The challenges of a descriptive trademark.
The Dolan Company, owner of Minnesota Lawyer Magazine, is claiming that MinnesotaLawyer.com is violating its trademark.
MinnesotaLawyer.com is maintained by Minnesota lawyer Aaron Hall. His law firm Twin Cities Law Firm, LLC
also owns MinnesotaAttorney.com. Dolan company sent him a cease & desist letter (pdf).
Hall says he has a right to blog on the web site. In a press release, he provides a comparison:
This is like a company naming its magazine â€˜California Wine’ and then telling California wineries to stop using â€˜California Wine’ on their websites,â€ stated Hall. “In trademark law, the general rule is that no one can prevent others from using a geographic term that accurately describes the origin of goods or services.
In its cease and desist letter Dolan company claims there’s a distinction:
“While, in some cases, “Minnesota layer” 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 (underlined) Minnesota lawyer, you are suggesting you are the (underlined) 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…”
Dolan company is asking Hall to refrain from publishing legal articles on the web site.
Dolan company’s publication is at MinnLawyer.com.