The Trademark Trial and Appeal Board ("Board") of the United States Patent and Trademark Office has rejected a challenge claiming that the REALTOR® and REALTORS® ("Marks") registered trademarks are generic and should be canceled.
Jacob Joseph Zimmerman ("Challenger") was in the business of buying and selling website addresses combining the Marks with various geographical names, owning approximately 1900 such addresses. Use of the Marks in such a manner by a non-member is unauthorized and an impermissible use by members. Click here to view NAR's Trademark Manual. The Challenger claimed that his business was affected adversely by NAR's trademark enforcement efforts because it made the audience for his website addresses, namely real estate professionals, most of whom were members, reluctant to purchase his website addresses. Therefore, he filed a petition with the Board seeking to cancel the Marks, claiming the Marks were now generic because they are synonymous with "real estate agent".
The Board reviewed the history of the Marks. The record indicated that the term "Realtor" was created in 1916 as a way for real estate professionals to signify their membership in a national real estate association. The Marks were registered with the United States and Patent and Trademark Office in 1950 shortly after the Lanham Act allowed for registration of collective membership marks.
The legal analysis by which a trademark may be canceled for genericness requires first, determining the category of goods and services offered and second, determining whether the term is understood and used by the members of the relevant public to primarily refer to the category of goods or services in question, i.e., whether the term is used in a generic fashion to refer generally to goods or services. The party challenging a registered term has to prove the mark's genericness by a preponderance of the evidence.
Turning to the first question, the Board found that the category of services offered was real estate services offered by members of a professional trade association.
The Board then carefully examined all of the evidence submitted by both NAR and Zimmerman on the issue of how the Marks were understood. First, the Board considered whether if any other competing associations used the Mark and found that no other trade association used the Marks to refer to its members. Indeed, the Board found that NAR's policies required individuals to stop using the Marks when their REALTOR® association membership ended and any misuses were policed by the REALTOR® association, as evidenced by the Freeman case before the Board in 2002 (click here to read a summary of the earlier decision).
Next, the Board looked at the uses of the Marks by REALTOR® Associations demonstrating once again the crucial role placed by member boards in protecting the REALTOR® Marks. The Board examined hundreds of pages of materials from NAR and its members associations. The Board found that in all instances, the Marks were used in a manner consistent with the usage requirements outlined in NAR's Trademark Manual. Thus, the Board found no generic uses of the Marks by REALTOR® Associations.
The Board also considered dictionary definitions of the Marks. The Board found that the dictionary definitions demonstrated the fact that within the United States, REALTOR® is understood as a proprietary term referring to members of NAR. Thus, the Board found the dictionary definitions recognized the Marks as registered trademarks.
Another issue the Board reviewed was the use of the Marks within the media. The Challenger had submitted a newspaper survey, allegedly showing widespread misuse of the Marks. The court found that the evidence submitted by the Challenger demonstrated in many instances, the media used a capitalized "R" when it used the Marks. The Board found that this proper use of the Marks within the media demonstrated that REALTOR® associations had succeeded in properly educating the media and "some portion" of the general public on the proprietary nature of the Marks. The Board also found that the Challenger's evidence of misuse of the Marks by federal court judges was not persuasive, as those misuses were isolated and had little influence on the public because of their limited circulation. Thus, the Board found the Challenger's allegations of widespread media misuse of the Marks was misplaced.
The Board found that the most contentious disagreement between the parties centered on defining the "buyers" for the services offered. The Challenger argued that the proper audience was the purchasers of real estate services, or the general public. NAR argued that the relevant group was real estate professionals, as real estate professionals are the purchasers of membership services offered by REALTOR® associations.
The Board also examined surveys submitted by the parties. NAR submitted a survey, conducted in accordance with accepted scientific surveying methods, which found that over 85% of real estate professionals understood the Marks to connote membership in the NATIONAL ASSOCIATION OF REALTORS®. The Challenger conducted a survey of members of the general public who were in the market for real estate services, with this survey finding a very low percentage of those surveyed connected the Marks with membership in the REALTOR® association.
The Board found that the Challenger's survey contained many deficiencies, as the questions were improperly phrased and poorly supervised by the Challenger's expert witness. The survey was also not conducted in accordance with accepted surveying methodology, and therefore, the Board gave the Challenger's survey very little weight.
Meanwhile, the Board found that NAR's survey was conducted in accordance with accepted surveying methodology. The Board found the survey's conclusion very persuasive that the Marks are "strong source indicators" among real estate professionals as identifying members of REALTOR® associations.
Based on all of the evidence, the Board found that the Challenger had failed to demonstrate by a preponderance of the evidence that even a significant minority of real estate service purchasers perceived the Marks as generic. The Board also noted that real estate professionals should be permitted to continue making knowledgeable and informed decisions based on the source-indicating functions of the Marks. Since the Challenger failed to meet his burden of proof, the Board rejected the Challenger's petition to cancel the Marks holding that the Marks continue to function as collective Marks and have not become generic.
Zimmerman v. NATIONAL ASSOCIATION OF REALTORS®, Cancellation Nos. 92032360 & 92040141 (U.S.T.T.A.B. Mar. 31, 2004). [Note: When an official reporter citation becomes available for this case, the citation will be updated to reflect this information].