NAR steal word Realtor?

[options]

... a split ruling, where only the NAR is permitted to use the word "Realtor" in advertising its membership and services within the profession, but others could use it in promoting real estate brokerage services to the general public.

Amen.

 

[jberryhill]

"a split ruling, where only the NAR is permitted to use the word "Realtor" in advertising its membership and services within the profession, but others could use it in promoting real estate brokerage services to the general public."

Split ruling? The Petitioner in the case was marketing services to real estate professionals:

---
His business dealings relevant to the current
proceeding were directed largely to real estate agents and
involved the marketing of domain names and a range of
Internet-related services including website design and
hosting, providing central databases for real estate
listings, offering banner ads and other online advertising,
and the like.
------

His standing to bring a cancellation proceeding was based on the proposition that the trademark registration was a barrier in marketing his services to real estate brokers. Why, then, for the purpose of determining distinctiveness in the context of this dispute, would you look at some other group of consumers and consider that to be the relevant market?

 

[FineE]

Why, then, for the purpose of determining distinctiveness in the context of this dispute, would you look at some other group of consumers and consider that to be the relevant market?

Because of how the mark is used by the trademark holder. A real estate professional who is also a Realtor then uses the Realtor mark under license from the NAR to market his or her services to the general public. The primary use of the mark here is to identify the real estate profesionals who license the mark to the general public as opposed to identifying the NAR to real estate professionals.

So the customers of the real estate professionals as opposed to the real estate professional themselves then become the relevant market.

 

[options]

His standing to bring a cancellation proceeding was based on the proposition that the trademark registration was a barrier in marketing his services to real estate brokers.

True. His bad.
So, the comission concluded: "We find that petitioner has failed to
show that the terms “Realtor” and “Realtors” are generic
terms for real estate agents."

Why, then, for the purpose of determining distinctiveness in the context of this dispute, would you look at some other group of consumers and consider that to be the relevant market?

Note that the main dilemma was if the term was a generic one:
"...seeks cancellation of these two registrations held by NAR based
upon his allegations that the registered marks are generic.", thus having in mind the general public too.

Bear in mind that in the more blatant Aspirin case, the decision was based on "general public" genericity opinion too and successfully used by a direct competitor, another drugs manufacturer, for selling the product in retail market, while Bayer kept its rights in wholesale market.

The big question now is if the decision shut Zimmerman up or anyone else for using 'realtor' names for any other purposes (aforementioned dilution) as: "Accordingly, based upon all the evidence in this record, we find that the marks REALTOR and REALTORS continue to function as collective service marks and have not become generic terms."
Thus, not generic terms at all, even to general public.

 

[jberryhill]

"Thus, not generic terms at all, even to general public."

You have to consider any judicial decision in the context which it was rendered. This was a cancellation proceeding before the TTAB, so the question was whether the registered marks were generic - i.e. those registrations for those goods and/or services. The relevant market for the NAR's services, for which the registrations were obtained, consists of real estate agents. Likewise the relevant market for the petitioner's services consists of real estate agents.

No, you can't fit every qualifier into every sentence, or else you end up sounding like a lawyer, and your language becomes indecipherable. But no term is "generic" in a vacuum. A term is either generic or not as applied to identified goods or services. When a court or the TTAB finds a term "generic", they are not making a universally applicable declaration of some fundamental property of the term. Rather, they are making a declaration of the relationship between that term and an identified set of goods or services and the relevant market.

One thing I've tried to beat to death in this forum is that the statement:

"X is generic"

is a meaningless statement outside of any specific context. Yes, you will see a statement like that in the decision cited above, but there is a wealth of context there.

 

[Garry Anderson]

Sorry John - that sounds like the sort of bull* spin that comes out of Tony Blair.

John> "The relevant market for the NAR's services, for which the registrations were obtained, consists of real estate agents."

However - the mark is being USED for the public - true or false?

The public think Realtors are Real Estate Agents - NOT Realtor Real Estate Agents.

 

[jberryhill]

"However - the mark is being USED for the public - true or false?"

In the case we are discussing, neither party was marketing services to the general public. The case was about marketing services to real estate agents. Do Realtors identify themselves as such to the general public? Of course they do. But that has nothing to do with the issue decided in the case under discussion, in which the issue to be decided was within the relevant market to BOTH parties, was the term distinctive. The facts as determined by a survey of the relevant market demonstrated it was indeed considered distinctive.

I am sure if you surveyed a clan of bonobo apes in a nature preserve in Africa, then the result would be that the overwhelming majority of bonobos found the survey form to be a tasty treat, but it wouldn't be any more relevant to this proceeding before the US Trademark Trial and Appeal Board.

