“We Buy Houses” Too Generic for Trademark Protection

A federal judge in Virginia has cancelled the trademark on the phrase “We Buy Houses” owned by a real estate marketing firm.

Judge T.S. Ellis III of the United States District Court for the Eastern District of Virginia held that the trademarks “We Buy Houses” and “webuyhouses.com” were generic and therefore could not be trademarked. The case, Express Homebuyers USA, LLC v. WBH Marketing Inc., began when Express Homebuyers brought a suit to cancel WBH’s trademark. WBH Marketing subsequently counterclaimed against Express Homebuyers for trademark infringement.

Judge Ellis reasoned that the phrase “We Buy Houses” was so generic as to be equivalent to granting a football team a trademark on the sentence “We Play Football” and denying the use of that phrase to all its competitors. Further, Judge Ellis found that the phrase had been used continuously since as early as 1898 in real estate advertising and that industry players colloquially refer to a whole class of investors as “we buy houses companies”.

In the end, Judge Ellis determined that the phrase “We Buy Houses” was less a “distinctive identifier of a source of goods or services” and more a simple descriptor of the kinds of goods and services offered by a business – in this case, home-buying.

As a consequence of deciding that the trademarks should be cancelled, Judge Ellis also granted summary judgment dismissing WBH Marketing’s infringement claim against Express Homebuyers.

Trademarks may become generic – and therefore ineligible for protection – when a popular product name comes to be associated with a whole class of goods or when the name simply describes the class of goods without any protectable “creative” element.

Once a trademark has been registered with the United States Patent and Trademark Office (USPTO), there is a presumption based in legislation that the mark is not generic. However, some commentators following this case have expressed concerns that the USPTO has historically been too liberal in granting trademark protections, leaving it to the courts in cases such as this one to determine what is truly a generic mark and allowing trademark owners to “bully” others into paying unfair licensing fees. On the same grounds, prior to the litigation, an online petition advocating for the trademark on “We Buy Houses” to be cancelled garnered almost 2000 signatures.

Author: Wes Dutcher-Walls, 2018/2019 Articling Student-at-law