Legal Marketing & PR

Law Firm Loses Web Trademark Fight for its Own Name

By Larry Bodine, Esq.

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.  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.' In this case, Complainant has produced nothing more than its establishment of a law firm operating under the name GABLEGOTWALS."

"Other than Complainant’s assertions, there is no other evidence indicating that the GABLEGOTWALS mark has acquired secondary meaning or source identity in commerce, and use alone is not sufficient to prove this assertion," the decision states.

The law firm lost its rightful domain name with prejudice.  Don't let this happen to you!

Full post as published by Larry Bodine's LawMarketing Blog on October 02, 2008 (boomark / email).