 

[Garry Anderson]

You said, "The relevant market for the NAR's services, for which the registrations were ***OBTAINED***, consists of real estate agents."

However - "Realtor" is being USED to sell real estate services DIRECT to the public.

Semantics will not save you from this fact.

Go to their site and see for yourself ;-)

Find a Home - Over 2 million homes for sale!

http://www.realtor.com/Default.asp?poe=realtor

 

[jberryhill]

"However - "Realtor" is being USED to sell real estate services DIRECT to the public."

I agree with you on that point, Garry. That would be indicated by the sentence "Of course they do" in my posting above. What you fail to realize is that we are discussing a case which was between the NAR and a person who wanted to sell services to real estate agents.

Who uses what to market anything to the general public is not relevant to the underlying dispute from which the case arose.

You are absolutely correct that "Realtor" is used to sell real estate services to the public. That is not what the case was about.

 

[Garry Anderson]

Sorry John - we seem to be at crossed purposes - perhaps it is my fault.

The premise of my argument is that NAR use a word that is considered generic for real estate agent - for the exact same purpose.

This is like getting trademark word "computer" to sell computers - a no no.

Indeed public think that a Realtor is the word (noun) for real estate agent.

They are not thought of as "realtor®" real estate agents - it would be like thinking of "computer®" computers.

Your response was the NAR is not selling services to the public - they are selling to real estate agents.

Quote: "The relevant market for the NAR's services, for which the registrations were OBTAINED, consists of real estate agents."

The word "Realtor" is a generic noun for "real estate agent" to the public - and indeed this word is used by NAR to sell real estate services DIRECT to the public.

Surely then this word should have failed before the Trademark Trial and Appeal Board?

 

[jberryhill]

"Surely then this word should have failed before the Trademark Trial and Appeal Board?"

The TTAB is an administrative court located within the USPTO. The proceeding was a cancellation proceeding directed at the trademark registrations identified in the cancellation petition. The TTAB's job in the case was to decide whether those registrations should or should not be cancelled. Those registrations are for membership services. The evidence showed that the overwhelming majority of the potential consumers of those services recognize the mark as distinctive of the NAR's services.

You have to show at least two things in a cancellation proceeding - (1) Why your business will be harmed by continued registration, and (2) Why one of a handful of statutory grounds for cancellation is satisfied. Point (1), the petitioner's standing to bring the petition, was premised on the petitioner's business plan to market services to real estate agents. Point (2) was premised on genericness of THOSE registrations for THOSE recited services.

Whether the NAR or its members use the term "Realtor" for other purposes is completely and utterly irrelevant to what this TTAB proceeding was about. The registrations in question were for membership services, which are marketed to real estate agents, and the petitioner's standing was premised on a desire to market things to real estate agents. The scope of the registrations at issue, and the petitioner's basis for standing, define the relevant market to be considered for the purpose of distinctiveness for this case.

As an aside on the "aspirin" case mentioned elsewhere in this thread.... Drugs and chemical compounds have a life in the world of trademarks all of their own. "Nylon" is no longer a DuPont trademark because, as was common early in the last century, there was a profusion of new substances, but companies didn't realize that *if there is no other name* for the substance than the name they give to it, then that name becomes the de facto "generic" name for the substance.

So you'll notice with drugs now, the manufacturers come up with *two* names for every new drug, and call one of those names the "generic" name. For example, the generic name for "Viagra" is "sildenafil". Now, both of those words are completely made-up, coined words. But Pfizer calls "Viagra" a brand of "sildenafil". Hence, there is a built in "other name" for the drug than the brand name.

Ditto for escalator, zipper, cellophane, thermos, and many other former trademarks.

 

[DeluxeNames.com]

John Berryhill or other lawyer members,

In your opinion, if the NAR came after Domainers (or Domainors :cheeky: ) or a competing Real Estate Organization for using the term "Realter", what would be their likelyhood of winning?

If there was a competing organization to NAR, if you had to guess, how different from the word "Realtor" would they have to use to stay safe? For example, what does you gut feeling tell you if this competing organization used "Realator" or "Realater"?

The only almost competing organization I know of to NAR is the NAREB, the National Association of Real Estate Brokers http://www.nareb.com . Strickly speaking, they do not directly compete with NAR because they concentrate on organizing minority Real Estate Agents. However, they make it clear that they do not exclude anyone from joining even if you're not a minority. They have been around since 1947 and use the term "realtist" but strangly enough, they have not made any effort to trademark "realtist" or to even register "realtist/s" domains. It is obvious that the term "Realtist" has not come into common use and I doubt it ever will due to the popularity of "Realtor".

 

[jberryhill]

"but strangly enough, they have not made any effort to trademark "realtist" "

Umm....... what gives you that impression?

