Many Realtors may not know just how close they came to losing the servicemarks REALTOR and REALTORS. A determined California attorney, David Barry, has attempted and failed in petitioning the U.S. Patent and Trademark Office's Trademark Trial and Appeal Board to get the National Association of Realtors' (NAR) servicemarks cancelled.

"We couldn't be more pleased!" exalts Laurie Janik, general counsel to the NAR. "I hope that NAR's victory in this case, along with its previous victory in a similar attempt brought by a former member, will put an end to the meritless challenges to the term REALTOR."

Barry had previously represented former Realtor Arlene Freeman before the board's three-judge panel, but was ruled against on the doctrine of licensee estoppel, which means that as a former member of the NAR, Freeman is precluded from challenging the validity of the NAR's registered marks.

Barry later represented Jacob Zimmerman, who has never been a member of NAR but who had hoped to profit in selling 1,900 Website domain names utilizing the words Realtor and Realtor. As in the Freeman petition, Zimmerman's petition contended that the trademarks should be canceled because the words Realtor and Realtors are generically used by the public, the consumers of real estate services.

The NAR argued that the use of the words is for members of the organization because they are servicemarks.

The court recognized that Zimmerman intended to profit from Realtors by buying and selling them Website addresses containing the words "realtor" and "realtors" along with advertising services, but found that the petitioner failed to show that the terms "Realtor" and "Realtors" are generic terms for real estate agents.

The court wrote, "Finally, while petitioner argues that members of the general public make up the relevant universe for our determination, respond would have us find that real estate professionals are the correct universe for determining customer perceptions."

In the NAR's favor, the court ruled that "Respondent is clearly a collective entity, eligible to own a "collective mark" as defined in S.45 of the Lanham Act, 15 U.S.C. S1127."

Explaining its decision, the court wrote, "Clearly, when dealing with ordinary consumer goods or services, the test for genericness is the term's meaning to consumers, not necessarily the professionals in the trade. However, in the instant case, we are not dealing merely with ordinary consumer goods or services. Rather, in this case, the record shows that we are faced with two distinct populations of persons whose perceptions may well be quite different."

The decision means then that real estate professionals are the relevant public not consumers in this case.

"The court recognized that an "overwhelming majority" of people in the real estate community perceive the term REALTOR as identifying members of our association," explains Janik. "This extraordinarily high recognition rate (86.3 percent), along with the balance of the record created by NAR, supported the court's decision to protect the critical interests of the users of these marks within the real estate community (on page 39 of the decision)."

Barry says he doesn't know what the next step will be until he talks with his client. "I have to know what the client want to do," says Barry. "It's unlikely that I'll ask the board to reconsider. They have done a thorough job of evaluating all the evidence. The next step that's available is an appeal to the Federal Circuit Court of Appeals, but at this time, I don't know if that is what my client will want to do."

He adds, "One thing is I never criticize judges. What I'll say is they very clearly laid out their legal analysis, and we are very pleased that they have fully addressed the merits of this case; the previous Freeman decision did not reach the merits. The Freeman case was decided on procedural grounds without deciding whether the Realtor mark was generic."

Says Janik, "This decision enables members to continue to use the term to distinguish themselves from nonmembers and to enjoy the good will created in this mark over many years. What a wonderful victory for our members!"

To read the 39-page decision of the three-judge panel, please click here.

Since 1916, when the unique term "Realtor®" was coined, says the NAR, the term has come to be recognized as identifying members of the National Association of Realtors® . NAR registered the trademarks in 1949 and 1950, soon after the Lanham Act went into effect, and it looks as if the trademarks will stand the test of time.

Published: April 7, 2004

Use of this article without permission is a violation of federal copyright laws.

Blanche is a renowned author of five real estate books. Her newest, Bubbles, Booms and Busts: Make Money In Any Real Estate Market, McGraw-Hill, was rave-reviewed by The New York Times. She was also selected from hundreds of real estate experts to contribute to Donald Trump's book, Trump: The Best Real Estate Advice I Ever Received: 100 Top Experts Share Their Strategies, Rutledge Hill Press, and is featured on page 68. Order Now Review - Honors In 2006, Blanche was selected among scores of candidates to author two consumer real estate guidebooks for the National Association of Realtors: The NAR Guide to Home Buying, and The NAR Guide to Home Selling, Wiley & Sons. She is currently planning two new books for the NAR and its members.       Known for her keen insight into real estate industry issues and for her ability to make complex subjects easy to understand, Blanche is a sought-after keynote and continuing education speaker. Real estate organizations from MLSs, to brokerages, to franchisors, to associations hire her to provide up-to-the-minute analysis of real estate industry news and advice on how to improve revenues. Her passionate delivery, peppered with stinging wit, is a huge hit with audiences and fans. Don Klein, CEO Greater Nashville Association of Realtors, Blanche Evans, Richard Courtney, president 2007, GRAR "The GNAR membership meeting last week featured Blanche Evans as the keynote speaker. Her comments and insights resonated extremely well with those in attendance and we have had many requests for copies of her PowerPoint Presentation. She was a terrific part of the membership meeting and convention program!" - Don Klein, CEO Greater Nashville Association of Realtors Coverage from WSMV, Nashville - 8-14-2007 That Interview Guy - Get Inside The Head Of Today's Generation 2007 AE Institute Session - To purchase 2006 AE Institute Session - Parts 1 2 3 4 5 6 7 8 9 HouseValues Mastermind call - Parts 1 2 Blanche's fireside chat with Jeremy Conaway, HAR - Click here. For more articles by Blanche, click here.