Will the real Gilbert Law office please stand up?

The Colorado Court of Appeals on Thursday decided that a settlement between two legal firms, both with “Gilbert Law” in their names, precluded one of them from using a website URL that failed to distinguish between the two companies.

Denver-based Gilbert Law Group was a long-established firm providing services in Colorado when the Gilbert Law Firm, headquartered in Texas, began advertising in the state in 2015. The Firm used the URL www.gilbert-law.com, prompting the Group to worry about people mixing up the two companies.

The Group sued the Firm for trademark infringement, unfair competition and deceptive business practices, which resulted in a 2017 settlement. The agreement allowed Gilbert Law Firm to continue using its full name, but required it to put disclaimers on its online materials and to withdraw its trademark of “Gilbert Law” through the Colorado secretary of state’s office. Neither company would be allowed to go by simply “Gilbert Law” as a trade name.

Gilbert Law Firm and its owner, Christopher K. Gilbert, eventually complied with all terms except that of the website domain name. A Denver District Court judge agreed with Gilbert Law Group that the prohibition on using “Gilbert Law” extended to the URL.

The three-judge appeals panel likewise affirmed that Gilbert of Gilbert Law Firm had to drop www.gilbert-law.com.

“The obvious meaning of the term ‘stand-alone’,” wrote Judge Christina F. Gomez, “is not to signify that the prohibition on using ‘Gilbert Law’ applies only when those two words appear entirely by themselves. Rather, it is to signify that the prohibition applied to the use of the name ‘Gilbert Law’ without the additional word ‘Firm’ or ‘Group.’”

She continued, “Certainly, the hyphen and capitalization don’t significantly distinguish ‘gilbert-law’ from ‘Gilbert Law.’ And the use of the ‘www.’ and the ‘.com’ to signify a web address don’t preclude the ‘gilbert-law’ from being deemed to stand alone.”

Gilbert, of Gilbert Law Firm, said the decision forcing him to suspend the domain name has affected his business. “The trial court’s ruling combined with some other factors resulted in me joining another law firm,” he said. “My abilities to market were greatly handicapped.” 

The case is Gilbert Law Group v. Gilbert Law Firm.

This story has been updated with comment from Christopher K. Gilbert.