ASREC v. ACREC: AffiliatePrevails in Trademark Infringement Suit
Note: This case is not published in an official reporter and may not be cited as authority. Consult with counsel before relying on this case.
In a 1979 case filed in Federal District Court in Illinois, the American Society of Real Estate Counselors, a NATIONAL ASSOCIATION OF REALTORS® (NAR) affiliate, brought a trademark infringement action against the American College of Real Estate Consultants. The court granted ASREC's motion for summary judgment and enjoined ACREC from further use of the ACREC name.
The American Society of Real Estate Counselors (ASREC) was a not-for-profit trade association of real estate professionals which specialized in providing counseling services concerning real estate investment matters. Beginning in 1957, the society had continuously used the name "ASREC." In April 1959, ASREC adopted and encouraged its members to use the professional designation and collective membership mark "CRE" to indicate membership.
The American College of Real Estate Consultants (ACREC) was a for-profit incorporated trade association of approximately 250 real estate professionals engaged in the business of consulting with clients on real estate investment matters. ACREC was incorporated in Minnesota in 1975, 18 years after ASREC began to use ASREC as its name, and 17 years after ASREC adopted the "CRE" mark. Since its inception, ACREC has permitted and encouraged its members to use "CREC" to indicate membership in ACREC.
In March 1978, ASREC became aware of ACREC's use of "ACREC" and "CREC." In April 1979, after several attempts to establish its rights proved unsuccessful, ASREC sued ACREC for unfair competition.
In its motion for summary judgment, ASREC argued that ACREC's actions met all three elements required for unfair competition under 15 U.S.C. Section 1125(a). These elements are: (1) the defendant caused goods or services to enter into commerce; (2) the defendant's use of marks in connection with its goods or services constitutes a false designation of origin or false description or representation; and (3) as a result of such false description or representation, the plaintiff was, or was likely to be, damaged.
To prove element two, ASREC showed (a) that the marks in question ("ASREC" and "CRE") were uniquely associated with its services, and (b) that ACREC's use of similar or identical marks ("ACREC" and "CREC") created a "likelihood of confusion" between the products or services of the plaintiff and defendant. The court found that were no issues of material fact, and granted summary judgment in favor of ASREC.
In its order, the court enjoined ACREC from use of the name "American College of Real Estate Consultants" and the designation "CREC." The court also ordered ACREC to refrain from use of a name which could be confused with the "American Society of Real Estate Counselors" or the designation "CRE."
ASREC V. ACREC, Docket No. 79-C-1747 (N.D. Ill.). [Note: This opinion was not published in an official reporter and therefore should not be cited as authority. Please consult counsel before relying on this opinion.]