Got a cease a desist email. What do I do now?

[WhoaDomain.com]

Just got an cease and desist from realtors association for bitcoin domains that contains realtor in it. Rookie move on my part. Too late for grace delete. What are my options here?

 

[dordomai]

I don't get what the issue is here. The OP owns a domain with the term realtor in the domain but it doesn't pertain to their trademark right?

As long as the OP isn't interfering with their trademark they don't have an issue. I took a quick glance and there was one for Jewelry, Tires, Lock Boxes and even Clothing under realtor.

Realtor is in fact a generic word and not owned by anyone as long as you stay away from their TM and others. (You must read what the TM is and stay away.)

If it wasn't generic there would not be other companies with the same TM, that's a fact.

I also noticed that TM realtor was cancelled on 7/25/16 and if it's the same people they have realtors, realtors.com trademarked only. (Didn't do a full search though but even if they did renew the OP isn't selling property, homes etc. like them and wasn't his intention from what I gather.)

Now if the OP is placing ads, property for-sale, close to their mark they have a case but if he has keywords for BitCoin which was his intention I don't see a problem myself.

If you can't optimize the keywords where it's parked then take it to a website, or another type of landing page where it has nothing to do with property, or sales. Or don't direct it anywhere.

Everything has a TM, staying away from the mark is the key. I spent 5K or more a couple years ago to defend a generic word where an arrogant company, attorney thought they had all the rights to the word.

Well guess what I still own the domain if that says anything.

I had a domain taken away from me years ago, when I didn't have the funds to fight these type situations and I can assure you that won't happen again if I can stop it.

Not a attorney but just my 2 cents, take it for what it's worth..

From what I have read, realtor is not generic, it was invented by them and became part of the English language, just like we say to google.

It's a pure TM and would be treated like Google or Microsoft.

https://en.wiktionary.org/wiki/realtor

Etymology[edit]
Coined by Charles N. Chadbourn in 1916, from real (in real estate) and -or, based on the model of Latin agent nouns ending in -tor (such as actor, creator), to refer to real estate professionals who are members of the National Association of Realtors, a trade association in the United States.[1]

 

[mad409]

From what I have read, realtor is not generic, it was invented by them and became part of the English language, just like we say to google.

It's a pure TM and would be treated like Google or Microsoft.

http://www.rd.com/culture/surprising-trademarked-words/

Before you post this type of stuff have you even looked at other TM's with the name realtor? Come on.. LOL

 

[dordomai]

Before post this type of stuff have you even looked at other TM's with the name realtor? Come on.. LOL

http://ttabvue.uspto.gov/ttabvue/v?pno=92032360&pty=CAN&eno=33

Accordingly, based upon all the evidence in this record, we find that the marks REALTOR and REALTORS continue to function as collective service marks and have not become generic terms.

In 1949, the National Association of Real Estate Boards obtained U.S. registration no. 515,200[7] for "REALTORS" as a collective trademark for real estate brokerage services. In 1950, it obtained a second registration, registration no. 519,789,[8] for "REALTOR", in the same field.

NAR has since obtained registrations for "REALTOR" in such fields as electronic lock-boxes,[9] clothing,[10] and jewelry.[

11]

 

[mad409]

http://ttabvue.uspto.gov/ttabvue/v?pno=92032360&pty=CAN&eno=33

You're exactly right and are not generic terms for their trademarked use only, that's it.

Like I pointed out there are a few other trademarks using this term, can't be much clearer.

http://www.trademarkia.com/trademarks-search.aspx?tn=realtor

 

[dordomai]

You're exactly right and are not generic terms for their trademarked use only, that's it.

Like I pointed out there are a few other trademarks using this term, can't be much clearer.

http://www.trademarkia.com/trademarks-search.aspx?tn=realtor

Yes but they own these as well it seems!

On Wednesday, September 25, 2013, a U.S. federal trademark registration was filed for REALTOR by National Association of Realtors, Chicago, IL 60611. The USPTO has given the REALTOR trademark serial number of 86074481. The current federal status of this trademark filing is REGISTERED. The correspondent listed for REALTOR is KATHERINE R. JOHNSON of NATIONAL ASSOCIATION OF REALTORS, 430 N MICHIGAN AVE, CHICAGO, IL 60611-4011 . The REALTOR trademark is filed in the category of Clothing Products . The description provided to the USPTO for REALTOR is clothing, namely, t-shirts, shirts, short-sleeved shirts, long-sleeved shirts, sweat shirts, hooded sweat shirts, polo shirts, fleece pullovers, sweaters, jackets, scarves, visors, hats, and caps.

http://www.trademarkia.com/realtor-86074481.html

 

[mad409]

@dordomai

I told you other companies have trademarks for the name realtor, I'll provide another link as I didn't go through and read all the TM's.

http://www.trademarkia.com/realtor-76321648.html

Not them right??

 

[dordomai]

@dordomai

I told you other companies have trademarks for the name realtor, I'll provide another link as I didn't go through and read all the TM's.

http://www.trademarkia.com/realtor-76321648.html

Not them right??

