match the rest of the text.

A reasonable juror could, in this context, find"Entrepre-

neur" and "Entrepreneur Illustrated" dissimilar. "Entrepreneur

Illustrated" contains an entire four-syllable word that "Entre-

preneur" does not; this difference between the marks is a

noticeable one, 9 because it makes the mark "Entrepreneur

Illustrated" almost twice as long -- to the eye and the ear --

as the mark "Entrepreneur."¹⁰ See Gruner + Jahr, 991 F.2d at

1078 (affirming the district court's ruling that the magazine

title "Parent's Digest" was not similar to the magazine title

"Parents" and noting that "the only similarity concerned the

use of the word `parent' "); McGraw-Hill Publ'g, 117 F.2d at

295 (finding confusion not probable between "American Avi-

ation" and "Aviation" and relying in part on the fact that

"American Aviation" "is composed of two words").

Thus, in what is perhaps the most obvious context --

the appearance of the marks on the parties' publication covers

included in the record -- a reasonable juror would have to

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9 Because the result of the consideration of one factor can influence the

consideration of another, if the trademark holder's mark were strong, the

fact that a consumer would likely notice the difference between two marks

might not suffice for a finding that the marks are dissimilar. For instance,

if the alleged infringer used the mark "Coca-Cola Light," a consumer

would presumably notice the addition of the word"Light," but the fact

that the similarity involves the use of a much stronger mark would make

that similarity weigh more heavily in the analysis of this factor. In this

case, the similarity involves only the use of a common, descriptive word

in the English language, making the difference between the marks more

important.

10 We note that "Illustrated" means "having pictorial illustrations."OED

815. In the context of two printed publications, we do not believe the addi-

tion of "Illustrated" significantly alters the meaning of the term "Entrepre-

neur." So as to meaning, a reasonable juror could only find the terms

similar.

find the marks similar. However, when used in other contexts

-- in speech and in plain text (in which the font size of "En-

trepreneur" and "Illustrated" are the same, and neither word

is obstructed by artwork) -- a fact finder could reasonably

conclude that the marks are dissimilar, because of the notice-

able differences between them.

2. The Name of Smith's Business: EntrepreneurPR At first glance, the difference between the two words, "En- trepreneur" and "EntrepreneurPR," may seem slight. We believe a reasonable juror could, however, find them dissimi- lar.

The addition of the letters "PR" to the end of the word "En-

trepreneur" does not, it is true, create as great a visual differ-

ence between the parties' marks as does the addition of the

word "Illustrated." But, as Smith's expert testified, in judging

the likely reaction of readers and listeners, the degree of

visual difference is not always decisive. Just as readers and

listeners notice the "D.C." in "Washington D.C." as critically

distinguishing the capitol city from the state, so the two capi-

tal letters "PR" may serve effectively to signal an important

distinction from other uses of "entrepreneur."

This possibility is made more likely because the marks are

quite dissimilar when sounded out: The letters "PR" constitute

two additional syllables. Compare Dreamwerks, 142 F.3d at

1131 ("While we recognize that spelling matters, we're not

sure substituting one vowel for another and capitalizing a

middle consonant dispels the similarity between the marks.").

Even silent readers usually "hear" words as they read and are

likely to notice syllabic differences.

Further, the difference between the marks is not arbitrary

but suggests a particular difference in meaning : "Entre-

preneurPR," presumably meaning "public relations for (or by)

a small, independent business owner," has a connotation dif-

ferent from "entrepreneur," standing alone. One could not rea-

sonably assert that EMI's mark "ENTREPRENEUR" implies

anything about a public relations function or purpose.

Thus, a juror could rely on the expert testimony refuting the

alleged similarity between "ENTREPRENEUR" and"Entre-

preneurPR," as well as the actual differences between the

marks, and reasonably find the marks dissimilar.

