NAR Wins Trademark Dispute Before USPTO

National Association of REALTORS® v. Nelis, Opp . No. 91209482

NAR won a trademark dispute against a member’s trademark application for “REALT OR REALTY”. The decision in NAR’s favor found that applied-for mark “REALT OR REALTY” is confusingly similar to NAR’s REALTOR® trademarks.

The proceeding was before the Trademark Trial and Appeal Board (the “Board”), the adjudication arm of the United States Patent and Trademark Office. The Board’s operations cover deciding inter partes disputes, including oppositions against trademark applications. Oppositions are often brought by trademark owners alleging a likelihood of confusion, and the proceeding focuses on whether the applied-for mark is too similar to the trademark owner’s, potentially causing consumer confusion. The Board considers a variety of factors when deciding the dispute, including the similarity of the trademarks, the products or services provided by the parties under their trademarks, and the trade channels for the parties’ products and services.

In this case, NAR opposed a member’s trademark application for REALT OR REALTY based on a likelihood of confusion with NAR’s REALTOR® trademarks. The member at issue joined NAR in 2001, owns his real estate firm, and requires that his agents similarly join NAR. His company’s advertising materials highlight the distinction between member and non-member real estate professionals and promote that members have higher ethical obligations to consumers than non-members. The member originally applied for “REALTORREALTY” in connection with “business networking services for licensed and unlicensed real estate investors and service providers.”  The USPTO rejected the mark as confusingly similar to NAR’s REALTOR® Marks, and the member subsequently amended his application to include the spaces in “REALT OR REALTY”.

NAR opposed the application on February 15, 2013. The Notice of Opposition argued that “REALT OR REALTY” is confusingly similar to NAR’s REALTOR® trademarks because (1) it incorporates the REALTOR® mark in its entirety and shares a close phonetic similarity; (2) the parties’ respective services and trade channels overlap; and (3) NAR’s REALTOR® Marks are entitled to broad protection given their strength and NAR’s extensive use.

The Board agreed with NAR’s arguments. The Board found that the space between the syllables “REALT” and “OR” in “REALT OR REALTY” did not diminish the visual and phonetic similarity to REALTOR®. Moreover, the term “REALTY” in “REALT OR REALTY” is indistinctive because the term generically describes the parties’ real estate services. The Board further found that the parties’ services overlap and target the same consumers, as NAR also offers networking opportunities related to real estate investment and both parties target licensed real estate professionals. Ultimately, the Board decided that the record on whole established a likelihood of confusion between “REALT OR REALTY” and NAR’s REALTOR® trademarks.

Note: This opinion is not a precedent of the Trademark Trial and Appeal Board. Please consult counsel before relying on this opinion.    

National Association of REALTORS® v. Nelis, Opp . No. 91209482 (TTAB May 13, 2015).

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