Zimmermanv.National Association of Realtors

Trademark Trial and Appeal Board

Mar 31, 2004

No. 92040141 (T.T.A.B. Mar. 31, 2004)

Hearing: Mailed:
November 18, 2003 March 31, 2004
Paper Nos. 33
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
Jacob Zimmerman
v.
National Association of Realtors
________
Cancellation No. 92032360
against Registration No. 0515200
Cancellation No. 92040141
against Registration No. 0519789,
_______
David Barry of Barry & Associates for Jacob Zimmerman.
Jeffrey A. Handelman and Jerome Gilson of Brinks Hofer
Gilson & Lione for National Association of Realtors.
_______
Before Cissel, Bucher and Rogers, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
The registrations involved in these proceedings are
for the collective marks REALTOR1 and REALTORS.2 The
1 Registration No. 0519789 issued on January 10, 1950,
renewed. In the application for this registration, respondent’s
predecessor indicated that it was exercising legitimate control
over use of this mark for the recited services, which read as
follows: “brokerage of real estate, industrial brokerage, farm
brokerage, mortgage brokerage, in the appraisal of real estate,
management of real estate, in the building of structures on real
estate, in the subdivision of real estate properties, and in
THIS DISPOSITION
IS CITABLE
AS PRECEDENT OF THE TTAB
Cancellation Nos. 92032360 and 92040141
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record reveals that the National Association of Realtors
(hereinafter “NAR” or “respondent”) is the nation’s largest
professional association, having an affiliation with more
than 1500 local and state associations. Additionally, more
than 760,000 individual real estate professionals use
respondent’s registered marks to identify their membership
with respondent.
Jacob Joseph Zimmerman (“petitioner” herein) seeks
cancellation of these two registrations held by NAR based
upon his allegations that the registered marks are generic.
At the time the record in this case closed, Zimmerman had
recently completed his undergraduate degree in the School
of Hotel Administration at Cornell University in Ithaca,
NY. His business dealings relevant to the current
proceeding were directed largely to real estate agents and
involved the marketing of domain names and a range of
Internet-related services including website design and
hosting, providing central databases for real estate
listings, offering banner ads and other online advertising,
and the like.
community planning for the development of raw land and slum
clearance areas.”
2 Registration No. 0515200 issued on September 13, 1949,
renewed. The recitation is the same as in Reg. No. 0519789.
Cancellation Nos. 92032360 and 92040141
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The Pleadings
In his petitions for cancellation, petitioner asserts
that he is “in the business of buying and selling website
addresses containing the word ‘realtor’ and ‘realtors’… ”
and that he “owns approximately 1900 web site names
incorporating the term ‘realtor’ and ‘realtors’ and a
geographic designation.” (Petitioner’s petitions for
cancellation, ¶¶6 & 7) He asserts that respondent’s
registered marks are generic because, in common parlance,
the words “realtor” or “realtors” are synonymous with real
estate agent or real estate agents. He alleges that
respondent’s registrations and trademark policies preclude
him from offering his websites to real estate agents:
Petitioner has been injured in his business
by the continuance of the registration of
the “realtors” mark. Potential purchasers
of petitioner’s web site are mainly real
estate agents. Many such realty agents are
aware of NAR’s threats to file suit against
any person using the term “realtors” in web
site names, and are therefore unwilling to
purchase any of petitioner’s web site names.
In addition, realty agents are unwilling to
pay petitioner for placement on such web
sites as bostonrealtors.org because of the
threat by NAR to enjoin the use of such web
site names. NAR’s continuing registration
of the “realtors” mark has severely lowered
the demand for petitioner’s web site names
and petitioner's promotional services.
(Petitioner’s petitions for cancellation, ¶9)
Cancellation Nos. 92032360 and 92040141
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In its answer, respondent denies the essential
allegations of the petitions except that it admits that
real estate agents who are members of respondent are
authorized to use the “Realtor marks” in accordance with
specified terms and conditions, and notes that even members
of NAR are subject to respondent’s rules and guidance about
using its REALTOR marks within Internet domain names.
The Record
The record in the instant case includes the pleadings,
the files of the involved registrations, and respondent’s
notice of reliance on the discovery deposition of Mr.
Zimmerman and related exhibits. In addition, the parties
have stipulated that the entire record created in
connection with two earlier consolidated proceedings (the
“Freeman” case) would be included as part of the record in
this proceeding.3 This evidentiary record from the Freeman
action includes the deposition testimony of Ms. Freeman,
the plaintiff in the prior proceeding; the affidavit of
Michael R. Thiel, respondent’s Associate Counsel in the
Legal Affairs Division, with related exhibits; the
3 Cancellation No. 92028047 against Reg. No. 0515200 and
Cancellation No. 92027885 against Reg. No. 0519789, captioned
Arleen Freeman v. National Association of Realtors, 64 USPQ2d
1700 (TTAB 2002). These earlier combined proceedings were
Cancellation Nos. 92032360 and 92040141
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affidavit of Nicholas G. De La Torre, an attorney for
respondent, with related exhibits; the affidavit of
Clifford D. Niersbach, respondent’s Vice President
responsible for the Board Policy and Programs Division,
with related exhibits; the discovery deposition of Dr.
Michael Sullivan, petitioner’s survey expert, with related
exhibits including his earlier affidavit in support of the
survey; the discovery deposition of Kristin Gismervik (nee
Shapiro), who works for Dr. Sullivan; the declaration of
Robin McCoy, who also works for Dr. Sullivan; the
declaration of David Barry, petitioner’s attorney, with
extensive exhibits; the declaration of Dr. Ivan Ross,
respondent’s survey expert, with related exhibits; the
declaration of Dr. Jacob Jacoby, another of respondent’s
survey experts, with related exhibits; and the affidavit of
Jon Krehbiel, New York Operation Manager for Electronic
Evidence Discovery, Inc.