3. The Domain Name: entrepreneurpr.com 11 This court, in Brookfield, recently analyzed trademark infringement claims within the unique context of the Internet, focusing in particular on domain names. At issue in Brook- field were the trademark "MovieBuff" and the domain name "moviebuff.com." Brookfield held that the two monikers were "for all intents and purposes, identical in terms of sight, sound, and meaning," 174 F.3d at 1055, emphasizing that the allegedly infringing second-level domain name 12 used "exact- ly" the same letters as the trademark, id. at 1055 n.18 (empha- sis in original). The precise identity was critical, we noted, because Internet users searching for a company's Web site "often assume, as a rule of thumb, that the domain name of a particular company will be the company name [or trade- mark] followed by `.com.' " Id. at 1045, 1055 n.18. Here, Smith's second-level domain name, "entrepreneur- pr," is not exactly the same as EMI's mark, "ENTREPRE- NEUR." As a result, a consumer attempting to reach EMI's _________________________________________________________________ 11 EMI's Complaint alleged trademark infringement of EMI's mark "ENTREPRENEUR" -- not of its mark "EntrepreneurMag.com." Thus, this analysis will focus only on similarities and differences between the domain name "entrepreneurpr.com" and the trademark "ENTREPRE-

NEUR."

12 The second level domain name is a term or series of terms (e.g., entre-

preneurpr) that is followed by a top level domain name, which frequently

describes the nature of the enterprise (e.g., ".com" for "commercial" enter-

prises or ".org" for "organization"). Id. at 1044.

Web site by typing in its magazine's name followed by

".com" would not reach Smith's Web site. Nor would a sim-

ple spelling or typographical error likely lead a consumer

attempting to access EMI's Web site to Smith's Web site.

This observation concerning the functional similarity of

domain names is largely dispositive. But see id. at 1055 (also

comparing the sight, sound, and meaning of the trademark

and domain name). Similarity of marks or lack thereof are

context-specific concepts. In the Internet context, consumers

are aware that domain names for different Web sites are quite

often similar, because of the need for language economy, and

that very small differences matter.

Even if we were to look beyond the functional aspects of

domain name similarity, however, and consider the domain

name as it might appear in text -- that is, as an advertisement

of the Web site or in a newspaper article discussing it -- we

would still conclude that Smith's domain name is not as a

matter of law similar to EMI's mark. In the context of his

domain name, it is true, Smith cannot rely on the capitaliza-

tion of "PR," as used in his company name, to show visual

dissimilarity between his mark and EMI's, because"Web

addresses are not caps-sensitive" and therefore will appear in

print without case differentiation. Id. The differences in sound

and meaning between "ENTREPRENEUR" and "Entre-

preneurPR," however, as discussed in the context of Smith's

company name, still have import in the domain name context.

Overall, we conclude that a juror could reasonably find

Smith's entrepreneurpr.com domain name dissimilar from

EMI's ENTREPRENEUR mark.

c. Relatedness or Proximity of the Parties' Goods and

Services

We examine the relatedness of the parties' goods because

the more closely related the goods are, the more likely con-

sumers will be confused by similar marks. The district court

found as a matter of law that the parties' goods are related and

weighed this factor in favor of a finding of likelihood of con-

fusion. "[B]oth parties," noted the district court, "print publi-

cations that feature small businesses." We agree that, for this

reason, the parties goods are somewhat related. Nonetheless

a reasonable juror would have to find that the relatedness fac-

tor does not weigh heavily in favor of a finding of likely con-

fusion.

"Related goods are those products which would be reason-

ably thought by the buying public to come from the same

source if sold under the same mark." Sleekcraft, 599 F.2d at

348 n.10 (citation and internal quotation marks omitted). In

practice, this definition does not necessarily require a close

proximity before goods will be found related. For instance,

we recently stated that where "both companies offer products

and services relating to the entertainment industry generally

. . . [the companies] are not properly characterized as non-

competitors." Brookfield, 174 F.3d at 1056.

In this case, however, the fact that both parties' goods

relate generally to entrepreneurs or entrepreneurship -- in

other words, that both parties' products relate to the descrip-

tive word EMI choose for its trademark -- can carry rela-

tively little weight in determining the likelihood of confusion.

