See TMEP §§1402.11–1402.11(k) regarding identifications of services, and TMEP §1401 regarding classification.
Section 45 of the Trademark Act, 15 U.S.C. §1127, defines "collective mark" as follows:
The term "collective mark" means a trademark or service mark--
Under the Trademark Act, a collective mark is owned by a collective entity even though the mark is used by the members of the collective.
There are basically two types of collective marks: (1) collective trademarks or collective service marks; and (2) collective membership marks. The distinction between these types of collective marks is explained in Aloe Creme Labs., Inc. v. Am. Soc'y for Aesthetic Plastic Surgery, Inc., 192 USPQ 170, 173 (TTAB 1976), as follows:
A collective trademark or collective service mark is a mark adopted by a "collective" (i.e., an association, union, cooperative, fraternal organization, or other organized collective group) for use only by its members, who in turn use the mark to identify their goods or services and distinguish them from those of nonmembers. The "collective" itself neither sells goods nor performs services under a collective trademark or collective service mark, but the collective may advertise or otherwise promote the goods or services sold or rendered by its members under the mark. A collective membership mark is a mark adopted for the purpose of indicating membership in an organized collective group, such as a union, an association, or other organization. Neither the collective nor its members uses the collective membership mark to identify and distinguish goods or services; rather, the sole function of such a mark is to indicate that the person displaying the mark is a member of the organized collective group.
See also In re Int'l Inst. of Valuers, 223 USPQ 350 (TTAB 1984) . See TMEP §1303 concerning collective trademarks and service marks; §1304.01 concerning collective membership marks; and §1305 concerning the distinction between collective trademarks or service marks from trademarks and service marks used by collective organizations.
Under the Trademark Act of 1905, registration could be based only on a person’s own use of a mark. The Act did not permit for registration of collective and certification marks because such marks are generally used by a member of a collective organization or an authorized user, while the owner of the mark exercises legitimate control over this use by others. However, the June 10, 1938 amendment to the Act of 1905, out of which §4 and the accompanying definitions in §45 grew, changed this limitation on use and provided for registration of a mark by an owner who "exercises legitimate control over the use of a collective mark." "Collective marks," however, were not defined in the federal statute until implementation of Section 45 of the Act of 1946.
Section 4 of the Trademark Act of 1946 provides the authority for the registration of collective and certification marks by persons exercising legitimate control over their use, even in the absence of an industrial or commercial establishment. 15 U.S.C. §1054. Section 45 defines collective marks and certification marks separately, as distinctly different types of marks. 15 U.S.C. §§1054, 1127. Additionally, the definition of collective mark in §45 encompasses collective trademarks and collective service marks, as well as collective membership marks, which indicate membership in a union, association, or other organization. 15 U.S.C. §1054. See TMEP §§1306.01–1306.01(b) regarding certification marks.
Although collective trademarks and collective service marks indicate the commercial origin of goods or services, they also indicate that the party providing the goods or services is a member of a certain group and meets the group's standards for admission. A collective mark is used by all members of the collective group; therefore, no one member can own the mark, and the collective organization holds the title to the collectively used mark for the benefit of all members of the group. In comparison, a trademark or service mark is used by the owner of the mark to indicate the commercial source or origin of the goods/services in the owner.
The collective organization itself neither sells the goods nor renders the services provided under the mark, but may advertise so as to publicize the mark and promote the goods or services sold by its members under the mark. For example, a collective organization of real-estate professionals does not render real-estate services, but rather promotes the real-estate services offered by its members. See Zimmerman v. Nat’l Assoc. of Realtors, 70 USPQ2d 1425, 1428 (TTAB 2004) .
Compared with a specimen for a trademark or service mark, which generally shows use of the mark by the owner, a specimen of use for a collective trademark or collective service mark must show use of the mark by a member of the collective organization. 37 C.F.R. §2.44(a)(4)(i)(C); TMEP §1303.01(a)(i)(C). Such use must be on the member’s goods/packaging or in the sale, advertising, or rendering of the member’s services. See 37 C.F.R. §2.56(b)(3); TMEP §1303.01(a)(i)(C).
Under 37 C.F.R. §2.44, a complete application for a collective trademark or collective service mark must include the following:
37 C.F.R. §§2.44(a)(1), (a)(2)(i), (a)(3)(i), (a)(4), (a)(4)(B).
Requirements that differ in form from those in trademark or service mark applications. Most application requirements for collective trademarks and collective service marks are the same as those for regular trademarks and service marks. See 37 C.F.R. §2.44(a)(1). However, the filing basis and verification requirements for collective trademark and collective service mark applications differ in form from other trademark and service mark applications because of the difference between who owns and uses collective trademarks and collective service marks. See TMEP §§1303.01(a)–1303.01(a)(vi) for information regarding filing-basis requirements for collective trademarks and collective service marks and TMEP §§1303.01(b)–1301.01(b)(ii) for information regarding the verification of certain statements in collective trademark and collective service mark applications.
See TMEP Chapter 1600 for requirements post registration.
All applications for registration must include a filing basis, regardless of the type of mark, because this is the statutory basis for filing an application for registration of a mark in the United States. TMEP §806. There are five filing bases: (1) use of a mark in commerce under §1(a) of the Act; (2) bona fide intention to use a mark in commerce under §1(b) of the Act; (3) a claim of priority, based on an earlier-filed foreign application under §44(d) of the Act; (4) ownership of a registration of the mark in the applicant’s country of origin under §44(e) of the Act; and (5) extension of protection of an international registration to the United States under §66(a) of the Act. 15 U.S.C. §§1051(a)-(b), 1126(d)-(e), 1141f(a); 37 C.F.R. §2.44(a)(4).