The issues have been fully briefed by both parties,
and both parties were represented at an oral hearing held
before the Board. We find that petitioner has failed to
show that the terms “Realtor” and “Realtors” are generic
terms for real estate agents.
dismissed with prejudice based upon the doctrine of licensee
Cancellation Nos. 92032360 and 92040141
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As a preliminary matter, we find it useful to clarify
our understanding of the meaning of the parties’
stipulation that “the admissions of the parties [in the
previous proceedings] … shall be binding on the parties in
the present proceedings.”4 While any factual admission the
previous plaintiff (a real estate agent) may have made
about matters relating only to herself clearly would not be
admissible or relevant as applied to the current petitioner
(an entrepreneur with various business interests on the
Internet), it seems clear under this stipulation that any
admissions the previous plaintiff made about NAR, the use
of the involved terms, and the like, are binding on the
current petitioner. Likewise, any admissions NAR made
about itself, its operations, its use of the involved
terms, etc., in the previous proceeding, are binding upon
NAR in this proceeding. This includes admissions of any
type, whether they came into the record through the
pleadings or as admissions under Rule 36 placed into the
estoppel.
4 “5. All of the evidence submitted in Cancellation No.
27,885 and 28,047 shall form part of the record in the present
proceedings and the admissions of the parties in Cancellation
No. 27,885 and 28,047 shall be binding on the parties in the
present proceedings.”
We also note that the same counsel represented the previous
plaintiff as well as the current plaintiff.
Cancellation Nos. 92032360 and 92040141
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record by notices of reliance. See Fed. R. Civ. P. 36 and
37 C.F.R. §2.120(j).
Summary of Arguments
Petitioner argues that clear and convincing evidence
shows that the primary significance of the terms “Realtor”
and “Realtors” is as generic terms for real estate agents.
In response, respondent contends that its registered
collective marks are distinctive, not generic. Respondent
contends that petitioner’s evidence shows occasional
careless misuse of its registered marks in publications,
for example, as well as some usages that are ambiguous, but
that many more publications show proper use of its
collective marks, i.e., the publications recognize the
terms as marks.
According to one dictionary entry, the term “Realtor”
was coined in 1916 by Mr. Chadbourn, a writer in the
National Real Estate Journal. Of course, petitioner’s own
source shows that Chadbourn, the first proponent of this
term, saw it functioning as a collective mark – in short, a
proprietary term to distinguish members of the national
real estate association from nonmembers.
In support of petitioner’s claim that this term has
been generic since the 1920’s, petitioner points to
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Sinclair Lewis’ satirical 1922 novel Babbitt, wherein the
main character, George F. Babbitt, is a real estate agent
who takes the position that the term should be applied
generally to members of the real estate profession.
Petitioner argues that on the heels of this widely read
novel came decades in which numerous court decisions –
published federal court decisions including those of the
U.S. Supreme Court – and dozens of general circulation
publications used the term generically to refer to real
estate agents.
Finally, while petitioner argues that members of the
general public make up the relevant universe for our
determination, respondent would have us find that real
estate professionals are the correct universe for
determining customer perceptions.
Decision and Analysis
Under the circumstances, we deem admitted, inter alia,
the fact that respondent’s two registered marks involved
herein are categorized as collective marks. Freeman
Response to NAR’s Request for Admission No. 23. However,
one need not rely on earlier admissions to establish this.
In identifying the targeted registrations, the pleadings of
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the current petitioner also contain allegations that the
involved registrations are for collective marks.
Yet in its prosecution of these proceedings,
petitioner has largely ignored the fact that these marks
are collective marks of any kind. Petitioner’s counsel
shoehorns these marks into the general category of
trademarks, while its survey asks whether consumers view
the word “Realtor” as a “brand name.”
Respondent quite correctly takes issue with these
characterizations by petitioner. On the other hand,
respondent has variously referred to its marks as
“collective marks,” “collective membership marks” and
“collective service marks.”
We find that respondent is clearly a collective
entity, eligible to own a “collective mark” as defined in
§45 of the Lanham Act, 15 U.S.C. §1127. Its applications
were filed by respondent's predecessor soon after the
Lanham Act was enacted (which legislation first permitted
registrations by the owners of collective marks) and
asserted that respondent’s predecessor was exercising
Cancellation Nos. 92032360 and 92040141
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legitimate control over the use of the marks in commerce by
its members.5
In fact, there are indications in this record that
respondent has long considered these to be collective
membership marks.6 In the context of this collective, the
purpose of a collective membership mark would be merely to
indicate that the user of the mark is a real estate agent
who is a member of the collective
organization and who has met NAR’s
standards for admission. The original
specimen in the REALTORS application was
a window decal demonstrating that the
5 The text of the original application papers claimed that
the “NATIONAL ASSOCIATION OF REAL ESTATE BOARDS … has adopted
and is exercising legitimate control over the use of the
collective mark shown in the accompanying drawing for [services
in connection with] the brokerage … [management, appraisal and
planning services]… and presents herewith five specimens showing
the collective mark as actually used in connection with such
services and the advertising thereof by members of such
organization: the service mark being used by members of the
organization by applying a decalcomania containing the mark to
the window or wall of the office in which such service is
performed, by placing the mark upon a plaque displayed in said
office, by printing the mark on stationery and advertisements of
such members, and by wearing a button upon which the mark
appears as an indication of membership in such association ….”
6 Collective membership marks may be owned by collective
organizations that never use the symbols of their organizations
in connection with the commercialization of goods or services,
such as fraternal benefit societies. See Ex Parte The Supreme
Shrine of the Order of the White Shrine of Jerusalem, 109 USPQ
248 (Comm’r. Pat. 1956).
