Trade Mark Issues, Yes or No?

[Tank]

Hello, Thanks for taking a look at this.
I have a few domains with State abbreviation realitor as in these: WYrealtor.com HIrealtor.com and DErealtor.com Would these be considered to be trade mark issues? i was told yesterday they are but looking through the 600+ "realitor" trade marks today, I am leaning toward them being ok due to the fact that each were detailed and none mentioned these states and it seemed apparent to me that a single "Realitor TM" does not cover all words joined with them or why would there be so many variations of the word getting approved? I am honestly not very bright when it comes to reading laws if they get complicated.
Any input or opinions would be appreciated..
Thanks, John....

 

[korganian]

Realitor is a misspelling for realtor. Realtor is trademarked.

 

[Tank]

lol good catch. i have the realtor.. (correct)

 

[enlytend]

Trademark of the National Associaion of Realtors. Covered regardless of other modifiers used with it, like a state name.

Realtors can't use it in their business or DBA name. The only party that could use it would be the corresponding state association, which most likely is already established. And approaching them to try to sell it probably establishes bad faith.

. Can I use the REALTOR® marks in the name of a firm?

No, the REALTOR® marks cannot be included in the legal or DBA name of any firm. Members are authorized to use the REALTOR® marks in conjunction with the legal name of their real estate business (i.e., real estate brokerage) in advertising, signage, etc.

5. Can I use the term REALTOR® in the name of a firm if I add punctuation so REALTOR® is separated from the rest of the name by punctuation?

No, the rule based on Article V, Section 4 of NAR’s Bylaws requires both the REALTOR® marks not be used as a part of a firm name AND that the marks be set off from the legal firm name by appropriate punctuation. Doing one or the other does not satisfy the requirements.

6. Can I use a geographic location with the REALTOR® marks (e.g. Montana REALTORS®, Boston’s Best REALTOR®)?\

Based on Article V, Section 7 of NAR’s Bylaws, descriptive words or phrases are never to be used with the REALTOR® marks. This includes the use of the REALTOR® marks in connection to geographically descriptive terms like the names of cities, states, and places.

7. Why are local and state associations allowed to use geographic locations with the REALTOR® marks?

The Board of Directors has granted local and state associations the right to use geographic locations with the REALTOR® marks in certain specified ways, for example in domain names or the name of official publication.

http://www.realtor.org/logos-and-trademark-rules/logo-trademark-faq

 

[Tank]

thank you. I am going to just let them drop.

 

[cocaseco]

They may still have value. A licensed Realtor in the given market would have no problem using them. It is such a generic word that it is a fine line. Technically, definitely a TM issue though.

 

[Tank]

They may still have value. A licensed Realtor in the given market would have no problem using them. It is such a generic word that it is a fine line. Technically, definitely a TM issue though.

Ya thanks, I just assume stay away from someone else claim.

 

[enlytend]

They may still have value. A licensed Realtor in the given market would have no problem using them. It is such a generic word that it is a fine line. Technically, definitely a TM issue though.

If they were allowed to, but they're not (see my quote above). Only area associations of Realtors are allowed to use the term with a geo modifier - that's a much more limited market.
"Real estate agent" is generic, Realtor is a word they made up to represent their licensing program - they police it pretty aggressively to keep it from falling into generic use.

 

[cocaseco]

If they were allowed to, but they're not (see my quote above). Only area associations of Realtors are allowed to use the term with a geo modifier - that's a much more limited market.
"Real estate agent" is generic, Realtor is a word they made up to represent their licensing program - they police it pretty aggressively to keep it from falling into generic use.

That's the value of a forum, everybody has an opinion.

 

[pmax]

The TM owner of Realtor is well known to enforce trademark protection.
Do proceed with caution.

 

[enlytend]

That's the value of a forum, everybody has an opinion.

That they do.

But by definition, if they have a registered, active tm on Realtor, it is not viewed as generic from a legal standpoint. If the mark is ruled generic (or descriptive), USPTO will reject the application .

You can LOSE a tm if over time most people come to think your mark is for a broad category of Goods & Services and no longer assciated with one particular source/product. Linoleum, Escalator, Aspirin are examples of tm's that became genericized.

That's why companies like National Assoc. of Realtors go after infringers - policing their mark minimizes the chances of losing it that way. They're pretty aggressive about it (as pmax pointed out) because people DO tend to assume its a generic term, so its a threat to their brand.

 

[cocaseco]

Uh huh.

 

[serryjw]

That they do.

But by definition, if they have a registered, active tm on Realtor, it is not viewed as generic from a legal standpoint. If the mark is ruled generic (or descriptive), USPTO will reject the application .

You can LOSE a tm if over time most people come to think your mark is for a broad category of Goods & Services and no longer assciated with one particular source/product. Linoleum, Escalator, Aspirin are examples of tm's that became genericized.

That's why companies like National Assoc. of Realtors go after infringers - policing their mark minimizes the chances of losing it that way. They're pretty aggressive about it (as pmax pointed out) because people DO tend to assume its a generic term, so its a threat to their brand.