An applicant is not required to specify or otherwise satisfy the requirements for a filing basis to receive a filing date. See Kraft Grp. LLC v. Harpole, 90 USPQ2d 1837, 1840 (TTAB 2009) . If a §1 or §44 application does not specify a basis, the examining attorney must require in the first Office action that the applicant specify the basis for filing and submit all the elements required for that basis. If the applicant timely responds to the first Office action, but fails to specify a basis for filing, or fails to submit all the elements required for a particular basis, the examining attorney will issue a final Office action, if the application is otherwise in condition for final action.
In a §66(a) application, the basis for filing will have been established in the international registration on file at the IB.
See 37 C.F.R. §2.44(a)(4) and TMEP §1303.01(a)(i)-(a)(v) for a list of the requirements for each basis.
Under 15 U.S.C. §1051(a), §1054, and 37 C.F.R. §2.44(a)(4)(i), to establish a basis under §1(a) of the Trademark Act, the applicant must:
The Trademark Act defines "commerce" as commerce that may lawfully be regulated by the U.S. Congress, and "use in commerce" as the bona fide use of a mark in the ordinary course of trade. 15 U.S.C. §1127; see TMEP §§901–901.04.
An applicant may claim both use in commerce under §1(a) of the Act and intent-to-use under §1(b) of the Act as a filing basis in the same application, but may not assert both §1(a) and §1(b) for the identical goods or services in the same application. 37 C.F.R. §2.44(c); see TMEP §806.02(b).
An applicant may not claim a §1(a) basis unless the mark was in use in commerce on or in connection with all the goods or services covered by the §1(a) basis as of the application filing date. Cf. E.I. du Pont de Nemours & Co. v. Sunlyra Int’l, Inc., 35 USPQ2d 1787, 1791 (TTAB 1995) .
If the applicant claims use in commerce in addition to another filing basis, but does not specify which goods or services are covered by which basis, the USPTO may defer examination of the specimen(s) until the applicant identifies the goods or services for which use is claimed. TMEP §806.02(c).
In certain situations, notwithstanding the use of a collective trademark or collective service mark by the members of the collective, the collective itself may also use the same mark as a trademark or service mark for the goods or services covered by the collective trademark or collective service mark registration. See TMEP §1305. The "anti-use-by-owner rule" of §4 of the Trademark Act does not apply to collective marks. See 15 U.S.C. §1054. The Trademark Law Revision Act of 1988, which became effective on November 16, 1989, amended §4 to indicate that the "anti-use-by-owner rule" in that section applies only to certification marks. Cf. Roush Bakery Prods. Co. v. F.R. Lepage Bakery Inc., 4 USPQ2d 1401 (TTAB 1987) , aff’d, 851 F.2d 351, 7 USPQ2d 1395 (Fed. Cir. 1988), withdrawn, vacated and remanded, 863 F.2d 43, 9 USPQ2d 1335 (Fed. Cir. 1988), vacated and modified, 13 USPQ2d 1045 (TTAB 1989) (stating that the Board no longer believes that the anti-use-by-owner rule is applicable to trademarks).
The same mark may not be used both as a collective trademark or collective service mark and as a certification mark for the same goods or services. 37 C.F.R. §2.45(f); TMEP § 1306.04(f).
An applicant must specify the class of persons entitled to use the mark (i.e., the applicant’s members), indicating their relationship to the applicant, and the nature of the applicant’s control over the use of the mark. 37 C.F.R. §2.44(a)(4)(i)(A). A statement that the applicant’s bylaws or other written provisions specify the manner of control is sufficient to satisfy this requirement. This statement does not have to be verified and, therefore, may be entered by examiner’s amendment.
The following language may be used for the above purpose:
Applicant controls the members’ use of the mark in the following manner: [specify, e.g., the applicant’s bylaws specify the manner of control].
When setting out the dates of use for a collective trademark on goods or collective service mark in connection with services, the applicant must state that the mark was first used by a member of the applicant rather than by the applicant. 37 C.F.R. §2.44(a)(4)(i)(B).
The date of first use anywhere for a collective trademark application is the date when an applicant’s member’s goods were first sold or transported or, for a collective service mark application, when an applicant’s member’s services were first rendered, under the mark, if such use is bona fide and in the ordinary course of trade. See 15 U.S.C. §1127 (definition of "use" within the definition of "abandonment of mark"). For every applicant, whether foreign or domestic, the date of first use of a mark is the date of the first use anywhere, in the United States or elsewhere, regardless of whether the nature of the use was local or national, intrastate or interstate, or of another type.
The date of first use in commerce for a collective trademark application is the date when an applicant’s member’s goods were first sold or transported or, for a collective service mark application, when an applicant’s member’s services were first rendered, under the mark in a type of commerce that may be lawfully regulated by the U.S. Congress, if such use is bona fide and in the ordinary course of trade. See 15 U.S.C. §1127 (definition of "use" within the definition of "abandonment of mark"). See TMEP §901.01 for definitions of "commerce" and "use in commerce," and §901.03 regarding types of commerce.
In a §1(a) application, the applicant may not specify a date of use that is later than the filing date of the application. If an applicant who filed under §1(a) cannot show that a member used the mark in commerce on or before the application filing date, the applicant may amend the basis to §1(b). See 37 C.F.R. §2.35(b)(1). See TMEP §806.03 regarding amendments to the basis.