Cancellation Nos. 92032360 and 92040141
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real estate agent displaying this sign was a member of the
“National Association of Real Estate Boards.”
While our decision herein would be no different even
if we were to accept respondent’s argument that its mark
should be viewed solely as a collective membership mark,
the weight of the evidence supports the conclusion that
respondent’s marks are, consistent with the way the United
States Patent and Trademark Office has long classified
them, collective service marks. 7 Beginning with the filing
of the original applications for the REALTOR and REALTORS
marks, respondent (and its predecessor) have consistently
emphasized the brokerage, management, appraisal and
planning services offered by its members. This usage
demonstrates the availability of real estate services
offered by respondent’s members, or collective service mark
usage.
In making a determination on the question of
genericness, we are seeking to discover the perceptions of
7 In its 1989 renewal application, with papers having a
prominent heading of “U.S. Class 200” (collective membership
mark), respondent claimed that “[t]he mark shown in said
registration is still used in interstate commerce by members of
[the] registrant in connection with brokerage ….” Consistent
with its earlier classification, the United States Patent and
Trademark Office approval continues to shows this as a
collective service mark, classified in “International Class 36,
U.S. Class 102.”
Cancellation Nos. 92032360 and 92040141
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consumers. As Judge Learned Hand observed in Bayer Co. v.
United Drug Co., 272 F 505, 509 (SDNY 1921), “the question
is whether the buyers merely understood that the word
‘Aspirin’ meant this kind of drug, or whether it meant that
and more than that: i.e., that it came from the single,
though, if one please anonymous, source from which they had
got it before.” However, a critical area of disagreement
between the parties to these proceedings is defining the
“buyers,” i.e., the relevant group of purchasers herein.
Petitioner, focusing on the services offered by
respondent’s member agents, considers purchasers of real
estate services to be the critical group. Respondent,
focusing on use of its marks to indicate membership in
respondent, considers real estate agents and brokers to be
the critical group.
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.8
8 Our principal reviewing Court held that under the 1984
amendment to the Lanham Act, the test of whether “touchless” is
a trademark for auto washing services or is the generic name of
a type of auto wash service is its meaning to consumers who use
the services, not solely to operators and manufacturers of auto
wash equipment. Magic Wand, Inc. v. RDB, Inc., 940 F.2d 638, 19
USPQ2d 1551 (Fed. Cir. 1991). See also In re Northland Aluminum
Products, Inc., 777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985)
(when the issue is genericness to the consuming public, evidence
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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. While any member of the general public who is
in the market for real estate would be a prospective
consumer of the listed “brokerage services,” it is also
clear that in the context of collective service marks, the
members of the real estate profession – i.e., those who are
eligible for membership in respondent – are a distinct
population whose perceptions also are critical herein.
The statutory basis for canceling the registration of
a generic term is found in §14(3) of the Lanham Act, 15 USC
§ 1064(3). As our principal reviewing court has stated:
…[D]etermining whether a mark is generic …
involves a two-step inquiry: First, what is
the genus of goods or services at issue?
Second, is the term sought to be registered …
understood by the relevant public primarily to
refer to that genus of goods or services?
H. Marvin Ginn Corporation v. International Association of
Fire Chiefs, Inc., 782 F.2d 987, 990, 228 USPQ 528, 530
(Fed. Cir. 1986). The critical issue (both before and
that professionals view the term as a trademark is not
probative).
Cancellation Nos. 92032360 and 92040141
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after the 1984 Trademark Clarification Act) in genericness
cases is whether members of the relevant public primarily
use or understand the term sought to be registered to refer
to the genus or category of goods in question. In re
Montrachet S.A., 878 F.2d 375, 376, 11 USPQ2d 1393, 1394
(Fed. Cir. 1989): In re Merrill Lynch, Pierce, Fenner, &
Smith, Inc., 828 F.2d 1567, 1570, 4 USPQ2d 1141, 1143 (Fed.
Cir. 1987); Dan Robbins & Assocs., Inc. v. Questor Corp.,
599 F.2d 1009, 1014, 202 USPQ 100, 105 (CCPA 1979); and In
re Recorded Books, Inc., 42 USPQ2d 1275 (TTAB 1997).
Evidence of the relevant public’s perception of a term may
be obtained from any competent source, including
newspapers, magazines, dictionaries, trade journals,
catalogs and other publications. In re Leatherman Tool
Group, Inc., 32 USPQ2d 1443, 1449 (TTAB 1994), citing In re
Northland Aluminum Products, Inc., supra. Finally, we note
that in the context of these inter partes proceedings, it
is petitioner’s burden to prove the genericness of these
terms by a preponderance of the evidence. Magic Wand Inc.
v. RDB Inc., supra.
With respect to the first part of the Marvin Ginn
inquiry, the genus of services is largely described by
respondent’s chosen recitation in the context of the
Cancellation Nos. 92032360 and 92040141
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original application papers. Accordingly, we find that the
genus of services is real estate brokerage, management,
appraisal and planning services involving buildings and
land, as delivered by members of a professional
association.
There was a fairly extensive record developed during
these proceedings, and we review the principal categories
of evidence offered as probative in answering the second
question posed by the Marvin Ginn analysis of genericness.9
(1) Uncontested Generic Use By Competitors
The only evidence in this record as to competing
associations of real estate professionals is the indication
that the National Association of Real Estate Brokers
identifies its members as “Realtists.”
Moreover, when respondent’s member organizations,
member agents or member brokers terminate their membership
with respondent, they must discontinue any use of the
REALTOR marks. To the extent that individuals or local
real estate groups misuse these registered terms, the
previous litigation with Ms. Freeman illustrates the extent
of respondent’s policing efforts with respect to such uses,
9 See J. Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition §12.13 (4th ed. December 2003).
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demonstrates that respondent does not permit such uses to
go uncontested, and shows that respondent continually takes
affirmative steps to emphasize the proprietary status of
its collective service marks. In short, the record shows
no evidence of generic use of REALTOR or REALTORS by
competitors.
