The legal staff at NAR's Chicago headquarters are celebrating in the summer heat with a mid-afternoon ice cream treat. In fact, the whole building of employees is passing smiles and congratulations to one another.

The NAR has beaten back an attempt by a former Realtor and her attorney to get the U.S. Patent and Trademark Office to cancel the National Association of Realtors membership marks – REALTOR and REALTORS.

The NAR, with the help of trademark attorney Jeffrey A. Handelman of Brinks Hofer Gilson & Leone, proved to the three-judge panel of the U.S. Patent and Trademark Office, that Arleen Freeman, a San Diego, California real estate licensee and broker, was precluded from challenging the membership mark because she was a former member of the association.

Freeman had, in fact, served on a committee with the San Diego Association of Realtors, under the California Association of Realtors. Following her disassociation with the NAR and its subsidiary organizations in California, Freeman created a competing organization to the San Diego Association of Realtors called the San Diego County Realty Association.

According to the judges’ decision, Freeman had attempted to prove that the terms Realtor and Realtors were generic terms, and that they should be cancelled because the terms cause confusion to her clients, and that when she was a member of Realtor organizations, she was harmed by the paying of dues because she would not have paid them were it not for the Realtor trademark. The petitioner cited numerous examples of generic use of the words in magazines, encyclopedias and court rulings.

But the issue of whether or not the words Realtor and Realtors are generic was preempted by more compelling evidence to the court.

In discovery, a document proving Ms. Freeman’s former membership was produced. Ms. Freeman did not deny her membership, but based her challenge on the generic use of the term Realtor by the public and press, and citing that the term caused confusion for her clients when she tried to explain that she was not a Realtor, despite their belief that real estate agents and Realtors are one and the same. Her goal was to be allowed to be called a Realtor without the burden of membership to the NAR and its subsidiaries. As proof that the term is generically understood, the petitioner produced the results of a telephone survey of under 100 people.

”The survey was flawed,” recalls Laurie Janik, general counsel to the NAR. “The gentleman who did the survey didn't know the difference between a membership mark and a trademark, and he didn’t include an 'I don’t know' option in the responses which encouraged people to guess. His conclusion was that 10 percent recognized Realtor as a registered mark.”

The NAR maintained that the term Realtor is for members, not the public. A membership mark connotes membership, and is different from a trademark which connotes a brand name. The NAR produced its own survey of 204 members and potential members and found that 84 percent of those surveyed recognized the terms Realtor and Realtors as service marks.

At one point in the hearing, one of the judges asked attorney Barry if he were asking the panel to cancel a “long-standing” membership mark on the basis of a telephone survey of 94 people.

Barry replied in the affirmative, say witnesses.

As the respondent, the NAR asserted that, because Freeman was a member of the NAR (or its affiliated associations) for many years and was authorized as a licensee to use the mark “Realtor,” that she is precluded by the doctrine of licensee estoppel from challenging the validity of respondent’s registered marks.

The judges agreed, citing previous trademark and membership challenge cases including challenges against the Seven-up Corporation and the YMCA as precedents.

Explains Janik, 'We won on a narrow legal issue. We had raised three issues on our defense, but the one that resonated with the three-judge panel, was licensee estoppel.

”That means that this woman was a member for over 15 years, she still had her membership in her files, the membership mark is owned by NAR, and the law says you can't go back and attack a license that you have used. She could have shown that she stopped using the mark and that the significance of the term Realtor or Realtors had changed, but she didn't do that.”

Was this a nuisance suit or did the NAR dodge an armor-piercing bullet? Either way, the NAR spent several hundred thousand dollars defending the case.

”I take every threat seriously,” says Janik. “It would have been very disappointing for our members for people who aren't members to be able to call themselves Realtors. Our members abide by a higher code of ethics, and they have pride in being Realtors.”

And the danger for the NAR may not be over yet. “There is a likelihood that they may appeal,” muses Janik. “Her (Freeman’s) counsel has a history of taking things as far as he possibly can.”

If so, the NAR has more arguments in its arsenal should they be needed again.

”We made two other arguments,” says Janik. “That they didn't meet the burden of proof showing the term is generic, and that the term wasn't generic in the relevant market because it is a membership mark.”

”We said we don't push Realtors to the public,” says Janik. “The membership marks are for members to distinguish themselves for purposes of cooperation and compensation.”

Editor's note: Read the panel's complete decision by, Clicking Here

Published: June 21, 2002

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