This is so because any individual or company using the word

"entrepreneur" as part of the name of its product or service to

indicate exactly what the word means -- small, independent

business owners -- is likely to do so because that product or

service has something to do with the world of entrepreneurs.

To weigh this relationship heavily in favor of a likelihood of

confusion in any case brought by EMI would provide an

advantage to EMI because EMI's mark is weak -- descriptive

of both its subject matter and intended audience -- and would

thereby counsel avoidance of such descriptive words in

marks.

We therefore apply a sliding scale approach as to the

weight that relatedness will carry dependent upon the strength

of the trademark holder's mark. This approach takes into

account the fact that consumers may well recognize that

Smith uses terms that include the word "entrepreneur" for

what the word means, not because of an association with

Entrepreneur magazine. A sliding scale is therefore the logi-

cal way to connect relatedness of products with likelihood of

confusion. Such a scale also serves an important balancing

function.

While the public and the trademark owner have an interest

in preventing consumer confusion, there is also a broad soci-

etal interest in preserving common, useful words for the pub-

lic domain. We do not want to prevent the commercial use of

descriptive words to name products, as straightforward names

are often the most useful identifiers. An absolute measure of

relatedness, in contrast, would discourage use of descriptive

words in marks.

In addition to their connection to small businesses, Smith

and EMI's companies are both related by their production of

print publications. This similarity does not however render the

businesses so closely related as to suggest strongly a likeli-

hood of confusion.

EMI's publication, Entrepreneur magazine, is a prototypi-

cal magazine. It prints articles written by independent writers

and selected by EMI's staff in the exercise of journalistic

judgment. Entrepreneur's revenue is generated through sales

of the magazine itself and sales of advertisements for place-

ment within the magazine. Smith's publication, Entrepreneur

Illustrated, is distributed free of charge and earns revenue

solely by contracting with small business clients to have pro-

motional, copyright-free articles, either supplied or approved

by the client, included in the publication.

In sum, although we agree that the parties' goods are

related, this factor does not weigh heavily in favor of likely

confusion as a matter of law.

d. Smith's Intent

While "an intent to confuse consumers is not required for

a finding of trademark infringement," Brookfield, 174 F.3d at

1059, "intent to deceive is strong evidence of a likelihood of

confusion," Interstellar, 184 F.3d at 1111. "When the alleged

infringer knowingly adopts a mark similar to another's,

reviewing courts presume that the defendant can accomplish

his purpose: that is, that the public will be deceived." Sleek-

craft, 599 F.2d at 354 (citations omitted). The point is not that

an intent to confuse is relevant as some measure of culpabil-

ity. Rather, the alleged infringer's judgment as to what is

likely to be confusing is relevant because it may well be accu-

rate.

Where an alleged infringer chooses a mark he knows to be

similar to another, one can infer an intent to confuse. Official

Airline Guides, 6 F.3d at 1394. On the present record, that

inference may be drawn only as to Smith's use of"Entrepre-

neur Illustrated" on his publication's cover, as that is the only

use we have held similar as a matter of law to EMI's"EN-

TREPRENEUR" mark. 13 The inference from knowledge and

similarity, however, does not add much in answering the ulti-

mate question here, likelihood of confusion, as the inference

provides no direct evidence of Smith's judgment concerning

likely confusion.

EMI did, however, offer evidence that throws a sharper

light on Smith's intentions. There was testimony by a former

EntrepreneurPR employee that when she informed Smith that

people seemed to think EntrepreneurPR was related to Entre-

preneur magazine, Smith replied, "Yeah, it's great." Although

Smith's statement was made after he adopted the mark at

issue, that timing does not eliminate the significance of

Smith's remark. True, the inference that can be drawn from

_________________________________________________________________

13 Smith admits that he was aware of EMI's mark "ENTREPRENEUR"

when he adopted the marks at issue here.

an alleged infringer's knowing adoption of a similar mark

focuses on his intent at that time. Sleekcraft , 599 F.2d at 354.