(2) Generic Use By the Trademark Holder
Similarly, in this most extensive record, petitioner
has not alleged, nor have we discovered, any instances
where respondent has used its claimed identifiers in a
generic manner. In fact, in hundreds of pages of marketing
and promotional materials put out by respondent and
respondent’s member associations, the materials
consistently use the marks REALTOR® and REALTORS® in a
manner consistent with the proprietary nature of these
marks. Respondent issues guidance containing specific
rules for “use of the REALTOR® marks and name.” This
guidance outlines limitations on the use of the REALTOR
marks and logo and provides graphic representations of
correct and incorrect uses of the logo, in print, in
advertisements and on the Internet. For the benefit of its
member associations and individual agents and brokers, its
webpages contain “Graphics Standards and Style Guidelines.”
Cancellation Nos. 92032360 and 92040141
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Accordingly, we find no evidence of generic use by
respondent.
(3) Dictionary Definitions
While petitioner argues that “the Oxford English
Dictionary entries [show] historical generic use,”
respondent points to a long list of dictionary definitions
that show the proprietary nature of the term “Realtor”:10
“Realtor. Function: collective mark - used
for a real estate agent who is a member of
the National Association of Realtors.”
Merriam-Webster’s Collegiate Dictionary
(2001), http://www.m-w.com/cgi-
bin/dictionary
“Realtor trademark: a trademark for a
member of the U.S. National Association of
Realtors or the Canadian Association of Real
Estate Boards.” Encarta® World English
Dictionary [North American Edition]© & (P)
2001 Microsoft Corporation.
http://dictionary.msn.com/find/entry.asp?sea
rch=Realtor.
“Realtor. A service mark used for a real-
estate agent affiliated with the National
Association of Realtors. This service mark
often occurs in print in lowercase and in
the plural as well: ‘The economic
aftershocks are already rippling through the
area’s non-defense businesses, from realtors
to pizzerias’ (New York Times).” The
American Heritage Dictionary of the English
Language 1456 (4th ed. 2000).
10 Affidavit of Nicholas G. De La Torre, Exhibits 71 – 73, 75
- 83.
Cancellation Nos. 92032360 and 92040141
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“Realtor™ n. A member of the National
Association of Realtors who works in the
business of selling real estate; a real-
estate agent. – The Realtor showed the
couple a nice house in an old neighborhood.
I told the Realtor I wanted to buy a five-
acre plot by the lake.” NTC’s American
English Learner's Dictionary 734 (1998).
“Re•al•tor collective mark – used for a
real estate agent who is a member of the
National Association of Realtors.”
Webster's Third New International Dictionary
1891 (1993).
“Re•al•tor n. a realty broker who is a
member of the National Association of Real
Estate Boards: a trade name. Also
re’al·tor.” Funk & Wagnalls Standard
Dictionary 658 (2nd Ed. 1993).
“Re•al•tor, Trademark, 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.” The
Random House Dictionary Of The English
Language 1607 (2nd Ed. 1987).
“Re•al•tor. A collective mark for a real-
estate agent affiliated with the National
Association of Realtors.” Webster’s II New
Riverside University Dictionary 980 (1984).
“Re•al•tor, [coined by C.N. Chadbourn, of
Minneapolis, a member of the National
Association of Real Estate Boards, and
formally adopted by the Association in
1916.] A broker or other individual in the
real estate business who is an active member
of the National Association of Real Estate
Boards, subject to its rules and
regulations. (Trademark.)” New Webster’s
Dictionary of The English Language 1246
(1981).
Cancellation Nos. 92032360 and 92040141
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“Re•al•tor a real estate broker who is a
member of the National Association of Real
Estate Boards.” Webster’s New World
Dictionary of The American Language with
Student Handbook 621 (Concise Ed. 1974).
“Re•al•tor n (US) person engaged in real
estate business who is a member of the
National Association of Real Estate Boards
and subscribes to its standards of ethical
conduct (GB = estate agent).” Oxford
Advanced Learner's Dictionary of Current
English 700 (1974).
As noted earlier, the history of the coinage of the term
drawn from the Oxford English Dictionary begins with Mr.
Chadbourn’s advocacy for making this a proprietary term.11
In fact, the OED listing placed into the record by
petitioner is consistent with the dictionary entries made a
part of this record by respondent, reflecting the fact that
in the United States, the term “Realtor” is a proprietary
term:
Realtor. U.S. Also realtor. [f. REALT(Y +
-OR.] A proprietary term in the U.S. for a
real-estate agent or broker who belongs to
the National Association of Realtors
(formerly the National Association of Real
Estate Boards)….
11 See also New Webster’s Dictionary of The English Language
entry above, which goes on to observe that respondent’s
predecessor formally adopted this term in 1916.
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Accordingly, we find that substantially all the
dictionary definitions in the record recognize these terms
as marks.
(4) Generic Use in the Media
In this category, petitioner points to what it
characterizes as “overwhelming” evidence of generic usage
in books, magazines, newspapers, encyclopedia and in court
decisions. Petitioner relies on an exhibit it refers to as
its “newspaper survey” of contemporary usage. Petitioner
points to uses drawn from a randomly-chosen newspaper from
each of twenty-four states:12
HEADLINE: “Subdividing property can increase
returns”
…
Once subdivided, you have just
increased your tax liability
considerably. Now you need to consider
if you are going to advertise and
market the lot yourself, or are you
going to hire a realtor to market the
lots and pay the commission fee.
…
Daily News-Miner, Fairbanks, Alaska,
February 13, 2000.