Word Mark REALTIST

Goods and Services IC 200. US 200. G & S: indicating membership in a nationwide minority trade association of real estate brokers dedicated to the principle of equal housing opportunities for all, regardless of race, creed, or color. FIRST USE: 19480719. FIRST USE IN COMMERCE: 19480719

Owner (REGISTRANT) National Association of Real Estate Brokers, Inc. CORPORATION MICHIGAN 1629 K Street, N.W., Suite 1100 Washington D.C. 20006

Registration Number 2674067

Registration Date January 14, 2003

On the other question, I believe the NAR would have a strong likelihood of prevailing in any dispute concerning a phonetically similar term.

 

[DeluxeNames.com]

John, thanks for this information. I totally missed their word mark on "Realtist". This puts Real Estate Agenst in a weird situation leaving them without a non-trademarked professional name that they can go by.

 

[DeluxeNames.com]

Talk about coincidence. I just received this today because I registered: Realter.xxx (see the email at the bottom). At this point, it only redirects to my domain store.

John Berryhill, should I take their threat seriously? I hope my other site is not an infringement also: http://www.RealtorName.com It doesn't sell real estate, just real estate realated domains.

It pisses me off that NAR can get away with making us stop using all words that are even similar to "realtor." Those of us that are Real Estate Brokers should start a backlash organization to compete against NAR and to popularize an alternative word so that their precious term will fade from public discourse. If you are real estate brokers, I propose we call ourselves "Realticians." Tounge in cheek, we can create an opposition group to the NAR, the NSRB, the National Society of Realty Brokers http://www.NSRB.org. Also, all of you non-NAR members can be listed for free at: http://www.Realtician.com


The email from NAR:

The Internet domain name, Realter.xxx, which you have recently registered has been identified by the NATIONAL ASSOCIATION OF REALTORS as one in which the membership marks of the NATIONAL ASSOCIATION OF REALTORS (National Association) are used as a part of the domain name. The domain name came to our attention as a result of our monitoring of the Internet for use of the REALTOR membership marks. The terms REALTOR, REALTORS, and REALTOR-ASSOCIATE, as well as the REALTOR block "R" logo, are all federally registered collective membership marks owned by the National Association. Collective membership marks are a type of trademark which, rather than indicating the source of a product or service, identify the user of the membership mark as a member of a particular group, in this case the National Association.

The National Association has over 900,000 members each of whom is licensed to use one or more of the membership marks to identify themselves and their real estate businesses. Over twenty-five years ago, the National Association developed a comprehensive set of rules governing the proper use of the membership marks by its members to accomplish this in an orderly manner. These rules still apply not only in the print world, but also in the new electronic media. Members of the National Association may find information on the proper use of the membership marks in the Membership Marks Manual which is posted on our website at www.REALTOR.org. The Manual can be found by clicking on the following links: -"Law & Policy" and "REALTOR Trademark Rules." If you are a member, please review these rules and if you have any questions, please contact me by replying to this email.

If you are not a member your use of the membership marks is incorrect and not authorized by the National Association.. Because the use has not been authorized it may also be viewed as an infringement of the National Association's legal rights in its membership marks under the federal Lanham Act and other state and federal laws. To eliminate this potential source of conflict, we would appreciate your cooperation in revising your site and/or domain name to eliminate the use of the membership marks. Many times this is as simple as substituting an appropriate job title for the term being used, for example, real estate broker can often be used without making any other changes to the text. If you would like to read more about trademarks and the rights of trademark owners, there are a number of sites on the Internet, which address this topic.

We are attempting to track our efforts in connection with the Internet and request that you acknowledge your understanding of this request for your cooperation and provide us with your assurance that you will not use this domain name. Our e-mail address is [email protected]. Thank you for your help and we look forward to receiving your reply.

 

[jberryhill]

"John Berryhill, should I take their threat seriously?"

I doubt they sent it as a joke, but I do not give individual legal opinions in public forums.

 

[diverge]

Why do you do it Mr. Anderson?

LOL. Best I can tell, things got serious so quick in this thread no one ever picked up on this line. Just thought I'd let you know it wasn't wasted on me.

Okay, sorry to reopen an old thread, but I need some general input. I bought a pair of domains second-hand with the world "realtors" in them, I've never received "the letter" (my quess is NAR only monitors new registrations). In addition, I have renewed them both at least once without any problem. The domains are realtors.org with i and e prepended to them. If you were in my shoes would you fork over the $14/yr for a few years and see if NAR loses this one in appeal down the road, or let 'em expire?

 

[namedropper]

No use in paying good money for names you can never use.

I think John noted that somewhere else with a soundclip from the movie, or maybe I copied his reference. It was a while back, hard to remember. It was always clear though that Mr. Anderson here desperately needed to take the red pill.