Trademark Threats are Part of a Larger Problem of Intimidation of Website Owners, Says Lawyer
For Immediate Release
Monday, October 24, 2011
MINNEAPOLIS – The Dolan Company, owner of the Minnesota Lawyer magazine, sent a cease and desist letter to Aaron Hall, a Minnesota lawyer, claiming that Hall’s use of MinnesotaLawyer.com was infringing the magazine’s “Minnesota Lawyer” trademark.
Dolan stated that Hall’s legal blog infringed the publishing giant’s trademark because Hall was publishing legal articles on his blog at MinnesotaLawyer.com under the name “Minnesota Lawyer.” Hall responded, “As a Minnesota lawyer, I have a right to call my blog ‘Minnesota Lawyer.’”
Dolan’s actions are indicative of a growing problem on the Internet, explained Hall, an attorney representing businesses in trademark and internet legal issues. “It is not uncommon for corporations to get a trademark in one industry, and then try to prevent website owners in other industries from using that term even though the term generically describes a product or service.”
“Often small website owners give up their websites after being intimidated and threatened by large corporations,” added Hall. “I have represented many small business owners in disputes over a website with a generic or geographic name—it’s a growing problem.”
“This is like a company naming its magazine ‘California Wine’ and then telling California wineries to stop using ‘California Wine’ on their websites,” 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.”
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 Hall’s website. Hall refused. “This isn’t a unique brand name like Google, Pepsi or Honda,” said Hall. “Dolan does not own the exclusive right to these two words.”
“We are prepared to defend in litigation, if necessary,” concluded Hall. “We will not stop using this website to offer free forms, legal guides, and help to Minnesotans.”
Copies of Dolan’s cease and desist letter and Hall’s response are available at http://MinnesotaAttorney.com/press/.
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- October 13, 2011: Cease and desist letter from The Dolan Company (PDF file)
- October 24, 2011: Letter from Aaron Hall to The Dolan Company’s attorney (PDF file)