12 Declaration of David Barry, Tab 41. From an alphabetical
listing of the fifty states at NewsDirectory.com, Mr. Barry
selected every second state beginning with Alaska (excluding
Delaware, which had only two newspapers, but neither of which
offered a searchable, online archive). Counsel then chose the
third newspaper from the top of each state’s listing, linked to
that newspaper’s homepage and searched the archives of the
selected newspaper for stories containing the word “realtor.”
He then picked one story illustrating the use of the word
“realtor.” These are the excerpts shown herein.
Cancellation Nos. 92032360 and 92040141
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-oOo-
HEADLINE: “Nothing wrong with Realtors”
I have to admit that I was pretty angry
when my friends started kidding me
about the comments of my opponent in
the city council race this fall. For
those who didn’t read it firsthand, my
opponent made the argument to your
newspaper that I have a conflict of
interest from serving on the city
council because I am a Realtor and a
lot of real estate zoning and planning
issues come before the city council.
… Personally, I was disappointed that
more people didn’t try to participate
in this election. So, whether you’re a
plumber, a bus salesman, a Realtor, or
a homemaker, be thinking about
volunteering your time in a couple of
years – and may the best ideas win!
Log Cabin Democrat, Conway, Arkansas, July
31, 2000.
-oOo-
HEADLINE: “Opening Shots”
…
The Broncos drafted … during their
early years. So, how was it that they
made center Roger LeClerc of Trinity
College their first draft choice? Dick
Lyford, retired Denver realtor has the
answer …
The Denver Post, Denver, Colorado, December
20, 2000.
-oOo-
HEADLINE: “For the Best Deal, Buy Out of
Season”
…
Julie Garton-Good is a licensed Realtor
and a real estate educator, lecturer
and author …
Cancellation Nos. 92032360 and 92040141
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The Miami Herald, Miami, Florida, December
17, 2000.
-oOo-
HEADLINE: “Bishop’s leasehold policies
criticized: But estate Realtor denies
prices are out of line”
…
While leasehold home values have
plunged, that’s because Hawaii’s
leasehold system is working like it’s
designed to – not because of anything
Bishop Estate has done, said Realtor
Peter Savio, who handles the trust’s
sale of residential leasehold land.
…
For leases that haven’t been
renegotiated yet, the estate is getting
returns of 1 percent or less from
rental income, yet it could be earning
far greater returns in other, higher-
yielding investments, said Mike Pang, a
Realtor who specialized in leasehold
issues …
Star Bulletin, Honolulu, Hawaii, (undated)
-oOo-
HEADLINE: “Disabilities Act addresses
‘dignity issues’”
…
And Realtor Charlene Smith noted that a
fully accessible home she had listed
recently brought two offers – neither
from people with disabilities …
Herald & Review, Decatur, Illinois (undated)
-oOo-
HEADLINE: “Same genes, same profession”
Judi McCoy used to get exasperated with
her mother Marjorie Doud, a Realtor …
Grand Rapids Gazette, Grand Rapids, Iowa,
January 18, 1995.
-oOo-
Cancellation Nos. 92032360 and 92040141
- 23 -
HEADLINE: “A little gray hair calls for
respect?”
…
Speaking of old things, a copy of an
advertisement came into my possession
courtesy of Realtor Richard Overby…
The Gleaner, Henderson, Kentucky, May 16,
1999.
-oOo-
HEADLINE: “Millennium memories in Lubec”
…
Yet having briefly been highlighted on
the national map, she says, might have
something to do with the fact that
real-estate brokers have been getting
more calls than usual about properties
in town. One realtor told Preston that
for the first time in 10 years she has
run out of residential properties to
list…
Bangor Daily News, Bangor, Maine, November
29, 2000.
-oOo-
HEADLINE: “The passion to own a home”
… I call Jones Town Country and make an
appointment with Realtor Joyce Quinlin
to see the house on Sunday…
Daily Hampshire Gazette, Northampton,
Massachusetts, February 21, 2000.
-oOo-
HEADLINE: “Hires and Promotions”
[Ron] Tondryk is a licensed realtor
with more than 15 years of sales
experience …
Duluth News-Tribune, Duluth, Minnesota,
December 21, 2000.
-oOo-
Cancellation Nos. 92032360 and 92040141
- 24 -
HEADLINE: “PD on TV”
KMOV anchor Myriam Wright and Post-
Dispatch cultural news editor Robert
Duffy explore what was good and what
wasn’t in St. Louis this year. Their
guests are Kenny Buck, a Crossroads
School sophomore, and Coldwell Banker
Realtor Marti Frumhoff on “Imagine St.
Louis.”
St. Louis Post Dispatch, St. Louis,
Missouri, December 23, 2000
-oOo-
HEADLINE: “Sewer problem leads to
demonstration”
…
The only costs will be hooking up
electrical pumps. The rest of the
material and labor are donated as a
chance to provide an educational
opportunity for area plumbers,
Realtors, homeowners and the general
public…
Grand Island Daily Independence, Grand
Island, Nebraska, June 4, 2000.
-oOo-
HEADLINE: “Riding (Most of the Time) Trails
Is Mountain of Fun”
…
… Rounding out the field is Dan
Vigneault – whose bike is etched with
the scary legend “Downhill Dan” – and
Rem Mastin, a Realtor and snowboard
instructor …
The Union Leader, Manchester, New Hampshire,
October 10, 1998.
-oOo-
… Keith Coulter, a Vineyard Estates
resident and a Realtor, said he’s
frustrated with how long it has taken
for the plan to be completed…
Cancellation Nos. 92032360 and 92040141
- 25 -
Albuquerque Tribune, Albuquerque, New
Mexico, February 29, 2000.
