According to Inman News,
The Women’s Council of Realtors — which shares the same address on Chicago’s North Michigan Avenue as NAR — sent out a bulletin to the group’s 4,857 followers on Twitter, declaring: “NAR amended its Trademark Policy. If you’re a REALTOR®, and you die, you may now put the Realtor logo on your tombstone.
While the original NAR trademark policy prohibiting the use of the registered trademark “realtor” on a gravestone might have been dead wrong, trademark law-wise, could the allowance of it one day kill the mark by genericide?
Read this 2007 post from the Sellsius Archives grave (slightly recomposed).
Can Realtor Trademark Fall into the Public Domain?
Original Realtor trademark on a decal
“I need a realtor.” ” I’m a Realtor.”
Has the term “realtor” become generic, understood by the public as a real estate agent, and fallen into the public domain? If so, the result would be the cancelling of the mark’s trademark protection. Let’s take a lookie look see at the subject.
The once protected trademark “aspirin“, originally registered to the Bayer company in 1899, fell into the public domain as a generic term in a famous 1921 case. The Court held that the term had become so widely associated with pain relief medicine that it had become a generic term. Every Tom, Dick or Harry was allowed to use the word aspirin, giving the Bayer company a major headache*. Can the same happen to NAR’s trademark? In a word, YES.
The statutory basis for canceling the registration of a generic term is found in the Trademark Act, 15 USC 1064(3). As a Federal Court has stated:
…Determining whether a mark is generic… involves a two step inquiry: First, what is the genus of gooods or services at issue? Second, is the term … understood by the relevant public primarily to refer to that genus of goods or services? (emphasis added)
Step one is easy. Realtor** is a “collective” trademark, first registered in 1950, to represent members of the National Association of Realtors. Step two is the tricky part. Does the majority of the “relevant” public understand that realtor only refers to members of the National Association of Realtors®?
Competent legal evidence of the public’s perception of a word is found in dictionaries, newspapers, magazines and the media, as well as market research and consumer surveys. The burden of proof is on the one who claims the term is generic. The following 2004 trademark case addressed the issue of realtor genericide.
In Zimmerman v. National Association of Realtors, decided by the Trademark Trial and Appeals Board (TTAB) in March 2004, the term realtor was not proven to be a generic term, despite Mr. Zimmerman’s evidence that only 10% of people surveyed by telephone said that “realtor” was a brand name. The Appeals Board said the survey was flawed because only 96 people were surveyed and the question was not properly posed. But the TTAB left the door open for future petitioners:
Had petitioner conducted a proper survey, and obtained similar results (as in the Bayer aspirin case), we would clearly face a situation with parallels to the facts of the oft-cited Bayer case…
So, for now, the term realtor remains protected as a trademark.
It should be noted that the Zimmerman case was decided by the Trademark Trial and Appeals Board and NOT by a federal court. The TTAB is a federal agency having jurisdiction over trademark “registrations”. Its decisions carry great weight with reviewing courts but may, nonetheless, be overruled by a federal court.
A lesser known understanding of trademark law concerns the scope of protection. Trademarks are registered for particular classes of goods and services (eg. Realtor for brokerage services) and meant to avoid public confusion as to the source of the goods or services (NAR). Therefore, a different class of goods or services may use the same mark without infringing the registrant’s mark if the public is not likely to be confused. It is this aspect of trademark law which might have prevented the NAR from winning a lawsuit prohibiting use of the trademark on gravestones (plus they would look bad picking on the dead). One could argue a tombstone is a monument, a memorial, unlike the rendering of real estate brokerage services and thus a different class of goods/services, unlikely to lead to public confusion.
Here’s an example:
Realtor trademark in an unrelated product: There is a registered trademark of Titan International, Inc. for Realtor tires. Registration here.
NAR tried to prevent the Titan registration and lost. The 2004 Trademark Appeals Board decision is here.
NAR members may register marks containing the word realtor but must disavow any claim to the word realtor. Here’s an example of a registered trademark:
Registered 2006.
Realtor® Rest In Peace?:
I don’t suspect many members will carve the Realtor® mark or logo on their gravestones, but you never know, especially if the prohibition is lifted. If it becomes a popular phenomenon, could it be a fatal blow to the trademark?
* According to wikipedia, some countries, including Canada, still recognize aspirin as a protected trademark
** The term “realtor” was apparently coined in 1915 or 1916 by Charles N. Chadbourn , past president of Minneapoilis Real Estate Board and a writer for the National Real Estate Journal.
Sources other than those cited in post:
Realtor trademark registration.
US Patent and Trademark Office
Related Posts:
Hotels.com is Generic Term Rules Trademark Appeals Board
Starbucks Loses Trademark Case.
Technorati Tags: trademark, NAR, Realtor, National Association of Realtors, generic term, Trademark act
