Word “realtor” in the domain name ?

[dotcomcollector]

Most of you here probably know that word “Realtor” is a registered collective membership mark that identifies a real estate professional who is a member of NAR. If you are using this word in the domain name you might receive a “Cease and Desist Letter“ from NARs legal department.

Here is what I don’t understand why US Patent and Trade Mark Office allows others to register the trademark with the word “Realtor” within a business name if this name is a registered trade mark. Also I have notices some of the businesses that have registered the name using the word realtor in their own domains with no problems.

Visit US Patent and Trade Mark Office Site and type in "realtor" and you will see many companies with the word:

http://tess2.uspto.gov/bin/gate.exe?f=searchss&state=b9dbit.1.1


So can I use the word “realtor” in the domain ?? Thank you all ahead of time for any help and clarification on this subject.

 

[DNQuest.com]

I would assume they have permission from Nar to use it. NAR is very aggressive in thier mark.

 

[Corey Bryant]

You might check out this page for a bit more information.

It was explained to me once - but I cannot remember exactly though. You cannot use it to suugest all realtors in a geographic area (if I am remembering correctly).

I actually just found Using the REALTOR® Trademark which might help out a bit more hopefully. One of our resellers primarily work with realtors and he explained that to me one day but unfortunately I cannot remember the exact way.

 

[jberryhill]

Dotcomcollector, you appear not to be able to see the difference between a pending application and an issued registration.

With the exception of one logo registered to the Realtor Association of Fort Lauderdale, which is presumably with the consent of the NAR, I do not see a single registered trademark to anyone but the NAR which includes the "REALTOR" mark.

Can you provide an example? (that TESS link you provided is session-specific, and hence useless)

 

[dotcomcollector]

Here is one sample, there you will find a link to .pdf file with more information
http://thettablog.blogspot.com/2004/11/ttab-oks-realtor-for-tires.html

 

[DaddyHalbucks]

So can I use the word “realtor” in the domain ?? Thank you all ahead of time for any help and clarification on this subject.

Here is the short answer: no.

 

[dotcomcollector]

DaddyHalbucks, the reason I made this post is because too many people like yourself just answering with short answer: NO and probably do not know themselves the issue around the subject. I new there was a problem using this mark before I made this post. However as I provided an example above, you can use the word “realtor” . Read on the decision of the Trade Mark Office who approved a tire company to use the word “realtor”.

"NAR has not shown that it has become known for the sale of any consumer products like tires, or that its REALTOR mark has become identified with such goods. * * * To hold otherwise would result in giving opposer a right in gross which is contrary to principles of trademark law and to Section 2(d) of the Trademark Act."

Also there was a long case to proof that the word "realtor" is a generic term and can't be Trade Marked, unfortunately the case was lost but brought out a very interesting information and good point.

http://www.barryfirm.com/dnld/Nine-Pillars-Citadel.pdf


I have found dictionary definition for the word “realtor” http://www.findmehere.com/search/dictionary/r_index.htm

“Realtor:
... Realtor is a registered trademark of the National Association of Realtors (USA). If written as "realtor" it is a generic term used to describe someone who handles real estate or realty transactions. Realty is real property or real estate.”

 

[jberryhill]

DaddyHalbucks gave the short answer because the "REALTOR" mark comes up here about every month.

What you are looking at is a TTAB opposition proceeding in which it appears the NAF fell down on the job, and didn't provide the type of evidence the TTAB was looking for. What that record proves is that if you try to register a mark with REALTOR in it, the NAR will come after you:

For the reasons discussed above, we find that the
relatively sparse evidence of record does not support a
finding that there is a likelihood of confusion between any
of opposer’s marks and applicant’s mark. Perhaps on a more
complete record, a different result would pertain, but we
are, of course, constrained to make our decision based on
the pleaded claim and the particular record before us in any
given case.

I doubt the NAR would let that happen again.

Unless you've been making tires for several years, the more relevant situation w/r/t your domain names is:

http://www.uspto.gov/web/offices/com/sol/foia/ttab/other/2004/92032360.pdf

Finding a "dictionary definition" which SAYS the term is a trademark is not helpful to you.

I'm still looking for your example of someone registering a mark comprising "REALTOR" with "no problems" as you put it. Going through an opposition proceeding at the TTAB hardly counts as "no problems".

 

[DaddyHalbucks]

So you want the long answer? OK, here goes:

I echo JB.

Although trademarks are not typically "en grosse" rights, meaning they are normally circumscribed by their field of use and their geographical limitations, famous trademarks are a different story.

There is little doubt "Realtor(R)" is a famous and distinctive trademark, although I am sure some lawyer somewhere would love to take gobs of money from you to blow hot air in court to the contrary.

This means that anyone who wants to use this mark has to contend with the National Association of Realtors.

Just because you find one obscure reference or ten references to claim "realtor" is a generic term, you are still fighting a steep uphill battle. Same for some other crazy who challenged them.

Do you want to fight a very wealthy and established trade organization?

Do you have $250,000 to defend a trademark infringement or trademark dilution lawsuit? Do you have $100,000 maximum statutory damages PER domain under the ACPA? Do you have money to reimburse legal fees to THEIR white shoe law firm?

In the very likely event that you lose your case, are you prepared to lose your house and file for bankruptcy?

I was once brought to my knees over a truly obscure acronym, a claimed "common law" trademark (not registered), one which not even the people in the plaintiff's own organization were familiar, as we found from calling their offices. If I can be sued for that, and nearly brought down, trust me, you can definitely incur a huge liability for this.

A smart person learns from other people's mistakes..