I don''t know the details behind it. Perhaps they had provided services under this name for a long time or they have settled this with the NAR in some way. Another member here pointed out that they had a domain wih their name but got their permission to use it.

The NAR was in contact with the previous owner and according to them it is OK to use as long as you make it clear that your site is aimed only at members of the NAR (I am in possession of the correspondence). If this is possible certainly depends on the name and since you received a C&D its prudent to lay down the pitchfork. But the NAR can be spoken to and they have some people with sense there

TM law is surely complex but even if someone got one doesn't mean they can't dispute it or sue.

It's certainly not a case where we are dealing with a generic word like 'internet' or 'world'.

US trademark office ruled it not to be a generic term.

Avatar does not offer any goods or services that could somehow justify usage of the word.

If you are a domainer the odds are stacked against you and more likely than not you will lose.

 

[mad409]

US trademark office ruled it not to be a generic term.

And where did they say this? Provide link of non-generic and no one could file a new trademark using this term in any form or fashion? Or have a trademark?

Maybe you should google realtor tires, we can stop the back and forth.

 

[dordomai]

And where did they say this? Provide link of non-generic and no one could file a new trademark using this term in any form or fashion? Or have a trademark?

Maybe you should google realtor tires, we can stop the back and forth.

Does avatar sell any goods or services under that name?

 

[mad409]

Does avatar sell any goods or services under that name?

It's not even interesting when you start being a troll rather than giving facts and information. I'm trying to provide insight on the subject, you're being your normal self.

Later..

 

[dordomai]

It's not even interesting when you start being a troll rather than giving facts and information. I'm trying to provide insight on the subject, you're being your normal self.

Later..

I think it's more likely that you are trolling. Trying to argue that it is somehow a good idea to keep this worthless domain and not worrying about potential legal consequences is really poor advice.

What would be the point of doing this?

Also I was giving facts and information instead of calling others trolls.

 

[mad409]

I think it's more likely that you are trolling. Trying to argue that it is somehow a good idea to keep this worthless domain and not worrying about potential legal consequences is really poor advice.

What would be the point of doing this?

Also I was giving facts and information instead of calling others trolls.

I'm simply pointing out that everything has a TM, you may be correct, you may be wrong and like you said it's complex I understand.

I have never told the OP to keep the domain, or domains as I don't even know the names and I clearly stated I'm not an attorney.

If you have all the facts and are graced in TM law proceed and I'll move along.

The trolling comes from your long history of commenting and disagreeing with what I say in multiple past threads, yes I think you like to troll certain people.

 

[dordomai]

I'm simply pointing out that everything has a TM, you may be correct, you may be wrong and like you said it's complex I understand.

In that case it is too complex to understand for me without a legal background..Maybe you are right and there could be loopholes and other possibilities to use such a domain name. I don't know. Previously it had been ruled to be non-generic.

I don't think it is a clear as using the generic name 'boat'

I think common sense would tell one to stay away from it.

I didn't troll you, at least not intentionally. I had responded to your posts and you had responded to mine.

If you think disagreeing with you = trolling I will simply try to stop answering your posts that should solve the problem then.

Alternative solution would be to agree with the content of all your posts, but that could turn out to be difficult to manage in practice

Happy Holidays!

 

[mad409]

I didn't troll you, at least not intentionally. I had responded to your posts and you had responded to mine.

If you think disagreeing with you = trolling I will simply try to stop answering your posts that should solve the problem then.

I totally agree it's best to stay away but if you have a really good domain one may want to look further, seek legal advise.

I'm saying don't let a C & D's stop you in your tracks but rather investigate before you give in if it's worth your time and money. If not drop it.

So much going on with this term realtor the more I look that it would in fact take an attorney to figure this out.

Like: http://www.trademarkia.com/irealtor-87180738.html

On a side note we already talked about this in PM some time ago, right? Stop it..

Happy Holidays to you as well, my best to you and your family domaining aside.

 

[dordomai]

I totally agree it's best to stay away but if you have a really good domain one may want to look further, seek legal advise.

I'm saying don't let a C & D's stop you in your tracks but rather investigate before you give in if it's worth your time and money. If not drop it.

So much going on with this term realtor the more I look that it would in fact take an attorney to figure this out.

Like: http://www.trademarkia.com/irealtor-87180738.html

On a side note we already talked about this in PM some time ago, right? Stop it..

Happy Holidays to you as well, my best to you and your family domaining aside.

thx!

 

[promo]

No offence Mad409 but you clearly know nothing about TM law nor the NAR or the term realtor. You thought it was a generic term.

As such I would venture you are not providing "insight" but are just adding to the confusion.

We have a page worth of comments from you that could be summed up to "I dont know really". Better to stay out then.

 

[decode]

Any licensed realtor should be allowed to buy it from you. As part of most real estate dues there is an agreement to let agents/brokers use/license the term "realtor" this would be the most likely fair use case and it is a totally appropriate use if a realtor has a site with that term in it since they pay a lot of money every year for the right to use the term and trademark. There is a .realtor that is also limited to industry professionals allowed to use the term, anyone qualified to have a .realtor would be qualified to legally use a .com with realtor in it. The big caveat is there are lots of rules surrounding negative use so it has to be positive and pass the same rules as the .realtor puts in.

