From Inman News Features
San Francisco-based attorney David Barry is taking the National Association of REALTORS® to the mat again this year in his relentless quest to strip the association of one its most valuable assets — the trademarked terms “REALTOR®” and “REALTORS®.”
His newest plaintiff is Jacob Zimmerman, a college student who owns approximately 2,000 URL domain names that contain the term “REALTOR®” or “REALTORS®” and the case may put to the test NAR’s grip on its trademarks and determine once and for all whether the terms are or are not generic.
NAR has fought and won this battle before.
Barry just last summer lost his bid to cancel the trademarks in Arleen Freeman v. National Association of REALTORS®, in which the U.S. Patent and Trademark Office ruled in favor of NAR. The trademark office in its decision cited the doctrine of licensee estoppels, which generally means someone who was licensed to use certain trademarks can’t then challenge the legitimacy of those trademarks.
The plaintiff, Arleen Freeman, was a member of NAR and thus herself licensed to use the terms from 1975 through 1996. That made her ineligible to challenge the trademarks’ validity.
The licensee estoppels doctrine doesn’t apply to Zimmerman, who has never been affiliated with NAR. He wants to profit from the sale of his 2,000 “REALTOR®” and “REALTORS®” domain names, but can’t because NAR prohibits any individual, even its own registered members, from using either of the terms in a Web address in the format in which they are used in Zimmerman’s domain names.
If NAR were to lose the trademark protection, the organization would be without one of its chief assets and would stand to lose money if real estate brokers and agents were less inclined to join the association without the considerable benefit of using the terms “REALTOR®” and “REALTORS®.”
Barry said he doesn’t know how much money Zimmerman invested in the URLs and couldn’t quantify how much Zimmerman would profit if he were to win his bid to cancel the trademarks and sell his cache, which includes Jacksonville Realtor.com.
“(For) a real estate agent in a large city, having a URL like AtlantaRealtor could be really valuable,” said Barry. He believes the merits of Zimmerman’s case are identical to those of the Freeman case sans NAR’s licensee estoppels defense.
This time NAR and Barry could argue about whether the terms “REALTOR®” and “REALTORS®” are generic — an argument that the trademark office didn’t consider last summer.
NAR General Counsel Laurie Janik said the association prepared a three-pronged defense in the Freeman case. The plaintiff was required to meet the burden of proof that the trademarks were damaging, the terms “REALTOR®” and “REALTORS®” were not generic and licensee estoppels.
Janik said the trademark office should have based its ruling on all three arguments because she said Freeman didn’t meet the burden of proof and the terms are not generic.
“My preference in the Freeman case was (that) the trademark trial and appeal board would (have) found for us on all three arguments, (but) they didn’t get a chance to address the other two,” said Janik.
Janik said the association has spent millions of dollars defending legal actions initiated by Barry that included various trademark challenges and an ongoing antitrust lawsuit in which Freeman also is the plaintiff.
Barry estimated he’s initiated approximately a dozen legal battles with NAR over the past 20 years, all of which he’s lost. But he said he doesn’t mind being known as “the guy who’s always going after NAR.”
He said “no one else has the stamina” to take on the huge trade association. He believes he will prevail in the Zimmerman case and demonstrate that he “was right all along” about the terms “REALTOR®” and “REALTORS®.”
Barry said Zimmerman is funding the trademark lawsuit, but much of the effort is a reuse of the Freeman case. That case was funded in part by the Settlement Corp., a Las Vegas-based venture capital firm that funds lawsuits in exchange for a percentage of any damages the plaintiff wins.
Both Barry and NAR have compiled surveys of usage that they believe support their arguments.
The Zimmerman case is in discovery. Barry speculated that the trademark office might reach a decision this summer. If he prevails, NAR could file an appeal with a higher legal authority.