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Your Part in Defending the Marks

July 30, 2013

A valuable benefit of membership in the REALTOR® organization is being able to use the REALTOR® trademark. Consumer awareness campaigns at the local, state, and national level promote the value of using a REALTOR® and the difference between REALTORS® and real estate agents who are not members of the NATIONAL ASSOCIATION OF REALTORS®.

Yet, in order to maintain the value and importance of the mark, REALTOR® associations must actively protect the mark by promoting its proper use and correcting misuses. If the REALTOR® organization didn’t actively defend its trademark and allowed it to become generic, it would become harder if not impossible to enforce its proper use as identifying a member of the NATIONAL ASSOCIATION OF REALTORS®.

Last year alone, NAR’s trademark administrator received nearly 400 complaints from members about misuses of the trademark. The great majority of those complaints pertained to members who were violating NAR rules by using a geographic description in connection with the term REALTOR®. For example, a member located in Chicago may have obtained the domain name bestchicagorealtor.com or smithchicagorealtor.com. Those examples are both improper uses of the trademark because a descriptive term, Chicago, is being used to modify REALTOR®. Members may use the REALTOR® trademark only in connection with their name and with the name of their business (e.g., www.judismith-realtor.com or eliteexecutiverealtors.com). The rules specifically prohibit members from using any descriptive terms in connection with the mark.

Educate members to avoid confusion

There are several good reasons why members are restricted as to how they can use the REALTOR® trademark, and simply being made aware of these reasons has led to increased compliance by members. First, in order to protect the federal trademark registration, the mark must be used only to serve its purpose of identifying members. Using the mark for any other purpose—for example, using it to refer to real estate agents in general—is outside the scope of its meaning and may weaken our ability to maintain trademark protection.

Further, REALTOR® means “member of NAR” and all members of NAR are REALTORS®. Other than the membership class called “International REALTOR®” and the new “Student Member,” NAR does not have different classifications of membership. That is why it is improper to use a descriptive term in connection with the term REALTOR®. For example, NAR does not have membership classes for “commercial”, “green,” “diversity,” or “second-home” REALTORS®. Therefore, using such descriptive terms is improper and may lend itself toward incorrectly being interpreted to mean “real estate professional” generally. For example, members should not use slogans in their marketing like these: “Miami’s top-producing second-home REALTOR®” or “Live in concert with your environment with a green REALTOR®.”

NAR has established a comprehensive Trademark Protection Program that is designed to ensure that the REALTOR® trademark is used only by or in reference to members of NAR and state and local associations and to ensure that all uses are proper in form and context. Because NAR believes that voluntary compliance is the most beneficial and cost-effective way of protecting and maintaining the REALTOR® trademark, in addition to its education program, NAR has implemented a written cease-and-desist process to encourage compliance by misusers. However, if compliance or a satisfactory agreement cannot be reached, NAR will initiate a complaint against a member with his or her local association or take legal action as necessary. For example, in 2012 NAR filed a complaint with the World Intellectual Property Organization over the domain name gayrealtor.com after its owner declined to stop using the URL. NAR was awarded ownership of the domain.

When necessary, NAR has been successful in obtaining court orders against infringers ordering that they cease and desist misuse of the trademarks and, in many cases, pay NAR damages relating to the infringement and costs associated with the lawsuit, including attorneys’ fees. In addition to other legal actions NAR may pursue, NAR may file a Uniform Dispute Resolution Policy complaint against an individual or company that is misusing a mark in a domain name, which may result in mandatory transfer of the infringing domain to NAR.

Locals have an essential role

State and local associations also have the duty to police and enforce proper use of the trademark. NAR bylaws require each association to cooperate and coordinate with NAR in any and all attempts to halt or prevent any unauthorized or improper use of the REALTOR® trademark. Associations are responsible for ensuring that their members use the trademark in compliance with the license set forth in the NAR Constitution and bylaws and the policies and guidelines set forth in the Membership Marks Manual. To achieve this, each association should assist in familiarizing its members with the policies and guidelines in the manual by conducting education sessions for current members and by covering this topic in new member orientation. The manual also contains sample letters associations may use to contact misusers of the trademark. Often, members do not intend to break the rules. They just weren’t aware of them. That is where the state and locals can be most effective.

Recently, NAR updated the manual into an easy-to-read-and-access format available at www.REALTOR.org/mmm. The trademark rules have not changed, but their accessibility to members and association staff has greatly improved. The manual also incorporates the specific guidelines and application of the rules regarding use of the trademarks on the Internet and specifically in social media. The updated manual also contains links to the educational and entertaining trademark videos and sample letters to help association executives with their own trademark protection efforts.

The goals of NAR’s Trademark Protection Program are to preserve the federal trademark registration, create and increase the value of goodwill, and maintain the original intended purpose and meaning of the REALTOR® trademark for the benefit of all members. In order to achieve these goals, members must be made aware of the rules governing their use of the trademark and misuses of trademark must be recognized, identified, and corrected.

Katherine Johnson is an associate counsel at National Association of Realtors® in Chicago. She can be reached at kjohnson@realtors.org.