Neither a date of first use nor a date of first use in commerce is required to receive a filing date in an application based on use in commerce under §1(a) of the Act. If the application does not include a date of first use and/or a date of first use in commerce, the examining attorney must require that the applicant specify the date of first use and/or date of first use in commerce. See 37 C.F.R. §2.44(a)(4)(i)(B). The dates must be supported by an affidavit or declaration under 37 C.F.R. §2.20. See 37 C.F.R. §§2.44(a)(4)(i)(B), 2.71(c).
An applicant may not file an application on the basis of use of a mark in commerce if such use has been discontinued.
A specimen of use for a collective trademark or collective service mark must show how a member uses the mark on the member's goods or in the sale or advertising of the member’s services. 37 C.F.R. §2.56(b)(3).
The specimen must show use of the mark to indicate that the party providing the goods or services is a member of a certain group. For example, collective trademark specimens should show the mark used on the goods or packaging for the goods; collective service mark specimens should show the mark used in the sale or advertising of the services. See 37 C.F.R. §2.56(b)(3).
The purpose of the mark must be to indicate that the product or service is provided by a member of a collective group. However, the specimen itself does not have to state that purpose explicitly. The examining attorney should accept the specimen if the mark is used on the specimen to indicate the source of the product or service, and there is no information in the record that is inconsistent with the applicant's averments that the mark is a collective mark owned by a collective group and used by members of the group.
See TMEP §§904–904.07(b)(i) regarding specimens for trademarks and §§1301.04–1301.04(j) regarding specimens for service marks.
See TMEP §904.07(a) regarding whether a trademark or service mark specimen shows the mark as actually used in commerce.
In an application based on intent to use, the applicant must submit a verified statement that the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce; that to the best of the signatory’s knowledge and belief, no other persons, except members, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods or services of such other persons, to cause confusion or mistake, or to deceive; and that the facts set forth in the application are true. 37 C.F.R. §2.44(a)(4)(ii); see 15 U.S.C. §§1051(b)(3)(B), 1054. See TMEP §1303.01(b)(i) for additional information regarding the requirements for the verified statement in applications under §1(b) of the Trademark Act.
Prior to registration, the applicant must file an allegation of use (i.e., either an amendment to allege use under 15 U.S.C. §1051(c) or a statement of use under 15 U.S.C. §1051(d), which states that (a) the mark is in use in commerce and (b) the applicant is exercising legitimate control over the use of the mark in commerce, and includes dates of use, the filing fee for each class, and one specimen evidencing use of the mark for each class. See 37 C.F.R. §§2.76(b), 2.88(b). See 37 C.F.R. §2.76 and TMEP §§1104–1104.11 regarding amendments to allege use and 37 C.F.R. §2.88 and TMEP §§1109–1109.18 regarding statements of use.
Once an applicant claims a §1(b) basis for any or all the goods or services, the applicant may not amend the application to seek registration under §1(a) of the Act for those goods or services unless the applicant files an allegation of use under §1(c) or §1(d) of the Act. 37 C.F.R. §2.35(b)(8).
See TMEP Chapter 1100 for additional information about intent-to-use applications.
Section 44(d) of the Act provides a basis for receipt of a priority filing date, but not a basis for publication or registration. Before the application can be approved for publication, or for registration on the Supplemental Register, the applicant must establish a basis under §1(a), §1(b), or §44(e) of the Act. 37 C.F.R. §2.44(a)(4)(iv)(A); TMEP §1003.03. If the applicant claims a §1(b) basis, the applicant must file an allegation of use before the mark can be registered. See TMEP §1303.01(a)(ii) regarding the requirements for a §1(b) basis.
Under 15 U.S.C. §§1054, 1126(d), and 37 C.F.R. §2.44(a)(4)(iv), the requirements for receipt of a priority filing date based on a previously filed foreign application are:
The scope of the goods/services covered by the §44 basis in the U.S. application may not exceed the scope of the goods/services in the foreign application or registration. 37 C.F.R. §2.44(a)(2)(iii); TMEP §1402.01(b).
If an applicant properly claims a §44(d) basis in addition to another basis, the applicant may retain the priority filing date without perfecting the §44(e) basis. 37 C.F.R. §2.35(b)(3), (b)(4). See TMEP §806.04(b) regarding processing an amendment electing not to perfect a §44(e) basis and §806.02(f) regarding the examination of applications that claim §44(d) in addition to another basis. See TMEP §§1003–1003.08 for further information about §44(d) applications.
Under 15 U.S.C. §§1054, 1126(e), and 37 C.F.R. §2.44(a)(4)(iii), the requirements for establishing a basis for registration under §44(e), relying on a registration granted by the applicant’s country of origin, are:
If the applicant does not submit a certification or a certified copy of the registration from its country of origin, the applicant must submit a true copy or photocopy of a document that has been issued to the applicant by, or certified by, the intellectual property office in the applicant’s country of origin. A photocopy of an entry in the intellectual property office’s gazette (or other official publication) or a printout from the intellectual property office’s website is not, by itself, sufficient to establish that the mark has been registered in that country and that the registration is in full force and effect. See TMEP §1004.01.
The scope of the goods/services covered by the §44 basis in the United States application may not exceed the scope of the goods/services in the foreign registration. 37 C.F.R. §2.44(a)(2)(iii); TMEP §1402.01(b).
An application may be based on more than one foreign registration. If the applicant amends an application to rely on a different foreign registration, this is not considered a change in basis; however, the application must be republished. TMEP §1004.02. See TMEP §806.03 regarding amendments to add or substitute a basis.
See TMEP §§1004–1004.02 for further information about §44(e) applications.
