Original Realtor trademark on a decal
“I need a realtor.” ” I’m a Realtor.” Has the term “realtor” become generic for real estate agent and thus fallen into the public domain? 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 baby? 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?
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 public understand that realtor only refers to members of NAR?
Competent 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 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.
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. Here’s an example:
Realtor. Registered trademark of Titan International, Inc. for tires. Registration here. NAR tried to prevent the registration and lost. The 2004 Trademark Appeals Board decision here.
TIP: NAR members may register marks containing the word realtor but must disavow any claim to the word realtor. Here’s an example of a perfectly legal trademark:
Registered 2006.
* According to wikipedia, some countries, including Canada, still recognize aspirin as a protected trademark
** The term “realtor” was coined in 1916 by Charles N. Chadbourn 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
Timely post! See http://www.realtorgenius.com/?p=148
Very interesting post, especially in light of Benn’s news: http://www.realtorgenius.com/?p=148.
I created a poll that should get more conclusive results than Zimmerman’s survey. You can find the poll in the right hand column on this page:
http://www.zillow.com/real-estate/WA-Seattle?pollId=284
Good work David. Thanks for the tip.
It’s funny, I was asked to look at a new realtor social networking site, Realtorclix.com & I thought they were at risk of a hassle from NAR.
You know how we like to stick our noses in– so this oughta be fun.
In my informal, highly unscientific poll I found that the question “what’s the difference between a Realtor and a Real Estate Agent” is usually greeted with a blank stare.
I’m reminded of the poll last November in which Real Estate Agents fared poorly in the Harris Poll ranking prestige of professions. The NAR argued that the poor showing was because the Harris Poll asked folks what they thought about “Real Estate Agents” instead of asking what they thought about “Realtors.” In their press release addressing the study the NAR reasoned that “Realtor is to real estate agents as Mercedes is to car.” http://www.equityscout.com/realtors-fight-back
Does anyone believe this? The NAR leadership is living on Mars. These guys need to get out more.
I was just talking with a friend about how the term Realtor is actually the NARs and that real estate agent is everyone else. She’d never known.
The reality seems to be that consumers use the terms realtor and real estate agent interchangeably, while real estate professionals and insiders KNOW the difference. (that’s why NAR wants members to capitalize and use the circle r whenever possible.) This makes the generic case harder to win. Also, check the dictionaries. Realtor is usually defined as a member of NAR. Score another for NAR.
As a lawyer, I can say NAR is doing what it must do to protect its mark– any laxness can indicate an acceptance of the consumer reality. So, NAR is right to demand that Realtor Genius cease and desist– it’s just good lawyering.
Notwithstanding, I think a blog about the industry by a realtor may not only be safe but may actually be suitable for trademark protection itself. If RealGenius tested it, they’d have a good shot IMO. Here are all the registered marks using realtor at uspto.gov:
http://tinyurl.com/2lzp5q
Your trademark search has expired.
NAR has limited ability to protect “realtor.” I only mean this in terms of the resources they commit to it. There are a bazillion violating websites out there using “realtor” incorrectly in their urls. I think NAR rarely goes beyond the cease and desist letter.
Very interesting. Thanks Maureen.
>>Step two is the tricky part. Does the majority of the public understand that realtor only refers to members of NAR?
Actually that’s the easy part in some States. If the local Realtor Assoc owns the MLS and you have to become a member of NAR to get MLS membership, then all real estate agents in the State are realtors. There is no difference between them in the publics mind.
Realtor = real estate agent.
Meanwhile my realtor dues turn into glossy advertising mailed to me a couple times a year explaining how realtors belonging to NAR make more money than “mere” real estate agents.
I can’t make this crap up.
Minnesota is one of the states that require membership in the association to have access to the MLS. Since non-member agents cannot post their listings to the MLS, it would stand to reason that their earning power would be less . . . unless the stats on how many homes are sold through the MLS are also fabricated. Just how do they track the ones not on the MLS?
The links to RealtorGenius are showing a new name and a missing post. Most probably an ominous warning.
I’m not sure I would agree that members of NAR know the difference between real estate agent and REALTOR any more than the public until they get a cease and desist letter. I know many agents who improperly use the word REALTOR in everyday life. What did you answer the last time you were asked your occupation?
Realtor Genius was told to cease and desist by NAR for use of the word Realtor. It’s now Agent Genius.