.Realtor should qualify under updated USPTO guidelines for trademarking top level domain names.
The National Association of REALTORS (NAR) has filed a trademark application for “.REALTOR”.
I’ve harped about how the U.S. Patent and Trademark Office doesn’t allow trademarks for top level domain names, but this case is different.
The USPTO has updated its guidelines because brands were applying for top level domain names. It changed the guidelines to allow trademarks for “dot-brands” in certain circumstances. Four guidelines must be met.
1. The brand owner has to have a prior registration of the same mark in the same field of use. NAR already has a trademark for “Realtor”.
The guidelines also state that the field of use in the trademark application will need to be limited to the same fields in the existing trademark. It can’t be for different fields of use. So in this case, it can’t be to provide domain registry services to restaurants instead of real estate agents.
The guidelines specifically disallow generic services such as “domain-name registry operator and registrar services”. NAR’s application does just that, identifying the services as “domain registry services”. The application examiner will likely require this to be amended.
2. Applicants must provide “Additional Proof that the Mark Used as a gTLD Will Be Perceived as a Mark”. I suspect this will be fairly easy to prove, although NAR continually fights the notion that Realtor is a generic term.
3. It must have a contract with ICANN for the TLD. Check.
4. It must be a legitimate service for the benefit of others.
If a brand only uses the top level domain for its own marketing activities, the trademark will generally be disallowed. But if registrations are allowed by other people such as distributors, it qualifies for the trademark. That’s the case here as NAR members (aka Realtors) can register the domains. Realtors are akin to distributors in many ways.
It seems that NAR will qualify, although it will need to amend its identification of services and will probably need to provide additional documentation to the examining attorney.
NAR is also behind the forthcoming .realestate domain name. It will not be able to tradmeark “.realestate” for registry services.
You can read the USPTO guidelines for .brands-as-trademarks here.
brandon abbey says
Many years ago someone purchased ********realtor.com from a well known marketplace and used esccrow.com to handle the funds. The transaction was settled using a credit card. Realtor is a trademarked term and after about 90 days the domain owner was forced to release the name. She filed a chargeback with her credit card company claiming the transaction was fraudulent. Of course, the seller had been paid months ago. Even though we fought the chargeback we ended up losing it when the credit card issuer agreed with the woman that is was fraudulent. A little over a $2000 loss.
Scott Smith says
“Applicants must provide ‘Additional Proof that the Mark Used as a gTLD Will Be Perceived as a Mark’. I suspect this will be fairly easy to prove, although NAR continually fights the notion that Realtor is a generic term.”
How would this be EASY to prove if a lot of people believe the term realtor is GENERIC? I, for example, never knew it was a trademark until hearing about someone fighting over whether or not it is generic.
Have you seen proof that most consumers (not just people in real estate) perceive realtor as a trademark? I suspect most consumers think realtor is just another occupational title such as engineer, journalist, and entrepreneur. And isn’t it true that you’re not supposed to be able to trademark occupational titles?