Can You Trademark a Geographic Domain Name? | DomainInvesting.com
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Can You Trademark a Geographic Domain Name?

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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.comMinneapolisAttorneys.comMinnesotaBusinessAttorney.comMinneapolisPhotographer.comMinnesotaBankruptcyLawyer.com,MinnesotaBankruptcyAttorney.com, and over 400 other domains.


About The Author: Elliot Silver is an Internet entrepreneur and professional domain investor. Elliot is President of Top Notch Domains, LLC, a domain investing company that has sold seven figures worth of domain names in the last five years. Elliot is the publisher of DomainInvesting.com.

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Comments (13)

    Richard

    It always the rich that win all this rubbish domain dispute!

    October 27th, 2011 at 11:22 am

    Acro

    The bottom line is that yes, geo domains can be registered trademarks. Whether or not there is confusion between a magazine title and a geo+profession combo, that’s another story altogether.

    October 27th, 2011 at 11:23 am

    Dave Zan

    Hall and Ari Goldberger can surely exchange notes on this.

    October 27th, 2011 at 12:36 pm

    Brad Mugford

    “Should the Minnesota Lawyer magazine be able to prevent a Minnesota lawyer from using MinnesotaLawyer.com?”

    Of course not.

    Can someone trademark Chicago Real Estate, Boston Dentist, Denver Flowers?

    I don’t see how you can prevent an end user expressing the generic use. It explains where they are and what they do.

    It would give a totally unfair competitive advantage.

    Brad

    October 27th, 2011 at 12:45 pm

    Trico

    “Should the Minnesota Lawyer magazine be able to prevent a Minnesota lawyer from using MinnesotaLawyer.com?

    No, of course not.

    The trademark is for publishing a newspaper (printed and online)
    pertaining to legal news in Minnesota.

    Anyone who registers a generic word, term or expression as a trademark suffers the consequence of others being able to use that same word, term or expression for their business as long as their isn’t infringement.

    The first keyword is “Minnesota”. It’s obvious that any usage of Minnesota would pertain to the city of Minnesota.

    Plaintiff cannot have exclusive rights to “Minnesota”.

    The second keyword is “Lawyer”. It’s obvious that any usage of lawyer would pertain to the law, legal, etc.

    Plaintiff cannot have exclusive rights to “Lawyer”.

    Having a trademark combining two descriptive generic keywords, “Minnesota Lawyer”, does not grant the Plaintiff a monopoly on publishing legal news and info in Minnesota.

    That means I should be able to publish a magazine or newsletter
    in Minnesota and call it “Minnesota Lawyer Magazine” “Minnesota Lawyer Newsletter” or similar.

    The Plaintiff would have a case if their trademark was:
    “Minnesota Lawyer Publishing” or “Minnesota Lawyer News”
    or something similar and the Respondent had registered
    MinnesotaLawyerPublishing.com or MinnesotaLawyerNews.com.

    You need that third keyword qualifier to distinguish the trademark
    from the generic, “Minnesota Lawyer”.

    If you don’t have a distinguishing element to your trademark,
    too bad for you.

    Suffer the consequences.

    Is it possible that some people will confuse the lawyer with the magazine by the lawyer’s use of MinnesotaLawyer.com? ”

    Any confusion would be brief unless the Respondent was purposely creating confusion by copying elements from the Plaintiff such as: similar logo, color scheme, style, layout design, etc.

    But that is not the case.

    Dear Plaintiff,

    Please lose!

    October 27th, 2011 at 12:57 pm

    Anonymous

    the first thing we do is kill all the lawyers… Anonymous aka shakespeare.

    October 27th, 2011 at 1:16 pm

    Uzoma

    One of the psyches that must be reversed is to equate “filing a UDRP” with “winning a UDRP”, and this World body must be responsible enough to send that message. And this foregoing case is a fitting case to send such a message.

    Any jackass can file a UDRP, but it should take jack in the box company to win jackinthebox.com.

    To award a geo-domain name to a claimant is basically opening, much much wider, a Pandora’s box that is likely to end up a tinderbox.

    One day someone will patent oxygen, and we will all have to end up paying with our lives to breath!

    October 27th, 2011 at 1:28 pm

    Raj

    Think about this – If a publisher uses microsoft.(co) as his blog name, would that be right? That will give the answer to your question.

    October 27th, 2011 at 2:21 pm

    don

    So let’s take for example texasinsurance.com let’s say an agency had been using it for 10 years and then comes along another agency and they register texasinsurance.org.

    Do you all you think that the .com has any right to go after texasinsurance.org. Or is it all fair game. Note this is not my name I am just looking for your thoughts and what you think.

    I doubt it could be trademarked anyway but maybe I am wrong.