A registration as a collective trademark or collective service mark in the United States may not be based on a foreign registration that is actually a trademark registration. See In re Löwenbräu München, 175 USPQ 178 (TTAB 1972) (noting that the U.S. registration cannot exceed the breadth or scope of the foreign registration on which it is based); TMEP §1402.01(b). The scope of the registration, i.e., the nature of the registration right, would not be the same.
The scope and nature of the registration is not always immediately apparent from a foreign registration certificate. Foreign registration certificates may not always clearly identify whether the mark is a trademark, service mark, collective mark, or certification mark and even when they indicate the type, the significance of the term used for the type is not always clear. For example, the designation "collective" represents a different concept in some foreign countries than it does in the United States. Moreover, while a certificate printed on a standardized form may be headed with the designation "trademark," the body of the certificate might contain language to the contrary.
If a foreign registration certificate has a heading that designates the mark as a collective trademark or collective service mark, or if the body of the foreign certificate contains language indicating that the registration is for a collective trademark or collective service mark, the foreign registration normally may be accepted to support registration in the United States as a collective trademark or collective service mark.
If a foreign registration certificate has a heading that designates the mark as a collective mark, or if the body of the foreign certificate contains language indicating that the registration is for a collective mark, this could indicate that the foreign registration is for a collective trademark, collective service mark, or collective membership mark. See TMEP §1302. In such a situation, the examining attorney must review the foreign registration to determine if there is a reference to goods or services such that the registration is for a collective trademark or collective service mark, or a reference indicating membership only such that the registration is for a collective membership mark. Id.
Whenever there is ambiguity about the scope or nature of the foreign registration, or whenever the examining attorney believes that the foreign certificate may not reflect the actual registration right, the examining attorney should inquire regarding the basis of the foreign registration, pursuant to 37 C.F.R §2.61.
Section 66(a) of the Act, 15 U.S.C. §1141f(a), provides for a request for extension of protection of an international registration to the United States. See 37 C.F.R. §2.44(a)(4)(v). The request must include a verified statement alleging that the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce that the U.S. Congress can regulate on or in connection with the goods or services specified in the international application/subsequent designation; that the signatory is properly authorized to execute the declaration on behalf of the applicant/holder; and that to the best of his/her knowledge and belief, no other person, firm, corporation, association, or other legal entity, except members, has the right to use the mark in commerce that the U.S. Congress can regulate either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods or services of such other person, firm, corporation, association, or other legal entity, to cause confusion, or to cause mistake, or to deceive. 37 C.F.R. §2.44(a)(4)(v); see 15 U.S.C. §§1051(b)(3)(B), 1054. For a collective trademark or collective service mark application, the required verified statement is not part of the international registration on file at the International Bureau of the World Intellectual Property Organization ("IB"); therefore, the examining attorney must require the verified statement during examination. See 37 C.F.R. §2.44(b)(2).
See TMEP § 1303.01(b)(ii) for additional information regarding the requirements for the verified statement in applications under §66(a) of the Trademark Act.
A §66(a) applicant may not change the basis or claim more than one basis unless the applicant meets the requirements for transformation under §70(c) of the Act. 37 C.F.R. §§2.35(a), 2.44(c). See TMEP §§1904.09–1904.09(b) regarding the limited circumstances under which a §66(a) application may be transformed into an application under §1 or §44.
Section 66(a) requires transmission of a request for extension of protection by the IB to the USPTO. Such basis may not be added or substituted as a basis in an application originally filed under §1 or §44.
Under 15 U.S.C. §1141g, Madrid Protocol Article 4(2), and 37 C.F.R. §7.27, the §66(a) applicant may claim a right of priority within the meaning of Article 4 of the Paris Convention if:
See Regs. Rule 9(4)(a)(iv).
The procedures for examining an application with multiple bases, amending or deleting a basis, and reviewing the basis information prior to publication or issuance of a registration are the same as for trademark and service mark applications. See TMEP §806.02 for information about multiple bases, §806.03 regarding amending the basis, §806.04 regarding deleting a basis, and §806.05 regarding review of a basis prior to publication or issue.
An application must include certain statements that are verified by the applicant or by someone who is authorized to verify facts on behalf of an applicant. See 15 U.S.C. §1051(a)(3), (b)(3); 37 C.F.R. §§2.44(a)(4)(i)(D), (a)(4)(ii), (a)(4)(iii)(B), (a)(4)(iv)(B), (a)(4)(v), 2.193(e)(1); TMEP §1303.01(b)(i) - (b)(ii).
In an application under §1 or §44 of the Trademark Act, a signed verification is not required for receipt of an application filing date under 37 C.F.R. §2.21(a). If the initial application does not include a proper verified statement, the examining attorney must require the applicant to submit a verified statement that relates back to the original filing date. See TMEP §§804.01–804.01(b) regarding the form of the oath or declaration, TMEP §1303.01(b)(i) regarding the essential allegations required to verify an application for registration of a mark, and TMEP §804.04 regarding persons properly authorized to sign a verification on behalf of an applicant.
In §66(a) applications, the verified statement is not part of the international registration on file at the IB; therefore the examining attorney must require the verified statement during examination. See 37 C.F.R. §2.44(a)(4)(v), TMEP §§804.05, 1303.01(b)(ii), 1904.01(c).
The requirements for the verified statement in applications under §1 or §44 of the Trademark Act are set forth in 37 C.F.R. §§2.44(a)(4)(i)–(iv). See 15 U.S.C. §§1051(a)(3), 1051(b)(3), 1054, 1126. These allegations are required regardless of whether the verification is in the form of an oath ( TMEP §804.01(a)) or a declaration (TMEP §804.01(b)). See TMEP §1303.01(b)(ii) regarding the requirements for verification of a §66(a) application. See TMEP §§1303.01(a)–(a)(iv) for further information regarding filing-basis requirements, including the verified statement.
