NAR can trademark “.Realtor” — Here’s why
.Realtor ought to 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 regarding 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 since 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 by now 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.