-oOo-
HEADLINE: “Realtor: There’s no place like
home”
…
As a Realtor, you’d expect Brock to
have a lovely home…
The Herald Sun, Chapel Hill, North Carolina,
August 13, 2000.
-oOo-
HEADLINE: “Scorcher’s plans to replace Corner
in downtown Lorain”
…
The license is for “Kennedy’s Broadway
Billiards,” although the building is
still empty and bears a realtor’s sign.
The realtor did not return calls for
comment yesterday…
The Morning Journal, Lorain, Ohio, December
20, 2000.
-oOo-
HEADLINE: “Minding the store at St. Helens
High means students running 9 businesses”
… The construction company is scheduled
to finish building a 2,800-square-foot,
five-bedroom, three-bathroom house in
Columbia City by May. Realtor Molly
Womack of Prudential Northwest
Properties, who is working with the
school, plans to list the house for
$239,000. Any profits would be used to
build the next house…
The Oregonian, Portland, Oregon, March 19,
2000.
-oOo-
Cancellation Nos. 92032360 and 92040141
- 26 -
HEADLINE: “Library hits the road Sept. 6”
… The trustees voted unanimously Aug. 9
to lease [Cherry Webb & Touraine] from
realtor Matthew LaCroix for $8,000 per
month for the duration of the project,
which is expected to last about a year…
The Woonsocket Call, Woonsocket, Rhode
Island, August 22, 2000.
-oOo-
HEADLINE: “Developer eyes Marr’s Beach”
A purchase contract has been entered
into between John Egan, Sioux Falls
developer/realtor, and Maurice Beyer,
owner of Marr’s Beach on Lake Madison…
Madison Daily Leader, Madison, South Dakota,
July 14, 2000.
-oOo-
HEADLINE: “Volunteer Center hits right note
with Jazz Fest”
…The high-profile wait staff will
include Plano Mayor Jeran Akers and
Councilmen Steve Stovall and John Roach
Jr.; … attorney Glenn Callison,
Realtors Ed Bujko and Steve Russell and
the inimitable Johnny Rutledge…
Plano Star Courier, Plano, Texas, November
3, 2000.
-oOo-
HEADLINE: “Buy a house and support an
industry”
… So I called our Realtor and said:
“We need to move.” …
Rutland Herald, Rutland, Vermont, August 6,
2000.
-oOo-
Cancellation Nos. 92032360 and 92040141
- 27 -
HEADLINE: “Municipal League grows desperate
for volunteers”
…Of the 39 races county-wide, 26 are
split evenly between South County and
the Eastside, Culver said every tiny
faction already scores candidates:
Realtors, unions, gun rights advocates,
property rights advocates, anti-gun
groups, bicyclists and trail users…
South County Journal, Seattle, Washington,
July 15, 2000.
-oOo-
… The proposal was brought by majority
landowner Kevin Dittmar, Realtor and
member of Rubicon Associates, to
construct a 122-unit mixed-residential–
use subdivision across the highway from
Pike Lake State Park…
Daily Citizen, Beaver Dam, Wisconsin,
November 29, 2000.
While one should not place determinative weight upon
whether or not the journalists and editors involved in
these randomly-selected newspaper articles use an upper-
case or lower-case letter “R,” we find it instructive that
in a majority of these instances, the word “Realtor” is
capitalized and used in a manner consistent with
respondent’s position that this term functions as an
identifier for its members – not as a generic designation
for all real estate agents. Respondent also points to many
instances in the record where newspapers and magazines
Cancellation Nos. 92032360 and 92040141
- 28 -
clearly use the term “Realtor” in a manner consistent with
the proprietary nature of the term.13
Petitioner argues in its brief that “the coinage of
[the word] realtor was obvious and probably inevitable.”
Given the etymology of the word as shown in the Oxford
English Dictionary, the word “Realtor” may well have been
one of several logical naming choices for the professional
involved in “realty.” We recognize the aural and visual
similarities as well as the etymological links between the
ordinary, English-language words “realty” and the term
“Realtor.” However, notwithstanding the challenges faced
by respondent and its predecessor in fostering recognition
of the “Realtor marks,” the record suggests that
respondent, its affiliated organizations and its individual
members have generally succeeded in educating editors,
journalists and some portion of the public at large. The
evidence establishes aggressive marketing of these marks
and constant policing of media usage of these terms,
supporting respondent’s position that it has preserved for
the term no small degree of proprietary meaning, even among
general news outlets.
13 Affidavit of Nicholas G. De La Torre, Exhibit 90.
Cancellation Nos. 92032360 and 92040141
- 29 -
Finally, petitioner places a great deal of emphasis on
what appear to be generic uses by federal court judges,
including Justices of the Supreme Court. We recognize that
among the innumerable reported federal decisions issued
over the past eighty-plus years, there are indeed scattered
legal opinions, dealing with totally different issues,
wherein the term “realtor” appears to be used to refer to
real estate agents generally. Nonetheless, we find it
plausible that on occasion even federal jurists may have
been less than precise in their usage of these collective
service marks, particularly when focused on substantive
matters unrelated to whether these terms are source
indicators. Moreover, given their limited circulation
among members of the public, unlike the articles of general
circulation discussed above, these legal opinions will
likely have little impact upon the public’s understanding
of the “Realtor” or “Realtors” terms.
(5) Testimony of Persons in the Trade
The uncontroverted affidavits of Michael F. Thiel and
Clifford D. Niersbach stand for the proposition that
respondent, through its licensing relationships, its by-
laws, Code of Ethics, Standards of Practice and other
guidance, intends to preserve the proprietary functions of
Cancellation Nos. 92032360 and 92040141
- 30 -
these terms. Petitioner put forward no testimony from
other persons involved in the field of real estate to
undermine this testimony or otherwise demonstrate the
genericness of these terms.