Smith's direct statement is relevant, though, to his intent in

continuing to use the mark and, as such, is pertinent to liabil-

ity for trademark infringement. See 15 U.S.C. § 1125(a)(1)

(providing for liability for one who "uses" a mark likely to

cause confusion); see also Sleekcraft, 599 F.2d at 354 (noting

that the alleged infringer designed a distinctive logo after

notification of the purported infringement). Smith did present

evidence, however, of an unsatisfactory business relationship

with this employee, bringing her credibility into question.

And, of course, it is for the trier-of-fact, not the court deciding

whether to grant summary judgment, to determine issues of

credibility. See Transworld Airlines, Inc. v. American Coupon

Exchange, Inc., 913 F.2d 676, 684-85 (9th Cir. 1990).

In addition, a former EntrepreneurPR client testified that

Smith's business partner, John Nixon, told her that the com-

pany was going to change its name and stated: "You're famil-

iar with Entrepreneur Magazine, right? Well, we're going to

be EntrepreneurPR." Although EMI argues that this statement

demonstrates an intent to confuse, a reasonable juror could

find otherwise. Nixon may have mentioned Entrepreneur

magazine only as an example of the common, marketplace

use of the somewhat exotic-sounding word "entrepreneur,"

not to imply an affiliation with the magazine. This seems

especially likely because Nixon was speaking to a client who

hired the company before it became "EntrepreneurPR" -- and

therefore at a time when there was no arguable reason to

assume an affiliation with EMI. What implication should be

drawn from Nixon's statement is a factual question that

should not be answered on summary judgment. Furthermore,

Smith provided evidence that the client who testified to this

statement was involved in a payment dispute with Entre-

preneurPR, again raising a credibility issue for the fact-finder

to resolve. See id.

Finally, an e-mail from an EntrepreneurPR employee to a

potential client discussed the benefits of the publicity that

EntrepreneurPR could provide and stated: "We'd also like to

include you in the next issue of Entrepreneur." EMI argues

that this statement means that Smith would arrange to have

his clients published in Entrepreneur magazine, and thus

implies an affiliation with EMI. This is certainly a reasonable

interpretation. We note, however, that the reference to "Entre-

preneur" may have been simply an unfortunate choice of

shorthand for "Entrepreneur Illustrated. " If so, the reference

carelessly encouraged confusion as to an affiliation between

EntrepreneurPR and EMI, but does not necessarily prove an

intent to confuse. The correct interpretation of this e-mail, and

the weight it should be given in adjudging Smith's intent, is

best left to the trier-of-fact.

Nonetheless, based on the inference from Smith's knowl-

edge of EMI's mark and the other evidence indicating an

intent to confuse, the intent factor weighs in favor of finding

a likelihood of confusion, although -- in light of the limited

relevance of the inference, the timing of Smith's remark, and

the factual questions surrounding the evidence -- not deci-

sively so. We note that, although we have placed this factor

fourth in order of importance to this case, a determination on

the merits that Smith intended to deceive consumers would

provide "strong evidence of a likelihood of confusion," Inter-

stellar, 184 F.3d at 1111, and, as a result, could overcome

weaker showings by EMI in other factors.

e. Evidence of Actual Confusion

"Evidence of actual confusion is strong evidence that future

confusion is likely . . . ." Official Airline Guides, 6 F.3d at

1393. A reasonable juror may, however, find de minimis evi-

dence of actual confusion unpersuasive as to the ultimate

issue of likelihood of confusion. Id.; Nutri/System, Inc. v.

Con-Stan Industries, Inc., 809 F.2d 601, 606-07 (9th Cir.

1987).