 

[mad409]

No offence Mad409 but you clearly know nothing about TM law nor the NAR or the term realtor. You thought it was a generic term.

As such I would venture you are not providing "insight" but are just adding to the confusion.

We have a page worth of comments from you that could be summed up to "I dont know really". Better to stay out then.

No offence taken, let me add a little more confusion as you call it.

http://www.adrforum.com/domaindecisions/137218.htm

 

[168]

ok so it may be a global term but if a bod in the uk wants to buy a house or property in the uk they pop down to an estate agent - just saying -
not many in the uk would know or realise what that tm term means as we use a different word for property resellers etc just as we don't use the word attorney we use lawyer etc

Great points !
It depends on where the TM is located and how it is used in that market.
Cheers

 

[Micklepickle]

In its most simplistic form, open an English dictionary and see the definition of Realtor:

Dictionary.com
Trademark.
1. a person who works in the real-estate business and is a member of the National Association of Real Estate Boards, or one of its constituent boards, and abides by its Code of Ethics.

Merriam-Webster
Collective Mark
used for a real estate agent who is a member of the National Association of Realtors

Read a couple of books on the factual structure of IP Law, gain an understanding of it and how it functions.

These threads tend to be a lot of the blind leading the blind on an issue which people would do best to learn the basis of IP law from authoritative sources and not from the chirping masses.

 

[mad409]

In its most simplistic form, open an English dictionary and see the definition of Realtor:

Dictionary.com
Trademark.
1. a person who works in the real-estate business and is a member of the National Association of Real Estate Boards, or one of its constituent boards, and abides by its Code of Ethics.

Merriam-Webster
Collective Mark
used for a real estate agent who is a member of the National Association of Realtors

Read a couple of books on the factual structure of IP Law, gain an understanding of it and how it functions.

These threads tend to be a lot of the blind leading the blind on an issue which people would do best to learn the basis of IP law from authoritative sources and not from the chirping masses.

Interestingly, the Merriam-Webster dictionary ("America's leading and most-trusted provider of language information", says that the word, "realtor" (since when are trademarks in the dictionary? The word, "Pepsi" is not listed in this dictionary, and the word, "coke" is listed as referring to the residue of coal), is a word "used for a real estate agent who is a member of the National Association of Realtors".

However, in an interesting contrast, the UK-based Collins Dictionary, which is arguably equally famous as the Merriam-Webster one, succinctly states that the word, "realtor" is a simple noun and refers to an estate agent, especially an accredited one, and no reference at all to the NRA or any other governing body for real estate agents.

 

[platey]

the problem here having read much of the thread is that while the tm in question is a valid tm and as such domainers would do well to steer clear of buying domains with this tm word in it etc

but domainers are domainers and as such the majority of domainers are not extremely qualified in the legal profession and not familiar with discussing ghetto finer points of trademark law - that's why lawyers exist

so that domainers can be domainers
and lawyers can be lawyers

every domainer had to start somewhere and a domainer who hasn't made a mistake is a perfect person

as such domainers learn from their own mistakes and the mistakes of other domainers that's how a domainer gets to become
an experienced domainer

Ok so its easy to find out if a domain infringes a trademark
(when a person knows how)
but not until they know how

many successful domainers are starting to work with lawyers it would appear

 

[Kate]

 

[dordomai]

This could be simplified:

Do I have a clue? Yes ---> Keep domain and close thread
No --> Grace Delete

But if you have to ask you probably don't have a clue so this could be simplified even further:

---> Grace Delete

 

[mad409]

Show attachment 45457

With all due respect Kate if it were that easy I wouldn't find a domain you own in less than 2 mins. that has a trademark. So the chart is flawed from the get go.

Any good one word, among other stuff has TM's and it's how the domain is used and also if @promo whats to tell me I'm wrong, should not be here again so be it.

The problem we have in this thread is Realtor is a generic term but the NAR, the USPTO says it isn't but it's all about money and power. It was challenged back in 2004 for being generic, denied but I have seen a tire TM with the name and others using the name unrelated to them but it still appears they have a huge power grab on an every day used word / noun which isn't right.

I totally agree with what this person says, hopefully it will change some day. The OP has something related to BitCoin + realtor and they felt threatened. Give me a freakin break! Move everyone to their .realtor and get over yourself, isn't that why you launched .realtor?!!


Could not say it better myself, from DNattorney.com.

In my view, the "REALTOR" mark is ripe for cancellation, since it is so widely used in my opinion, by people who do not use it as a trademark whatsoever. It has become generic in my opinion, despite the efforts that have apparently been made by organizations such as CREA and the NAR. In my opinion, it is meshuga to pretend that "realtor" is some kind of super-exclusive professional designation, when in reality it likely just means a real estate agent. What does it accomplish? Nobody is allowed to act as a real estate agent unless they are licensed anyhow, so why go to such lengths to protect a mere word? Doesn't make any sense, other than if one considers that it may be a mere power-grabbing tactic by the real estate associations.

End of rant, sorry...