(6) Consumer Surveys
In the most contentious area of evidence in this
record, the parties to these proceedings have each
proffered a survey. They appear to reach diametrically
opposite results on the question of genericness, and each
party has criticized the survey conducted by its opponent.
In short, petitioner points to a telephone brand
awareness survey conducted over a two-week period in the
summer of 1999. The survey targeted individuals who had
consulted a real estate agent in the past year or were
planning to do so in the coming year, or were planning to
buy, sell or rent real estate in the next year. Of the
ninety-six individuals surveyed, only ten percent said that
“Realtor” was a brand name.
By contrast, respondent’s telephone survey targeted
real estate brokers and agents. Respondent argues that
real estate professionals make up the proper survey
universe, as they are actually the purchasers or
prospective purchasers of membership in respondent and the
Cancellation Nos. 92032360 and 92040141
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services provided by respondent. According to the results
of this survey, the primary significance of the term
“Realtor” is that of a proprietary term indicating
association with respondent – not a generic word.
Specifically, when asked whether “Realtor” refers to all
real estate agents or only those who are members of
respondent or one of its local or state associations, 84.3%
of 204 individuals surveyed recognized this term as
indicating members of respondent or one of its
associations.14
Moreover, respondent argues that even if we were to
determine that the relevant universe must include members
of the general public, because the term is such a strong
source indicator in the eyes of real estate professionals,
this showing is more than sufficient to justify the
continued existence of its registrations.
We turn then to a detailed examination of the two
proffered surveys.
Petitioner’s attorney contacted Dr. Michael Sullivan,
a principal with the consulting firm of Freeman & Sullivan,
14 Taking the position the respondent was measuring
perceptions of this term in the wrong market, petitioner objects
to this entire survey and the Ross declaration as irrelevant.
However, petitioner does not criticize the methodology of the
study, the form of the key question, etc.
Cancellation Nos. 92032360 and 92040141
- 32 -
and instructed him to do a “Teflon survey.” Although Dr.
Sullivan had never before designed a survey for use in
trademark litigation, it is clear from the record that he
devoted less than six hours to this project over the
critical four-month period of this study.
Respondent has severely criticized the Sullivan study.
Respondent’s survey expert, Dr. Jacob Jacoby, drew on his
own professional expertise and referred to other academic
sources as well as guidance from the Handbook of
Recommended Procedures for the Trial of Protracted Cases,
25 F.R.D. 399-403, in support of his criticisms of
petitioner’s study. Totally apart from the question of
whether petitioner has selected the proper universe for
this survey, we find that many of respondent’s criticisms
of this survey are valid, including, but not limited to,
the following:
•= The low response rate (~10%) negatively affects
the reliability of the survey, as the sample
may well no longer be representative of the
relevant consuming universe.
•= The final number of survey subjects (96) was too
low to accord much weight to the study results.
•= The gate-keeping queries deviated from the
“Teflon” format in ways that render the answers
meaningless in ensuring understanding on the
part of the survey subjects.15
15 The gate-keeping questions in a genericness survey are
designed to determine whether the survey participant understands
the difference between “brand names” and “common names.”
Cancellation Nos. 92032360 and 92040141
- 33 -
•= Orienting the survey subjects to the concept of
“brand names” and giving them examples of well-
known brands and trade names before asking them
to categorize a collective mark was misleading.
•= The failure to provide survey subjects with a
“don’t know” option forced guessing or choosing
an option by default.
Accordingly, given all the deficiencies of
petitioner’s survey, we accord it very little weight on the
question of whether prospective purchasers of a real estate
professional’s service would view the term “Realtor” as
indicating the services were being offered by a real estate
association member (even if the association were unknown).
Respondent’s counsel retained Dr. Ivan Ross to conduct
a survey to determine the significance of the term
“Realtor.” Dr. Ross determined that the relevant universe
for this “double blind” survey was full-time licensed real
estate agents or brokers who operate from real estate
offices in the continental United States and who had been
licensed for at least one year. His rationale for
In this flawed survey, rather than actually testing the
survey participant’s specific understanding of ‘whether
Chevrolet is a brand name or a common name?’ (the “Teflon”
format), after providing some “training,” the question asked was
“Do you understand the difference between ‘brand names’ and
‘common names?’” According to Dr. Jacoby, this is a leading
question calling for a “yea-saying” response and is not a
reliable measurement of comprehension. Furthermore, a yes
answer to either of two questions qualified one for the survey.
Declaration of Jacob Jacoby, Ph.D., ¶45.
Cancellation Nos. 92032360 and 92040141
- 34 -
selecting this universe was “that the significance of the
term REALTOR is most appropriately measured among
individuals who are qualified for membership in
professional real estate associations and are ‘prospective
purchasers’ of membership in such associations.”
After qualifying the survey subjects, two questions
followed and were rotated. The answers to the key question
were of primary interest to the survey sponsor while the
other question was a control question designed to eliminate
“noise.”16 For the question of primary interest, 86.3% of
the survey subjects believed that the term REALTOR refers
only to real estate agents who are members of NAR or one of
its local or state associations, while 6.4% believed that
the term REALTOR refers to all real estate agents.
Other than arguing that the Ross survey measured
perceptions of the “Realtor marks” among the wrong
population, and arguing that Dr. Jacoby was too “biased”
for us to accord his testimony much weight, petitioner has
not taken issue with the methodologies employed in the Ross
16 Because a control question generally has a correct answer,
the magnitude of survey participants who fail on a control
question (the “noise”) will be viewed as evidence of guessing,
inattention and/or other extraneous factors, and will be used to
adjust the percentages of answers to the key question in order
to get an accurate measurement of the “true” beliefs within the
population about the key question. Declaration of Ivan Ross,
Ph.D., ¶17.