EMI presented evidence that one of Smith's clients, Phyllis

Cesare-Taie, was actually confused as to whether an affilia-

tion existed between Entrepreneur magazine and Entre-

preneurPR. Cesare-Taie testified to such confusion, and other

record evidence supports this testimony. In particular, Cesare-

Taie is the client who received the e-mail stating that Entre-

preneurPR would "like to include [her business ] in the next

issue of Entrepreneur." And, more important to the issue of

actual confusion, another e-mail shows that Cesare-Taie sent

a check to EntrepreneurPR made payable to "Entrepreneur

Magazine." This check is strong evidence of her confusion.

Although Smith countered with evidence of a business dispute

with Cesare-Taie regarding job performance and payment,

raising some question as to her credibility, we believe that --

in light of the two e-mails -- a reasonable juror would have

to find on this record that Cesare-Taie suffered actual confu-

sion.

EMI also presented the deposition testimony of three other

EntrepreneurPR clients who asserted that they believed Entre-

preneurPR was related to Entrepreneur magazine. Smith

rebutted EMI's proffer, however, with evidence that all three

of these customers had business disputes with Smith regard-

ing payment and that each began a business relationship with

Smith before he changed the name of his company to"Entre-

preneurPR," raising questions as to the credibility of the cli-

ents' assertions of confusion. Smith also accurately noted that

one of the customers seemed "confused about almost every-

thing." This impeachment evidence does throw into substan-

tial question these three clients' testimony regarding actual

confusion. Once again, we confront a credibility question that

should not be decided on summary judgment. See Transworld

Airlines, 913 F.2d at 684-85.

EMI also presented the deposition testimony of two former

employees of EntrepreneurPR. Both stated that when making

cold calls to solicit business for EntrepreneurPR, they were

often asked whether there was an affiliation between Entre-

preneurPR and Entrepreneur magazine.¹⁴ Such consumer

_________________________________________________________________

14 These questions were the basis for one of the employee's comment to

Smith that people seemed to think EntrepreneurPR was related to Entre-

preneur magazine (mentioned in the discussion of Smith's intent).

2312

questions are some evidence of actual confusion. Fuddruck-

er's, Inc. v. Doc's B.R. Others, Inc., 826 F.2d 837, 845 (9th

Cir. 1987). At the same time, on the current record, these

questions may simply suggest discernment -- that, because of

the descriptive nature of EMI's mark, consumers in encoun-

tering marks using the same term, do not necessarily assume

a connection with Entrepreneur but instead try "to carefully

pick out one from the other." Miss World, 856 F.2d at 1449.

Whether the questions represented actual confusion or dis-

cernment is an issue better left to the trier of fact to resolve.

Furthermore, Smith presented some evidence that he had an

unsatisfactory business relationship with the two former

employees and that the two did not mention to other employ-

ees with whom they worked that they received such questions.

Likewise, another employee stated that he encountered such

questions on only one or two instances during his long period

of employment with EntrepreneurPR. This evidence casts

doubt on the credibility of the two employees. As we have

noted before, deciding the credibility of the witnesses on evi-

dence such as that presented here is not a matter appropriate

on summary judgment. See Transworld Airlines, 913 F.2d at

684-85.

We believe that the trier-of-fact may find the evidence of

actual confusion quite significant; nonetheless, for purposes

of summary judgment, EMI has proved only one instance of

actual confusion. To constitute trademark infringement, use of

a mark must be likely to confuse an appreciable number of

people as to the source of the product. Int'l Ass'n. of Machin-

ists and Aerospace Workers v. Winship Green Nursing Ctr.,

103 F.3d 196, 201 (1st Cir. 1996) ("[T]he law has long

demanded a showing that the allegedly infringing conduct

carries with it a likelihood of confounding an appreciable

number of reasonably prudent purchasers exercising ordinary

care.") (citations omitted); see also Kendall-Jackson Winery,

150 F.3d at 1052 (noting that "a significant portion of the gen-

eral public is not likely to be confused"); Sleekcraft, 599 F.2d

at 353 ("In assessing the likelihood of confusion to the public,

the standard used by the court is the typical buyer exercising

ordinary caution.") (citations omitted). That there are a few

consumers who do not pay attention to obvious differences,

and assume common sources where most other people would

not, may not demonstrate the requisite likelihood of confu-

sion.