Truth of Facts Recited. Under 15 U.S.C. §§1051(a)(3)(B) and 1051(b)(3)(C), verification of an application for registration must include an allegation that "to the best of the verifier’s knowledge and belief, the facts recited in the application are accurate." The language in 37 C.F.R. §2.20 that "all statements made of [the signatory’s] own knowledge are true and all statements made on information and belief are believed to be true" satisfies this requirement. See 37 C.F.R. §§2.44(a)(4)(i)(D), (a)(4)(ii), (a)(4)(iii)(B), (a)(4)(iv)(B).
Use in Commerce and Exercising Legitimate Control. If the filing basis is §1(a), the applicant must submit a verified statement that the mark is in use in commerce and that the applicant is exercising legitimate control over the use of the mark in commerce. 37 C.F.R. §2.44(a)(4)(i)(D). If this verified statement is not filed with the original application, it must also allege that, as of the application filing date, the mark was in use in commerce and the applicant was exercising legitimate control over the use of the mark in commerce. 37 C.F.R. §2.44(b)(2).
Bona Fide Intention and Entitlement to Exercise Legitimate Control. If the filing basis is §1(b), §44(d), or §44(e), the applicant must submit a verified statement that the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce, and that to the best of the signatory’s knowledge and belief, no other persons, except members, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods or services of such other persons to cause confusion or mistake, or to deceive. 37 C.F.R. §2.44(a)(4)(ii), (a)(4)(iii)(B), (a)(4)(iv)(B). If this verified statement is not filed with the original application, it must also allege that, as of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce. 37 C.F.R. §2.44(b)(2).
Ownership. In an application based on §1(a), the verified statement must allege that the applicant believes the applicant is the owner of the mark, and that to the best of the signatory’s knowledge and belief, no other persons, except members, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods or services of such other persons to cause confusion or mistake, or to deceive. 37 C.F.R. §2.44(a)(4)(i)(D); see 15 U.S.C. §1051(a)(3)(A), (a)(3)(D).
Concurrent Use. The verification for concurrent use should be modified to indicate an exception that no other persons except members and the concurrent user(s) as specified in the application have the right to use the mark in commerce. 37 C.F.R. §2.44(d); see 15 U.S.C. §1051(a)(3)(D). See TMEP §1207.04(d)(ii) for concurrent use application requirements for a collective mark.
Affirmative, Unequivocal Averments Based on Personal Knowledge Required. The verification must include affirmative, unequivocal averments that meet the requirements of the Act and the rules. Statements such as "the undersigned [person signing the declaration] has been informed that the mark is in use in commerce [or has been informed that applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce] . . .," or wording that disavows the substance of the declaration, are unacceptable.
Verification Not Filed Within Reasonable Time. If the verified statement is not filed within a reasonable time after it is signed, the examining attorney will require the applicant to submit a substitute verified statement attesting that, as of the application filing date, the mark was in use in commerce and the applicant was exercising legitimate control over the use of the mark in commerce (in an application based on §1(a)); or, as of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce (in an application based on §1(b) or §44). 37 C.F.R. §2.44(b)(1). See TMEP §804.03 for information regarding time between execution and filing of documents.
Substitute Verification. If the verified statement does not include all the necessary averments, the examining attorney will require a substitute or supplemental affidavit or declaration under 37 C.F.R. §2.20.
For a collective trademark or collective service mark in a §66(a) application, the verified statement is not part of the international registration on file at the IB; therefore, the examining attorney must require the verified statement during examination. See 37 C.F.R. §2.44(b)(2).
Thus, in applications under §66(a) of the Act, the applicant must supplement the request for extension of protection to the United States to include a declaration that the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce that the U.S. Congress can regulate on or in connection with the goods or services specified in the international application/subsequent designation. 37 C.F.R. §2.44(a)(4)(v). The declaration must include a statement that the signatory is properly authorized to execute the declaration on behalf of the applicant and that to the best of his/her knowledge and belief, no other person, firm, corporation, association, or other legal entity, except members, has the right to use the mark in commerce that the U.S. Congress can regulate, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, firm, corporation, association, or other legal entity, to cause confusion, or to cause mistake, or to deceive. 37 C.F.R. 2. 44(a)(4)(v); see 15 U.S.C. §1141(f)(a).
Additionally, because the verified statement is not included with the initial application, the verified statement must also allege that, as of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce. 37 C.F.R. §2.44(b)(2).
See TMEP § 1303.01(a)(v) for further information regarding filing basis requirements, including the verified statement.
The examination of applications to register collective trademarks and collective service marks is conducted in a manner similar to the examination of applications to register regular trademarks and service marks, using most of the same criteria of registrability. See 15 U.S.C. §1054. Thus, the same standards generally applicable to trademarks and service marks are used in considering issues such as descriptiveness, disclaimers, likelihood of confusion, and deceptiveness. However, use (specimens) and ownership requirements are slightly different due to the nature of collective marks. See TMEP §§1303.01(a)(i)–(a)(v). See TMEP §1303.01(a)(i)(C) regarding specimens for collective marks. See TMEP §1207.04 for information regarding a concurrent use registration.
Under the definition of "collective mark" in §45 of the Trademark Act, a collective mark must be owned by a collective entity. 15 U.S.C. §1127. The use of a collective trademark or collective service mark is by members of the collective, but no member may own the collective mark. That is, application may not be made by a mere member. Therefore, in an application based on use in commerce under §1(a) of the Trademark Act, 15 U.S.C. §1051(a), the applicant must assert that the applicant is exercising legitimate control over the use of the mark in commerce.
