John Berryhill noticed a problem with this TV commercial.
Yesterday I wrote about CIRA’s new TV commercial suggesting that Canadians register .Ca domain names instead of .com.
I got caught up in the humor of the commercial and overlooked something that only a trademark attorney would quickly catch: the ad shows a domain name including the trademark REALTOR.
The ad firm that created the commercial registered the domain names featured in the commercial. That means it registered RupertTheRealtor.com and RupertTheRealtor.ca.
John Berryhill picked up on this:
So, the Toronto ad firm @giantsandgents registered a .com and and .ca domain name (RupertTheRealtor) using the @nardotrealtor (US) and @crea_aci REALTOR® mark to advertise the #CIRA domain registry which competes with .realtor. Next up, using “HILTON” for Days Inn ads…
— John Berryhill (@Berryhillj) September 24, 2019
Now, I will admit to having registered a domain with the Realtor mark in it many years ago without realizing it was a trademark. That was many years ago, and I didn’t put it in a major ad campaign.
Looks like that scene might need to be reshot. Or CIRA and the ad firm, Giant and Gents, might need to make nice with The Canadian Real Estate Association.
Responding to the issue, CIRA told Domain Name Wire:
We are really proud of, and stand behind, the ad. The reaction so far has been overwhelmingly positive. We look forward to helping as many Canadian businesses as possible get online with a .CA domain name.
I don’t doubt that it’s been positive. I like the add. But that doesn’t address the issue.
Charles Christopher says
Rumor has it, The Canadian Real Estate Association was seen heading over to CIRA with a few cases of Syrup.
DNS will remain online, but updates might be affected during the resulting maintenance period.
I don’t know if Realtor has the exclusive right to the use of the world “realtor” as its a dictionary noun “a person who acts as an agent for the sale and purchase of buildings and land; a real estate agent”. There is a huge list of trademark records with the world “realtor in it so Its not the first time I have seen that address on hockey boards.
Oh please oh please keep the comedy going with a UdRp over this guffaw
Yes I made that same mistake years ago not realizing it was trademarked, had Kootenay realtor.ca it was once challenged in the USA but the complainant lost as he did not reach the required number of people who deemed it generic,where as Realtors answered the poll on mass that it was a trademark there by keeping it from being a generic.
It’s great cira is promoting dot CA not sure why the Toronto area only though. With only two million dot CA’s registered we still have a long way to go.
I also never knew “realtor” was trademarked until I heard about attorney David Barry’s attempts to get the trademark cancelled, arguing that the National Association of Realtors obtained its “realtor” trademark through fraud on the USPTO, and that 90% of the public perceives realtor as generic (which sounds about right to me!).
Ali G says
The word “Realtor”, at this very moment, can be found on tens of thousands of ads across the world.
Like “Doctor” or “Lawyer”.
The fact that it was trademarked, or allowed to be trademarked, boggles the mind; it’s as if we are experiencing this in some parallel universe.
There are words or phrases which are trademarked, but which are in common use in advertising across the world, highlighting the virtues of a product or service, or used as calls to action. No one objects to the use of these words, as the public understands that this is in use just as transient advertising copy.
The use of these words or phrases do not dilute trademarks nor cause confusion in the minds of consumers – except, of course, if the word or phrase has acquired secondary meaning and is inherently distinctive.
What seems to befuddle some lawyers or UDRP panelists is if any of these words is used as a domain -there seems to be an assumption that once it is used with a domain extension it automatically rises to the level of being a dilutor of a mark. This may have been the case when we had only dot com and dot net and a few others; now with over 1000 extensions, and more coming, this argument does not hold water anymore.
Aside from words or phrases which have assumed secondary meaning and which are inherently distinctive, is it fair, or reasonable, that the owner of a trademarked word or phrase or slogan, which is in common everyday use, should deprive the public, and all of industry, and all the world, of the right to use and enjoy and benefit from using that term as a web-address? For all 1000+ TLD’s? A domain name is just a connector to a web address; like a hashtag. It takes you from ad copy in print, to digital ad copy which is more detailed.
Jimmy Wilson says
I don’t see how a commercial depicting vandalism (syrup on cash registers), violence ( hitting a person against rink boards) trying to run people over with a ice resurfaced and threatening people to agree with you opinions is in anyway Canadian.