Can You Trademark a Geographic Domain Name?
The Dolan Company, a publishing giant that owns the Minnesota Lawyer magazine, recently sent a cease and desist letter to Aaron Hall, a lawyer in Minnesota, directing him to stop using the MinnesotaLawyer.com website and domain name. MinnesotaLawyer.com is essentially a lawyer’s blog with free legal guides, free legal forms, and a free ask a lawyer section.
Dolan’s letter requested that Hall immediately cease and desist “use of ‘Minnesota Lawyer’ in connection with online and/or printed publications in the legal field,” and “refrain from publishing legal articles and information” on MinnesotaLawyer.com.
In response to Dolan, Hall claimed that his use of “Minnesota Lawyer” was merely descriptive of his location and profession. “Dolan does not that have a monopoly on the words ‘Minnesota lawyer,” stated Hall. “Every lawyer in Minnesota can lawfully use those terms in the title of their website or domain name.”
This is a National Problem
“This isn’t the first time that a geographic domain name has come under fire,” said Hall, an attorney experienced in trademark and internet law. Hall said that Dolan’s actions are merely part of a larger problem:
This is about the rights of small website owners. This situation exemplifies the threat to website owners across the United States. Often small website owners give up their website after being intimidated and threatened by large corporations. I have represented many small business owners in disputes over a website with a generic or descriptive name. Many small business owners don’t know what to do when they get a cease and desist letter, so unfortunately, they make a mistake like giving up the website or selling it for below market rates. The law is often unclear in this area, especially when it comes to new technologies like the Internet and domain names. If necessary, we are willing to take this issue to the Supreme Court. This case could set an important precedence for small website owners facing similar threats.
Trademarks Are Industry Specific
This showdown raises the question of whether you can trademark a geographic name like “Minnesota Lawyer.” Since Dolan has registered this trademark, the obvious answer is yes. But does that trademark prohibit those in another industry from using those common terms to describe themselves?
Dolan’s cease and desist letter claimed that the lawyer’s use of MinnesotaLawyer.com was infringing the magazine’s federally registered trademark in “Minnesota Lawyer.” However, the trademark is in the publications industry, not the legal services industry. Dolan claims that Hall’s use was also in the publishing industry. Dolan said that Hall’s legal blog infringed the publishing giant’s trademark because Hall was publishing legal articles on his blog under the name “Minnesota Lawyer.”
Hall defended, noting that his blog only publishes legal articles written by attorneys in his firm, does not accept any advertising, and does not compete with Dolan’s magazine. “As a Minnesota lawyer, I have a right to call my blog ‘Minnesota Lawyer,’” said Hall. Dolan took issue with the title of the site and the copyright notice in the footer:
While, in some cases, “Minnesota lawyer” can be used descriptively to indicate that a person is a lawyer from or practicing in Minnesota, your use of “Minnesota Lawyer” is not descriptive. Rather than using the phrase to indicate that you are a Minnesota lawyer, you are suggesting that you are the Minnesota lawyer. This is underscored by your prominent use of “Minnesota Lawyer” in the header of your website at “minnesotalawyer.com” and in the website’s copyright notice.
Hall responded, “titles are generally capitalized, which explains why “Minnesota Lawyer” is capitalized in the title.” Hall admitted that the footer was a problem for a few days:
This site has existed for over a year, and has always attributed copyright to me. However, in the past week or so, the site has been under re-development. Apparently, for a few days or less, the site temporarily had the default copyright notice embedded in the website software, which included the copyright notice and inserted the site’s title next to it. Immediately upon noticing this and before receiving your letter, I emailed the web designer to change this to indicate that the copyright is owned by me. This has been changed.
Likelihood of Confusion or Perceived Association
At the core of trademark infringement and trademark dilution is the question of whether people will mistake one company for another or believe that they are associated. Dolan summarized its concerns this way:
Your use of “Minnesota Lawyer” in this manner creates the false appearance of an association, affiliation or connection between you and your activities and Dolan, the Minnesota Lawyer trademark and Dolan’s goods and services. Dolan is concerned that such use is likely to cause confusion, cause mistake, and/or deceive consumers into believing that Dolan sponsors, endorses, supports or is otherwise affiliated with you and your activities.
What do you think? Should the Minnesota Lawyer magazine be able to prevent a Minnesota lawyer from using MinnesotaLawyer.com? Is it possible that some people will confuse the lawyer with the magazine by the lawyer’s use of MinnesotaLawyer.com? This case is interesting because, unlike many legal battles in the domain world, both sides in this case have plenty of legal firepower.
More information about this legal battle can be found here: MinnesotaLawyer.com Cease and Desist Letter.
DISCLAIMER: This article was written with assistance from Aaron Hall. In addition to being an attorney writing on PPC law, blog law, and other web business topics, Aaron Hall is a domainer himself, owning MinnesotaAttorney.com, MinneapolisAttorneys.com, MinnesotaBusinessAttorney.com, MinneapolisPhotographer.com, MinnesotaBankruptcyLawyer.com,MinnesotaBankruptcyAttorney.com, and over 400 other domains.
Reach out to Elliot: Twitter | Google + | Facebook | Email