Because on this record a reasonable juror would have to

find that one of EntrepreneurPR's clients was actually con-

fused, this factor weighs in favor of summary judgment for

EMI. We do not believe, however, that this factor weighs

heavily in this direction because a reasonable juror could find

de minimis, and thus unpersuasive, one instance of actual con-

fusion, and the remaining record evidence involves factual

matters subject to dispute. See Official Airline Guides, 6 F.3d

at 1393 (upholding the district court's determination that "de

minimis evidence of actual confusion" was not"persuasive"

on this factor); Nutri/System, Inc., 809 F.2d at 606-07 (same).

f. Overlap of Marketing Channels

The district court relied solely upon the fact that the parties

"use the Internet as a marketing channel to promote their

goods and services" -- although it described this evidence as

"nominal" -- to weigh the overlapping marketing channels

factor in favor of finding a likelihood of confusion. Some use

of the Internet for marketing, however, does not alone and as

a matter of law constitute overlapping marketing channels.

The proper inquiries are whether both parties "use the Web

as a substantial marketing and advertising channel,"

Goto.com , 202 F.3d at 1207 (emphasis added), whether the

parties' marks "are utilized in conjunction with Web-based

products," Brookfield, 174 F.3d at 1057, and whether the par-

ties' marketing channels overlap in any other way. On the

current record, it does not appear that either parties' use of the

Web is significant enough to be pertinent.

As to other marketing channels, they do not overlap to any

significant degree. Entrepreneur magazine is targeted at indi-

viduals interested in reading about issues relevant to entrepre-

neurs; its advertisers are businesses seeking to sell products to

that audience. Smith's potential patrons are only a few of the

entrepreneurs themselves, in their role not as individual read-

ers but as businesses seeking public relations services. The

publications do not compete for subscribers, newsstand pur-

chasers, or advertisers because Entrepreneur Illustrated is not

for sale and does not feature paid advertisements. 15

This factor, then, cannot weigh in favor of granting sum-

mary judgment to EMI.

g. Expansion of Product Lines

The district court weighed this factor neither in favor of nor

against finding a likelihood of confusion. The court found "no

evidence" that the parties intended to expand into each other's

product lines, but noted that it had previously determined that

the parties' marketing channels overlapped to some extent.

Because, as discussed immediately above, the district court

_________________________________________________________________

15 Even viewing Entrepreneur Illustrated's articles as advertisements

(since EntrepreneurPR's clients pay for their inclusion in the publication),

a juror could still reasonably find the markets do not overlap because of

the "substantially higher" price of advertising in Entrepreneur magazine.

Official Airline Guides, 6 F.3d at 1392. EntrepreneurPR's clients pay up

to $10,000 on a yearly basis for a full-page article in Entrepreneur Illus-

trated; EMI charges a minimum of $30,470 for a black and white one-

page advertisement if the buyer agrees to purchase at least thirty advertise-

ments within a single year.

EMI did provide evidence that it distributes complementary copies of

Entrepreneur magazine to the media, and Smith asserts that Entrepreneur

Illustrated is only circulated by free distribution to the media. However,

because of EMI's yearly paid circulation of approximately 540,000 copies,

this evidence of overlap with regard to free distribution appears de

minimis.

erred in finding that the parties' marketing channels over-

lapped as a matter of law and EMI presented no evidence of

the parties' intent to expand into each other's product lines,

the district court should have weighed this factor against find-

ing likely confusion. On remand, however, the trier of fact

should reconsider the issue based on the final record.

h. Degree of Consumer Care

As to the final Sleekcraft factor, degree of consumer care,

we concur in the district court's assessment that this factor

weighs against a finding of likelihood of confusion, because

"small business owners seeking public relations services,

advertisers and media entities will exercise a moderate degree

of care." EntrepreneurPR's services are expensive, at $10,000

per year; media entities constitute at least a moderately

sophisticated class of media consumers; and, "[a]s the party

opposing the summary judgment motion, [Smith] was entitled

to have all inferences of this sort resolved in[his] favor."

