Remember the scare blogger Real Estate 2.x {x+0} f/k/a Real Estate 2.0 got from Redfin’s Cease & Desist Letter? I’m no fortune teller, but if the recent Trademark Trial & Appeal Board (TTB) decision against the Hotels.com trademark application (Serial No. 76414272) is any indication, the term “real estate” will be deemed “generic” and require a disclaimer of exclusive rights to its use.
The Appeal Board found that hotels.com is a “generic term” & the PTO decision refusing registration without a proper disclaimer was affirmed. The upshot of the decision is that hotels.com was refused trademark registration without a proper disclaimer of the term. The domain name ownership argument did not affect the decsion. The decision was mailed September 11, 2006.
Here is the mark in question:
Legal Note: The decision was by the TTB, which is an administrative agency. A court could overrule the agency and rule in favor of hotels.com. However, the rule of law gives presumptive weight to an agency decision in future court proceedings.
H/T: The TTA Blog
I agree that Redfin has an uphill battle, but you never know what you’re going to get with the TTAB and trademark law. The hotels.com decision doesn’t surprise me though, since if I remember correctly, case law hasn’t favored generic terms that add .com at the end.
There are a host of “2.0″ trademarks in the pipeline right now (Business 2.0, Health Care 2.0, Sports 2.0, Security 2.0). We’ll just have to see how they play out.
Web 2.0 indeed has “Web” disclaimed. So does Dialtone 2.0. Bridges 2.0 and People 2.0 look like they are in the clear without a disclaimer.
With or without the disclaimer of “real estate”, Redfin won’t have free reign to bully people with the use of the term real estate. They’ll only be able to enforce it against marks that are “confusingly similar” or “dilutive”. Unfortunately, real estate 2.x still probably falls in the danger zone of a court battle.
Let’s hope the TTAB changes its mind on the “2.0″ phenomenon.
Excellent points phd.
Re: confusingly similar
If you recall, Redfin applied for registration of a mark used for brokerage services. A blog about real estate, technology and web 2.0 startups may be in a different class. I agree that 2.0 is probably in the danger zone but I think 2.x is a safe harbor for the blog.
Re: Dillutive
It normally requires a stronger mark to win on this basis. I don’t think Redfin’s Real estate 2.0 is that strong a mark to warrant dillutive protection. Just my opinion.
I was registering a mark for a client who used his first name in the mark. The product was food supplements. A previoulsy registered mark for a food store had the same name in their mark. Despite an initial office action denying the registration on confusingly similar grounds, I got it through.
Excellent points. I had forgot that Redfin applied as a real estate brokerage.
I just got a Status 10 Lock NAF / WIPO DISPUTE from GoDaddy…and they have frozen a domain name I have used for over 3 years. How can they do this…ya so a company has a trademark on a domain…but havent said anything for 3 years after I built up my company around it.
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