Cancellation Nos. 92032360 and 92040141
- 35 -
study. Indeed, we find that the Ross survey appears to
comport with all the standards for admissibility reflected
in the Handbook of Recommended Procedures for the Trial of
Protracted Cases, 25 F.R.D. 399-403. We find that the
results of this survey demonstrate rather convincingly that
among real estate professionals, the “Realtor” marks are
perceived as strong source indicators.
We need not agree with respondent that real estate
professionals are the sole group with whose perceptions we
should be concerned in order to accord substantial weight
to the results of the Ross survey. For given the
circumstances of the use of these collective service marks,
we agree with respondent’s fallback position that real
estate professionals make up a significant subgroup of
relevant consumers. Even petitioner’s survey expert
testified that he presumed that people in the real estate
industry would be likely to identify the term “Realtor” as
a mark.17 In fact, the Ross survey confirms that among this
key group, an overwhelming majority perceives the term
“Realtor” as a strong source identifier.
17 A review of Ms. Freeman’s testimony depositions from the
earlier proceedings reveals a number of instances where she too
acknowledged the significance of the “Realtor marks” among real
estate professionals.
Cancellation Nos. 92032360 and 92040141
- 36 -
Moreover, respondent argues throughout the prosecution
of these proceedings that whether a real estate agent or
broker is a member of respondent is a material issue to
other agents or brokers:
As used, the marks serve to distinguish NAR
and its member associations from competing
service providers and real estate
associations that are not affiliated with
NAR. Moreover, the marks enable real estate
agents and brokers to determine whether
their peers, with whom they deal regularly
in connection with real estate transactions,
are or are not members of NAR. This is
important to transactional efficiency and
the smooth functioning of the marketplace
because … NAR members are obligated to abide
by a Code of Ethics and established rules
and regulations that do not apply to non-
members.
(Respondent’s brief, p. 5)
Hence, in the channels of trade where goods and/or
services are directed at the population subset of real
estate agents and brokers, it is clear that these terms
continue to function as source-identifying indicators.
On the other hand, we agree with petitioner that
members of the general public seeking real estate services
from an association professional are within the relevant
public. The results of petitioner’s flawed survey suggest
that members of this portion of the relevant public may
perceive the terms involved in these proceedings as generic
Cancellation Nos. 92032360 and 92040141
- 37 -
terms in spite of respondent’s best efforts to create
perceptions of these terms as source indicators among
members of the general public. However, because of the
flawed methodology, these results do not factor into our
decision. Rather, we find that petitioner has not shown by
a preponderance of the evidence, that the terms are
perceived as generic by even a significant minority of
purchasers of a real estate professional’s services.
Had petitioner conducted a proper survey, and obtained
similar results, we would clearly face a situation with
parallels to the facts of the oft-cited Bayer case, supra –
a case cited with favor by petitioner in its reply brief.
In Bayer, Judge Learned Hand observed that case
“presents a situation in which … the trade is divided into
two classes, separated by vital differences.”18 Moreover,
18 Here, as in the Bayer case, a single term may be found to
function as a “hybrid,” i.e., a trademark and a generic term for
the same goods or service, depending upon whether one is a
member of the class of knowledgeable intermediaries or a member
of the general public. The professional class in the Bayer case
included retail pharmacists, and it was in these wholesale
channels of trade where Bayer was permitted to retain the
trademark status of the term “Aspirin.”
In the Bayer case, ordinary consumers were not free to
enter into the marketplace reserved for pharmacists and
physicians. Similarly, here, consumers needing the services of
a real estate agent or broker are not free to enter into the
world of the real estate professional. Like the pharmacists and
physicians in Bayer, the real estate professionals herein –
whether or not they are members of respondent – have at their
ready disposal the generic identifier to which they are most
accustomed.
Cancellation Nos. 92032360 and 92040141
- 38 -
to the extent some factors in the instant case vary from
those in the Bayer case, these differences tend to support
the position of respondent. For example, while the
evidence in the Bayer case led the Court to conclude that
substantially all of the general consuming public
considered “aspirin” to be a generic designation, we have
no reliable evidence showing that such is the case herein.
More importantly, while members of the general public in
the Bayer case had no memorable generic alternative, such
is not the case here. The record suggests that “realty
agent,” “real estate agent” or “real estate broker” are
accepted generic alternatives. Moreover, Bayer’s own
actions were partly to blame for the state of affairs in
the Bayer case, while the record herein shows no period of
misuse by NAR, the trademark owner.19
Finally, in the Bayer case, Judge Hand issued a split
injunction as a way of accommodating the members of both
groups – including the interests of the brand name users.
See also “Distinct Classes of Consumers of a Single Product
– Accommodating Competing Perceptions of Genericness of the Same
Identification,” Jonathan Bersade, The Trademark Reporter,
86 T.M.R. 56 (1996).
19 See “Distinct Classes of Consumers of a Single Product –
Accommodating Competing Perceptions of Genericness of the Same
Identification,” Jonathan Bersade, The Trademark Reporter,
86 T.M.R. 56 (1996).
Cancellation Nos. 92032360 and 92040141
- 39 -
The Board does not issue injunctions, and Board decisions
are restricted to the issue of registrability.
Against this backdrop, we find that this record
supports a decision protecting the critical interests of
the users of these marks within the real estate community.
When real estate professionals see and use these
identifiers, an entire packet of information is succinctly
conveyed among them. Hence, they should be permitted to
continue making knowledgeable and informed decisions based
on the source-indicating functions of these marks. We find
that this result is entirely consistent with the holding in
the Bayer case.20 Furthermore, there is insufficient
probative evidence in this record on which we could base a
finding as to the perceptions of the “Realtor marks” among
members of the general public.
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.
Decision: The petitions to cancel are denied.
20 Id.