Likelihood of confusion may arise from the contemporaneous use, by one party, of a collective trademark or collective service mark on the one hand and a trademark or service mark on the other. The same standards used to determine likelihood of confusion between trademarks and service marks also apply to collective marks. See 15 U.S.C. §1052(d); cf. In re Nat’l Novice Hockey League, Inc., 222 USPQ 638 (TTAB 1984); Allstate Life Ins. Co. v. Cuna Int’l, Inc., 169 USPQ 313 (TTAB 1971) , aff’d, 487 F.2d 1407, 180 USPQ 48 (C.C.P.A. 1973).
The finding of likelihood of confusion between a collective trademark or collective service mark and a trademark or service mark is not based on confusion as to the source of any goods or services provided by the members of the collective organization. Rather, the question is whether relevant persons are likely to believe that the trademark owner’s goods or services emanate from, are endorsed by, or are in some way associated with the collective organization. Cf. In re Code Consultants Inc., 60 USPQ2d 1699, 1701 (TTAB 2001).
The sole purpose of a collective membership mark is to indicate that the user of the mark is a member of a particular organization. See Constitution Party of Tex. v. Constitution Ass’n USA, 152 USPQ 443 (TTAB 1966) (holding cancellation of collective membership mark registration proper since mark was not being used to indicate membership in registrant).
Thus, membership marks are not trademarks or service marks in the ordinary sense; they are not used in business or trade, and they do not indicate commercial origin of goods or services. Registration of these marks fills the need of collective organizations who do not use the symbols of their organizations on goods or services but who still wish to protect their marks from use by others. See Ex parte Supreme Shrine of the Order of the White Shrine of Jerusalem, 109 USPQ 248 (Comm’r Pats. 1956), regarding the rationale for registration of collective membership marks.
A collective membership mark may comprise an individual letter or combination of letters, a single word or combination of words, a design alone, a name or nickname, or other matter that identifies the collective organization or indicates its purpose. A membership mark may, but need not, include the term "member" or the equivalent.
In addition to the mark being printed (the most common form), a membership mark may consist of an object, such as a flag, or may be a part of articles of jewelry, such as lapel pins or rings. See TMEP §1304.02(a)(i) and §1304.02(a)(i)(C) regarding use of membership marks and acceptable specimens.
Nothing in the Trademark Act prohibits the use of the same mark as a membership mark by members and, also, as a trademark or a service mark by the parent organization, but the same mark may not be used both as a membership mark and as a certification mark for the same goods or services. 37 C.F.R. §2.45(f); TMEP §1306.04(f).
See TMEP §1302.01 regarding the history of collective membership marks.
Under 37 C.F.R. §2.44, a complete application for a collective membership mark must include the following:
37 C.F.R. §2.44(a)(1), (a)(2)(ii), (a)(3)(ii), (a)(4).
Requirements that differ in form from those in trademark or service mark applications. Most application requirements for collective membership marks are the same as those for regular trademarks and service marks. However, the filing basis, verification, identification, and classification requirements for collective membership mark applications differ in form from other trademark and service mark applications because of the difference between who owns and uses collective membership marks. See TMEP §§1304.02(a)-(a)(v) for information regarding filing basis requirements, §§1304.02(b)-(b)(ii) for information regarding the verification of certain statements, §1304.02(c) for identification requirements, and §1304.02(d) for classification requirements in collective membership mark applications.
See TMEP Chapter 1600 for post-registration requirements.
See TMEP §1303.01(a) for information regarding an application filing basis for a collective trademark or collective service mark. These requirements apply similarly to collective membership marks.
For a list of the requirements pertaining to each filing basis, see 37 C.F.R. §2.44(a)(4) and TMEP §§1304.02(a)(i)–(v).
Registration of a collective membership mark under §1(a) is based on actual use of the mark by the members of a collective organization. The owner of the mark exercises control over the use of the mark; however, because the sole purpose of a membership mark is to indicate membership, use of the mark is by its members. See In re Triangle Club of Princeton Univ., 138 USPQ 332 (TTAB 1963) (collective membership mark registration denied because specimen did not show use of mark by members).
Under 15 U.S.C. §1051(a), §1054, and 37 C.F.R. §2.44(a)(4)(i), to establish a basis under §1(a) of the Trademark Act, the applicant must:
The Trademark Act defines "commerce" as commerce that may lawfully be regulated by the U.S. Congress, and "use in commerce" as the bona fide use of a mark in the ordinary course of trade. 15 U.S.C. §1127; see TMEP §§901–901.04.
An applicant may not assert both §1(a) and §1(b) for the same collective membership organization in the same application. 37 C.F.R. §2.44(c); see TMEP §806.02(b).
Nothing in the Trademark Act prohibits the use of the same mark as a collective membership mark by members and, also, as a trademark or service mark by the parent organization (see TMEP §1303.01), but the same mark may not be used both as a collective membership mark and as a certification mark for the same goods or services. 37 C.F.R. §2.45(f); TMEP §1306.04(f).
See TMEP § 1303.01(a)(i)(A) for information regarding the requirement for a Manner/Method of Control statement for a collective trademark or collective service mark. This requirement applies similarly to collective membership marks.
When setting out dates of use of a collective membership mark, the applicant must state that the mark was first used by a member of the applicant rather than by the applicant, and that the mark was first used on a specified date to indicate membership rather than first used on goods or in connection with services.
