Freeman v. NATIONAL ASSOCIATION OF REALTORS®: NAR Wins Freeman Trademark Cancellation Trial
The United States Patent and Trademark Office has dismissed a trademark cancellation petition for the REALTOR® and REALTORS® marks that was filed by a former member.
Arleen Freeman ("Freeman") was a dues-paying member of the San Diego Association of REALTORS®, the California Association of REALTORS®, and the NATIONAL ASSOCIATION OF REALTORS® ("NAR") from at least 1975 until 1996. Freeman was licensed to use the REALTOR® and REALTORS® trademarks ("Trademarks") while she was a member of NAR, pursuant to NAR's bylaws. NAR registered both marks with the United States Patent and Trademark Office in 1950 and 1949, respectively. To learn more about the Trademarks and their proper usage, click here.
Freeman discontinued her membership in 1996, and therefore her license to use the Trademarks was also terminated at that time. Freeman challenged the validity of NAR's trademark registrations by filing a cancellation petition with Trademark Trial and Appeal Board, arguing that the Trademarks were generic words referring to a "realty agent." She introduced evidence during the proceedings which she alleged supported her claims, arguing that the Trademarks had been generic from the time of their creation in 1916. NAR strongly disputed her claims, and brought forth its own evidence showing that the Trademarks were properly understood in the relevant community to connote NAR membership. NAR also argued that Freeman was estopped from seeking cancellation of the Trademarks, under the doctrine of licensee estoppel.
The United States Trademark Trial and Appeal Board rejected Freeman's cancellation petition, based on the doctrine of licensee estoppel. The doctrine of licensee estoppel provides that a trademark licensee is estopped, or prohibited, from challenging the validity of the licensor's trademark under certain circumstances. The doctrine of licensee estoppel does not bar a challenger who argues that the mark became generic after the challenger's license for use had expired or was terminated.
The Trademark Trial and Appeal Board ruled that Freeman was estopped from seeking cancellation of the Trademarks. The Board based its decision on the fact that Freeman had a license to use the Trademarks for over 20 years. Since she was arguing that the Trademarks had always been generic and did not only become generic after her membership terminated, the doctrine of licensee estoppel barred her cancellation petition. Because Freeman was estopped from seeking cancellation of the Trademarks, the Board did not need to consider the merits of Freeman's allegations in her cancellation petition. Based on the doctrine of license estoppel, the Trademark Trial and Appeal Board dismissed the cancellation petition filed by Freeman.
Freeman v. NATIONAL ASSOCIATION OF REALTORS®, Cancellation Nos. 27,885 & 28,047 (U.S.T.T.A.B. June 18, 2002). [Note: When an official reporter citation becomes available for this case, the citation will be updated to reflect this information].