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  website and domain name. 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

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 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 “” 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 Is it possible that some people will confuse the lawyer with the magazine by the lawyer’s use of 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: 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,,,,,, and over 400 other domains.

Elliot Silver
Elliot Silver
About The Author: Elliot Silver is an Internet entrepreneur and publisher of Elliot is also the founder and President of Top Notch Domains, LLC, a company that has closed eight figures in deals. Please read the Terms of Use page for additional information about the publisher, website comment policy, disclosures, and conflicts of interest. Reach out to Elliot: Twitter | Facebook | LinkedIn


  1. 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.

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

    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.


  3. “Should the Minnesota Lawyer magazine be able to prevent a Minnesota lawyer from using

    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 or

    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 ”

    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!

  4. 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

    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!

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

    Do you all you think that the .com has any right to go after 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.

  6. 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.

  7. @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?

  8. 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.

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


    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!

    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.

  10. heads up everybody I am now the complaint in the largest geodomain name case in massachusetts history. Case 1681cv03445.

    Follow along; Superior Court; Middlesex County; Search CBNO for business.

    this case is morning important than me & whoever is reading this it affects the public in perpetuity.

    As you were…


Please enter your comment!
Please enter your name here

Recent Posts

It Pays to Know Random Phrases

My eyes bulge out of my head sometimes when I see a somewhat obscure term in a domain name coming up for auction. Oftentimes,...

Monitor Landing or Parking Page Downtime

When I first started developing my domain names, I learned the importance of downtime monitoring. On some of my growing websites, there would be...

Squadhelp is Reinvesting and So Am I

Squadhelp CEO Darpan Munjal shared a series of tweets about the growth of the platform. Darpan shared that revenue last month was higher than...

If You Want to See a Stampede, Look No Further Than This…

If you're seeking engagement on Twitter in the domain name space, the best thing you can do is tell people you're looking to buy...

Nick Huber: “drop a little coin” for a Premium Domain Name

I do not know Nick Huber, but I see he has a large following on Twitter and frequently offers advice to startup founders and...