The date of first use anywhere is the date when an applicant’s member first indicates membership in the collective organization under the mark, if such use is bona fide and in the ordinary course of trade. See 15 U.S.C. §1127 (definition of "use" within the definition of "abandonment of mark"). For every applicant, whether foreign or domestic, the date of first use of a mark is the date of the first use anywhere, in the United States or elsewhere, regardless of whether the nature of the use was local or national, intrastate or interstate, or of another type.
The date of first use in commerce is the date when an applicant’s member first indicates membership in the collective organization under the mark in a type of commerce that may be lawfully regulated by the U.S. Congress, if such use is bona fide and in the ordinary course of trade. See 15 U.S.C. §1127 (definition of "use" within the definition of "abandonment of mark"). See TMEP §901.01 for definitions of "commerce" and "use in commerce," and §901.03 regarding types of commerce.
In a §1(a) application, the applicant may not specify a date of use that is later than the filing date of the application. If an applicant who filed under §1(a) cannot show that a member used the mark in commerce on or before the application filing date, the applicant may amend the basis to §1(b). See 37 C.F.R. §2.35(b)(1). See TMEP §806.03 regarding amendments to the basis.
Neither a date of first use nor a date of first use in commerce is required to receive a filing date in an application based on use in commerce under §1(a) of the Act. If the application does not include a date of first use and/or a date of first use in commerce, the examining attorney must require that the applicant specify the date of first use and/or date of first use in commerce. See 37 C.F.R. §2.44(a)(4)(i)(B). The dates must be supported by an affidavit or declaration under 37 C.F.R. §2.20. See 37 C.F.R. §§2.44(a)(4)(i)(B), 2.71(c).
An applicant may not file an application on the basis of use of a mark in commerce if such use has been discontinued.
The owner of a collective membership mark exercises control over the use of the mark but does not itself use the mark to indicate membership. Therefore, a proper specimen of use of a collective membership mark must show use by members to indicate membership in the collective organization. 37 C.F.R. §2.56(b)(4); In re Int’l Ass’n for Enterostomal Therapy, Inc., 218 USPQ 343 (TTAB 1983) ; In re Triangle Club of Princeton Univ., 138 USPQ 332 (TTAB 1963).
The most common types of specimens are membership cards and certificates. The applicant may submit as a specimen a blank or voided membership card or certificate.
For trade or professional associations, decals bearing the mark for use by members on doors or windows in their establishments, wall plaques bearing the mark, or decals or plates for use, e.g., on members’ vehicles, are satisfactory specimens. If the members are in business and place the mark on their business stationery to show their membership, pieces of such stationery are acceptable. Flags, pennants, and banners of various types used in connection with political parties, club groups, or the like could be satisfactory specimens.
Many associations, particularly fraternal societies, use jewelry such as pins, rings, or charms to indicate membership. See In re Triangle Club of Princeton Univ., supra. However, not every ornamental design on jewelry is necessarily an indication of membership. The record must show that the design on a piece of jewelry is actually an indication of membership before the jewelry can be accepted as a specimen of use. See In re Inst. for Certification of Computer Prof’ls, 219 USPQ 372 (TTAB 1983) (in view of contradictory evidence in record, specimen with nothing more than CCP thereon was not considered evidence of membership); In re Mountain Fuel Supply Co., 154 USPQ 384 (TTAB 1967) (design on specimen did not indicate membership in organization, but merely showed length of service).
Shoulder, sleeve, pocket, or similar patches, or lapel pins, whose design constitutes a membership mark and which are authorized by the parent organization for use by members on garments to indicate membership, are normally acceptable as specimens. Clothing authorized by the parent organization to be worn by members may also be an acceptable specimen.
A specimen that shows use of the mark by the collective organization itself, rather than by a member, is not acceptable. Collective organizations often publish various kinds of printed material, such as catalogs, directories, bulletins, newsletters, magazines, programs, and the like. Placement of the mark on these items by the collective organization represents use of the mark as a trademark or service mark to indicate that the collective organization is the source of the material. The mark is not placed on these items by the parent organization to indicate membership of a person in the organization.
See TMEP §904.07(a) regarding whether a trademark or service mark specimen shows the mark used in commerce.
See TMEP §1304.03(b) regarding specimen refusals specific to collective membership marks.
See TMEP §1303.01(a)(ii) for information regarding an intent-to-use filing basis for a collective trademark or collective service mark. These requirements apply similarly to collective membership marks, with the only difference being that the verified statement refers to a collective membership organization rather than goods or services.
See TMEP §1303.01(a)(iii) for information regarding a §44(d) filing basis for a collective trademark or collective service mark. These requirements apply similarly to collective membership marks, with the only difference being that the verified statement refers to a collective membership organization rather than goods or services.
See TMEP §1303.01(a)(iv) for information regarding a §44(e) filing basis for a collective trademark or collective service mark. These requirements apply similarly to collective membership marks, with only two differences. First, the verified statement refers to a collective membership organization rather than goods or services. Second, the scope of the nature of the collective membership organization covered by the §44 basis in the U.S. application may not exceed the scope of the nature of the collective membership organization identified in the foreign application or registration. 37 C.F.R. §2.44(a)(2)(iii); TMEP §1402.01(b).
See TMEP §1303.01(a)(iv)(A) for information regarding the scope of a foreign registration for a collective trademark or collective service mark. This information applies similarly to collective membership marks.
See TMEP §1303.01(a)(v) for information regarding a §66(a) filing basis for a collective trademark or collective service mark. These requirements apply similarly to collective membership marks, with the only difference being that the verified statement refers to a collective membership organization rather than goods or services.
The procedures for examining an application with multiple bases, amending or deleting a basis, and reviewing the basis information prior to publication or issuance of a registration are the same as for trademark and service mark applications. See TMEP §806.02 for information about multiple bases, §806.03 regarding amending the basis, §806.04 regarding deleting a basis, and §806.05 regarding review of a basis prior to publication or issue.
