Incorporating a community name into your marketing can put you at risk.<\/p>\n\n\n\n
Imagine you\u2019re a real estate agent in Cold Mountain, N.C., using the tagline \u201cYour Cold Mountain Real Estate Connection\u201d to market your services. You receive a cease and desist letter from an enterprising developer who\u2019s registered a federal trademark for the term \u201cCold Mountain\u201d in connection with real estate brokerage and management services, demanding you stop using the term in your social media and advertising materials. Given how common the practice of marketing one\u2019s real estate business with a place name is within the industry, the potential for disputes is significant. The issue is even more problematic when the community name is based not on geography but rather on a made-up term, such as Bellhaven Woods or Oakcroft.<\/p>\n\n\n\n
Trademark rights can exist even in the absence of formal registration. The rights of a trademark holder extend only to that company\u2019s own field or related fields. That\u2019s how two different companies\u2014an airline and a plumbing fixture manufacturer\u2014can both have trademarks on the word Delta.<\/p>\n\n\n\n
However, generic descriptors for a category of goods or services are not defensible as trademarks. One cannot have a monopoly on the word \u201ccoffee\u201d when used in connection with the sale of a cup of joe, for example. Beyond generic words, terms that describe a product or service are usually not able to be trademarked, but under special circumstances they can move over from descriptive to become protected. Using the term \u201crich\u201d to sell your coffee probably wouldn\u2019t ever rise to the level of a protected mark. But consider the case of using \u201csharp\u201d to sell televisions: Once employed to describe picture quality, \u201cSharp\u201d eventually became protectable because it was used by one company for a long enough time that consumers began to recognize the association.<\/p>\n\n\n\n
Geographic terms are generally treated the same as descriptive marks: They are protectable if the mark owner was the first to use the name in connection with its product or service and consumers think of the company when they hear the name. (That\u2019s why Nantucket Nectars is a registered trademark, despite the fact that the beverage company using it is based in Nantucket.) In addition, a place name isn\u2019t seen as merely descriptive if the public doesn\u2019t associate the term with a specific place. So, a place that\u2019s relatively obscure, newly minted, or generic enough to be associated with multiple locations is generally protectable as a trademark.<\/p>\n\n\n\n
Thankfully, the fair use doctrine in U.S. trademark law offers some flexibility. The use of a place name to state where a business is located is generally acceptable, provided it doesn\u2019t suggest an affiliation with the mark holder. \u201cNominative\u201d fair use allows you to refer to the trademark owner or its product as long as the brand you reference is not easily identifiable without use of the trademark, you only use as much of the mark as necessary, and you don\u2019t falsely suggest a relationship with the trademark owner. This is what allows an auto mechanic shop to advertise that it repairs Ford vehicles without being an authorized service center and what allows for comparative advertising, such as \u201cIf you like Coke, try Pepsi.\u201d<\/p>\n\n\n\n
Exercise caution when using marketing materials with a geographic indicator, particularly with coined locations. Refer to place names in a nominative or descriptive fashion, not as a brand name or slogan. Instead of \u201cYour Cold Mountain Real Estate Connection,\u201d try \u201cWe Understand the Cold Mountain Market\u201d or \u201cServing the Cold Mountain Community for Over 106 Years.\u201d Because fair use is not black and white, consult an attorney with trademark expertise. It\u2019s always in your interest to avoid having acceptable language come as a result of a costly lawsuit.<\/p>\n\n\n\n
\u00a9National Association of REALTORS\u00ae
Reprinted with permission<\/p>\n","protected":false},"excerpt":{"rendered":"
Incorporating a community name into your marketing can put you at risk. Imagine you\u2019re a real estate agent in Cold Mountain, N.C., using the tagline \u201cYour Cold Mountain Real Estate Connection\u201d to market your services. You receive a cease and desist letter from an enterprising developer who\u2019s registered a federal trademark for the term \u201cCold … <\/p>\n