American Int'l Group, 926 F.2d at 832.

3. The Overall Balance of the Sleekcraft Factors

Having examined the totality of the facts in the record,

we conclude, first, that the way Smith has used the mark "En-

trepreneur Illustrated" on the covers of EntrepreneurPR's

printed publication, as it appears in the record, would likely

confuse an appreciable number of reasonably prudent con-

sumers, and thus infringed EMI's trademark "ENTREPRE-

NEUR." We reach this result because of the strong visual

similarity of the marks -- due to the small size and the degree

of obstruction of the word "Illustrated" -- and because of

Smith's knowing adoption of this similar mark and other evi-

dence demonstrating Smith's intent to deceive. See Official

Airline Guides, 6 F.3d at 1394. Likewise, EMI's mark is

strong enough, and the parties' print publication products are

sufficiently related, to support this conclusion. We therefore

affirm the district court's grant of summary judgment to EMI

on this issue.

As to all other allegations of trademark infringement,

EMI has not demonstrated on this record that Smith has

infringed its trademark as a matter of law. A trier of fact could

reasonably conclude that none of the eight Sleekcraft factors

weighs strongly in favor of a finding of likely confusion as to

these allegations. Perhaps more importantly, the weakness of

EMI's mark alone weighs heavily against finding infringe-

ment as a matter of law. Consumers will likely recognize that

the word "entrepreneur" as used in Smith's marks refers to

small, independent business owners, not to EMI, making

EMI's showings as to other factors less persuasive on the ulti-

mate question of likelihood of confusion than they otherwise

would be. Cf. Sleekcraft, 599 F.2d at 350 ("Although appel-

lant's mark is protectible and may have been strengthened by

advertising, it is a weak mark entitled to a restricted range of

protection. Thus, only if the marks are quite similar, and the

goods closely related, will infringement be found.") (internal

citation omitted). We therefore reverse the district court's

entry of summary judgment in EMI's favor as to those other

uses and remand for trial.

C. The Unfair Competition Claim

The district court granted summary judgment in EMI's

favor on its unfair competition claim brought under California

Business & Professions Code § 17200. Because"actions pur-

suant to . . . § 17200 are `substantially congruent' to claims

made under the Lanham Act," Cleary v. News Corp., 30 F.3d

1255, 1263 (9th Cir. 1994), we reverse and remand on this

claim in accord with our decision on the Lanham Act claim.

D. The Injunction

Because we reverse the district court's decision

finding trademark infringement by Smith's use of the

terms "EntrepreneurPR" for the name of his business, "entre-

preneurpr.com" for his business' Web site domain name, and

"Entrepreneur Illustrated" as the name of his company's

printed publication other than its appearance on the publica-

tion's cover, the district court's injunction may not stand to

the extent it enjoins these uses. On remand, the district court

should devise an injunction that only enjoins Smith from

using the term "Entrepreneur Illustrated" on the cover of a

printed publication in a manner that obstructs or otherwise

downplays the word "Illustrated."

E. Damages

Because we reverse much of the district court's deci-

sion, we reverse its decision to grant damages. If appropriate,

the district court may consider this issue anew after a trial on

the merits.

III. CONCLUSION

Although EMI has the exclusive right to use the trademark

"ENTREPRENEUR" to identify the products described in its

registration, trademark law does not allow EMI to appropriate

the word "entrepreneur" for its exclusive use. The descriptive

nature and common, necessary uses of the word "entrepre-

neur" require that courts exercise caution in extending the

scope of protection to which the mark is entitled. We have

applied the Sleekcraft factors with that caution in mind, and,

on remand, the district court should as well.

AFFIRMED IN PART, REVERSED IN PART, AND

REMANDED FOR TRIAL. Costs to Appellant.

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