------------------
Aspirin was never TM...you are confusing it with Bayer. tampon/Tampax, crayon/Crayola. That is what makes branding so powerful. The public THINKS it is one in the same...NOT!

 

[enlytend]

No I'm not confusing anything. Acetylsalicylic acid / Aspirin. Aspirin is still a Bayer TM in a number of countries EXCEPT the US.

As explained by a trademark law firm:
http://www.trademarkologist.com/2014/01/trademark-case-law-time-machine-generic-marks/

The long version, from Harvard law school:
https://cyber.law.harvard.edu/metaschool/fisher/domain/tmcases/bayer.htm

 

[serryjw]

No I'm not confusing anything. Acetylsalicylic acid / Aspirin. Aspirin is still a Bayer TM in a number of countries EXCEPT the US.

As explained by a trademark law firm:
http://www.trademarkologist.com/2014/01/trademark-case-law-time-machine-generic-marks/

The long version, from Harvard law school:
https://cyber.law.harvard.edu/metaschool/fisher/domain/tmcases/bayer.htm

------------------
I live in the USA...Aspirin is not Bayer.

 

[enlytend]

------------------
I live in the USA...Aspirin is not Bayer.

(Of course not - Aspirin is a product, Bayer is a company.) If you meant to say "Aspirin is not a Bayer trademark in the USA" then that's absolutely correct ...

Because. It. Became. Genericized.

Did you read anything I cited?

In Canada it is still a BayerTM - https://www.ic.gc.ca/app/opic-cipo/...761&extension=0&startingDocumentIndexOnPage=1

Bayer HAD a US tm on it prior to WWI. Being a German company, their US assets were confiscated during WWI.

They were unable to re-establish the mark in the US because it had fallen into generic usage. Trademarks can also be cancelled because of this. This is why companies, like NAR, defend their trademarks. NAR's "Realtor" mark is at higher risk than, let's say, Pepsi or Disney because people are always trying to use it generically.

I have yet to see one source cited by anyone questioning my comments... I've given you 3. If you don't want to learn something, that's not my problem. Have a nice day!

 

[serryjw]

No I'm not confusing anything. Acetylsalicylic acid / Aspirin. Aspirin is still a Bayer TM in a number of countries EXCEPT the US.

As explained by a trademark law firm:
http://www.trademarkologist.com/2014/01/trademark-case-law-time-machine-generic-marks/

The long version, from Harvard law school:
https://cyber.law.harvard.edu/metaschool/fisher/domain/tmcases/bayer.htm

---------------------Yes, I did read the 1st( short version). These cases are an art, not a science when the judges make their interpretation of a mark. You should enjoy reading this problem that the designer line Bottega Veneta had.
http://www.trademarkologist.com/2014/10/bottega-veneta-gets-knotty

I was in the apparel industry for 25 years. I remember 30 years ago that Chanel took out a full page ad in WWD...Quote:

So the company took out an entire back page ad in WWD yesterday to tell us all off entreat us:

“A note of information and entreaty to fashion editors, advertisers, copywriters and other well-intentioned mis-users of our Chanel name: Chanel was a designer, an extraordinary woman who made a timeless contribution to fashion. Chanel is a perfume. Chanel is modern elegance in couture, ready-to-wear, accessories, watches and fine jewelry. Chanel is our registered trademark for fragrance, cosmetics, clothing, accessories and other lovely things. Although our style is justly famous, a jacket is not ‘a Chanel jacket’ unless it is ours, and somebody else's cardigans are not ‘Chanel for now.’ And even if we are flattered by such tributes to our fame as 'Chanel-issime, Chanel-ed, Chanels, and Chanel-ized', PLEASE DON'T. Our lawyers positively detest them. We take our trademark seriously. Merci, Chanel, Inc."
end quote...

As far as I know, Chanel has never been challenged for their boxy cardigan jacket

 

[jberryhill]

"I live in the USA...Aspirin is not Bayer"

That was a consequence of the war, as noted above.

Marks can become generic through failure to police the mark or lack of a suitable alternative for the product in question. That happened to "zipper", "cellophane", "nylon" and a number of others (although "zipper" was originally a TM for a type of rubber galoshes which popularized the type of closure we call zippers). While TM attorneys like to scare their clients with the spectre of genericization, it does not happen very often these days for a number of reasons not worth going into great detail here. The REALTOR mark has been challenged a number of times, and within the last few years. The NAR wins every time, so an armchair opinion of "I think it is generic" won't get you very far beyond your armchair.

Needless to say, in the US, "REALTOR" is a zealously-guarded mark of the NAR. Only NAR members may call themselves REALTOR, and the NAR further includes among their membership rules, specific rules on how members may or may not use the REALTOR mark in domain names. So, in other words, the suggestion above that REALTOR domain names could be sold to a bona fide NAR member, is not a good suggestion. If a REALTOR violates the NAR's domain name rules, then they can have their membership revoked, and no longer be one.