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October 02, 2008

Buy Your Law Firm Domain Name NOW ..and Trademark...Before Someone Else Does

I've written on this before but it never fails to amaze me that lawyers don't buy their internet real estate now before it's too late.  But here's the twist.  If you haven't purchased it and are using a name you wish to trademark, better trademark your name, too, if you want a chance to get your domain name back from a cybersquatter.  Using it on letterhead, business cards and communications is not enough to stake a claim and win.

Have you trademarked your law firm name? If not, it's a big mistake and invites cyber-squatters to buy a domain, hijacking your firm name. Just because you've been using your law firm name on stationery and marketing materials may not be enough to create a common-law trademark for you. 

Larry Bodine talks about a 65-lawyer firm which just lost their suit to get their domain name for their firm transferred from a cybersquatter because they failed to trademark their firm's name. 

Look what happened to GableGotwals, a 65-lawyer firm in Tulsa, OK.

A National Arbitration Forum decision denied the law firm's demand that the domain name gablegotwals.com be transferred to them, and refused to take it away from Schlund+Partner Ag, a cyber squatter based in Naples, FL. The ruling was Gable & Gotwals, Inc. d/b/a GableGotwals v. Dave Jackson, Claim Number: FA0806001212305.

The law firm had been using the GABLEGOTWALS mark in commerce since January 1, 2006, by using its name on letterhead and marketing materials.  The firm demanded that the domain name be transferred to it. Yet the law firm lost even thought the cybersquatter failed to respond to the complaint!

The squatter registered the gablegotwals.com domain name on August 26, 2006 and has a placeholder site online, saying that a real web site is "coming soon."

However, the decision said, '[a]lthough it has been held that there is no requisite showing to establish common law rights, common sense dictates that something beyond mere proof of business establishment is necessary.' I

Cybersquatting is big business and this case is illustrative of what's to come for many unsuspecting law firms and solo practitioners who don't do so.  Here is an interview with Enrico Schaefer about the law and how to go about trademarking your business name. 

And here is another great post on this topic called 'Define Yourself" authored by Brett Trout who tweets,

"Yes. Lawyers need to define themselves before the internet defines them & sends new business packing"                

Do it today.

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Comments

Gavin Craig

Isn't there a big difference between the domain name and trademarking the law firm name? How does the trademark protect the domain name - which is usually different - or should firms trademark both name and domain? Thanks for the post.

Gavin Craig

Susan Cartier Liebel

Gavin, the thrust of this case was IF the firm had trademarked their name and was operating under that trademarked name before the cybersquatting and then someone else bought their firm name, the court could have considered transferring the domain name back to the law firm. But absent the trademark, they couldn't. So, moral of the story is: buy your domain names AND trademark your company name, too. It's not expensive, but failure to do so can be costly.

Minnesota Lawyer

Common law trademark rights arise merely by the use of a name in commerce. This ruling is great for cybersquatters and bad for legitimate businesses who have common law trademark protection.

The U.S. Anticybersquatting Consumer Protection Act (ACPA) of 1999 was an expansion of the Lanham (Trademark) Act (15 U.S.C.). The ACPA was intended to provide protection against cybersquatting for individuals as well as owners of distinctive trademarked names.

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