    October 27th, 2011 at 3:53 pm

    Uzoma

    Oh, I forgot one thing I meant to add above, just in case those UDRP judges try to read once in a while, I believe they are mere mortals, right? I mean, they do get off their asses once and pick up the paper, or a blog, and read about the real life, just once in while? Dear UDRP judges, in case you don’t know how to determine what should be patented or not, I have a suggestion for you; apply this one little test: take the Sun as an example; say there were just two human beings on this planet, plus the UDRP panel, since the beginning of the world (ridiculous right?); then imagine one of the humans was born in 1970, and the other one born in 1985. Now, say the 1970 human comes in front of you to lay claim to the Sun as his discovery; the one test you should apply is: COULD THE 1985 HAVE DISCOVERED THE SUN IF THE 1970 GUY WASN’T BORN EARLIER? If the answer is “Yes, of course he woulda! All the 1985 guy needed to do was wake up in the morning, and there’s the sun!!” Then deny the 1970′s guy application, because his discovery and patent is stupid, anybody could have discovered it. Patents should be reserved for the genius and lucky. Not the opportunists. Thank you.

    October 27th, 2011 at 11:36 pm

    Dave Zan

    @Raj – one difference there is the uniqueness and fame of Microsoft’s trademark vs. that of the one being discussed here. Microsoft is famous enough that people who see that on something else will likely confuse or associate that something else with the actual source.

    Another difference is Minnesota Lawyer is descriptive or generic for a lawyer based in Minnesota, while the Dolan Company is using the terms distinctively for a magazine. What else is Microsoft descriptive or generic for other than, say, being micro and soft separately?

    October 28th, 2011 at 12:52 am

    Ramiro Canales

    Minnesota Lawyer is registered in the Supplemental Register. It is a nondistinctive mark and has very limited protections. There is no presumption of validity, ownership, or exclusivity. A Petition to Cancel the Minnesota Lawyer registration should be filed with the Trademark Trial and Appeal Board if the Dolan Company continues to make foolish threats.

    October 28th, 2011 at 1:09 am

    Chuck

    The short answer is that it not valid unless the trademark examiner stipulates this disclaimer:

    Disclaimer NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE “MINNESOTA” APART FROM THE MARK AS SHOWN.

    I believe the current application for Bankruptcy Minnesota, link provided, is destined for rejection for the same reason that AIG’s application for “Minnesota Insurance Company” was rejected.
    But you have to admire the “chutespa” of the applicant. Sorry, couldn’t resist the the Michele Bachman blunder given the geographical relevance!

    http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=85432349

    Note the three part test used to determine if a name is primarily geographically descriptive.

    Section 2(e)(2) – Geographically Descriptive Refusal
    Registration is refused because the mark is primarily geographically descriptive of the origin of applicant’s goods and/or services.  Trademark Act Section 2(e)(2), 15 U.S.C. §1052(e)(2); TMEP §§1210.01(a) and 1210.04(b).  Applicant’s mark is “MINNESOTA INSURANCE COMPANY” for Insurance underwriting services in the field of auto insurance
     
    A three-part test is applied to determine whether a mark is primarily geographically descriptive of the goods and/or services within the meaning of Trademark Act Section 2(e)(2): 
     
    (1)     the primary significance of the mark must be geographic, i.e., the mark names a particular geographic place or location;
    (2)     purchasers must be likely to make a goods-place or services-place association, i.e., purchasers are likely to think that the goods or services originate in the geographic location identified in the mark; and
    (3)     the mark identifies the geographic origin of the goods and/or services. 
     
    TMEP §1210.01(a); See In re MCO Properties, Inc., 38 USPQ2d 1154 (TTAB 1995); In re California Pizza Kitchen, 10 USPQ2d 1704 (TTAB 1989).
     
    The attached evidence shows that the primary significance of the term “Minnesota” in the mark is the name of a geographic location.  Purchasers are likely to believe the goods and/or services originate in that geographic location because the specimen indicates that the services are provided there.  Thus there is a presumed services place association in this case.  In re JT Tobacconists, 59 USPQ2d 1080 (TTAB 2001); In re U.S. Cargo, Inc., 49 USPQ2d 1702 (TTAB 1998); In re Carolina Apparel, 48 USPQ2d 1542 (TTAB 1998); In re Chalk’s International Airlines Inc., 21 USPQ2d 1637 (TTAB 1991); In re California Pizza Kitchen, 10 USPQ2d 1704 (TTAB 1989); In re Handler Fenton Westerns, Inc., 214 USPQ 848 (TTAB 1982); TMEP §1210.04(b). 
     
    Furthermore, the addition of the generic wording “INSURANCE COMPANY” does not significantly change the commercial impression of the proposed mark to that which is not primarily geographically descriptive.  The addition of a generic or merely descriptive term to a geographic term does not obviate a determination of geographic descriptiveness.  See In re JT Tobacconists, 59 USPQ2d 1080 (TTAB 2001); In re Carolina Apparel, 48 USPQ2d 1542 (TTAB 1998); In re Chalk’s International Airlines Inc., 21 USPQ2d 1637 (TTAB 1991); In re Wine Society of America Inc., 12 USPQ2d 1139 (TTAB 1989); In re California Pizza Kitchen Inc., 10 USPQ2d 1704 (TTAB 1988); In re Cambridge Digital Systems, 1 USPQ2d 1659 (TTAB 1986); In re BankAmerica Corp., 231 USPQ 873 (TTAB 1986); In re Application of Handler Fenton Westerns, Inc. 214 USPQ 848 (TTAB 1982); TMEP §1210.02(c)(ii).  Accordingly, registration is refused under Section 2(e)(2) of the Trademark Act.

    October 28th, 2011 at 3:07 am

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