See TMEP §1303.01(b) for information about the verification of certain statements for a collective trademark or collective service mark. These requirements apply similarly to collective membership marks, except for the statement regarding the applicant’s bona fide intent and entitlement to exercise legitimate control and the applicant’s ownership statement.
See TMEP §1303.01(b)(i) for information about the requirements for the verified statement in applications under §1 or §44 for a collective trademark or collective service mark. These requirements apply similarly to collective membership marks. The two exceptions are the following requirements, which differ only in form.
Bona Fide Intention and Entitlement to Exercise Legitimate Control. If the filing basis is §1(b), §44(d), or §44(e), the applicant must submit a verified statement that the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce, and that to the best of the signatory’s knowledge and belief, no other persons, except members, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used in connection with the collective membership organization of such other persons, to cause confusion or mistake, or to deceive. 37 C.F.R. §2.44(a)(4)(ii), (a)(4)(iii)(B), (a)(4)(iv)(B). If this verified statement is not filed with the original application, it must also allege that, as of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce. 37 C.F.R. §2.44(b)(2).
Ownership. In an application based on §1(a), the verified statement must allege that the applicant believes the applicant is the owner of the mark, and that to the best of the signatory’s knowledge and belief, no other persons, except members, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used in connection with the collective membership organization of such other persons, to cause confusion or mistake, or to deceive. 37 C.F.R. §2.44(a)(4)(i)(D); see 15 U.S.C. §§1051(a)(3)(A), 1051(a)(3)(D).
See TMEP §§1304.02(a) - (a)(iv) for further information regarding filing-basis requirements, including the verified statement.
For a collective membership mark in a §66(a) application, the verified statement is not part of the international registration on file at the IB; therefore, the examining attorney must require the verified statement during examination. See 37 C.F.R. §2.44(b)(2).
In applications under §66(a) of the Act, the applicant must supplement the request for extension of protection to the United States to include a declaration that the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce that the U.S. Congress can regulate to indicate membership in the collective organization. 37 C.F.R. §2.44(a)(4)(v). The declaration must include a statement that the signatory is properly authorized to execute the declaration on behalf of the applicant and that to the best of his/her knowledge and belief, no other person, firm, corporation, association, or other legal entity, except members, has the right to use the mark in commerce that the U.S. Congress can regulate either in the identical form thereof or in such near resemblance thereto as to be likely, when used in connection with the collective membership organization of such other person, firm, association, or other legal entity, to cause confusion, or to cause mistake, or to deceive. 37 C.F.R. 2. 44(a)(4)(v); see 15 U.S.C. §1141(f)(a).
Additionally, because the verified statement is not included with the initial application, the verified statement must also allege that, as of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce. 37 C.F.R. §2.44(b)(2).
See TMEP § 1303.01(a)(v) for further information regarding filing-basis requirements, including the verified statement.
The purpose of a collective membership mark is to indicate membership in an organization; therefore, an identification of goods or services would not be appropriate in connection with a collective membership mark. More accurate identification language would be "indicating membership in an organization (association, club, or the like) . . .," followed by a phrase indicating the nature of the organization or association, for example, "indicating membership in an organization of computer professionals" or "indicating membership in a motorcycle club."
The nature of an organization can be indicated by specifying the area of activity of its members (e.g., they may sell lumber, cosmetics, or food, or may deal in chemical products or household goods, or provide services as fashion designers, engineers, or accountants). If goods or services are not directly involved, the nature of an organization can be indicated by specifying the organization’s type or purpose (such as a service or social club, a political society, a trade association, a beneficial fraternal organization, or the like). Detailed descriptions of an organization’s objectives or activities are not necessary. It is sufficient if the identification indicates broadly either the field of activity as related to the goods or services, or the general type or purpose of the organization.
Section 1 and §44 Applications. In applications under §1 or §44 of the Trademark Act, collective membership marks are classified in U.S. Class 200. 37 C.F.R. §6.4. U.S. Class 200 was established as a result of the decision in Ex parte Supreme Shrine of the Order of the White Shrine of Jerusalem, 109 USPQ 248 (Comm’r Pats. 1956). Before this decision, there was no registration of membership insignia on the theory that all collective marks were either collective trademarks or collective service marks. Some marks that were actually membership marks were registered under the Trademark Act of 1946 as collective service marks, and a few were registered as collective trademarks. That practice was discontinued upon the clarification of the basis for registration of membership marks and the creation of U.S. Class 200.
Section 66(a) Applications. A §66(a) application may indicate that the mark is a "Collective, Certificate or Guarantee Mark" or the identification may indicate that the mark is intended to indicate membership. In such cases, the examining attorney will require the applicant to clarify for the record the type of mark for which it seeks protection. The examining attorney must also require the applicant to comply with the requirements for the particular type of mark, i.e., collective trademark, collective service mark, collective membership mark, or certification mark. See TMEP §§1303–1303.02(b) regarding collective trademarks and collective service marks, §§1304–1304.03(c) regarding collective membership marks, and §§1306–1306.06(c) regarding certification marks.
If a §66(a) applicant indicates that the mark is a collective membership mark, the USPTO will not reclassify it into U.S. Class 200 because the classification of such applications may not be changed from that assigned by the International Bureau of the World Intellectual Property Organization (IB). TMEP §§1401.03(d), 1904.02(b). However, the examining attorney must ensure that the applicant complies with all other U.S. requirements for collective membership marks. See TMEP §§1304–1304.03(c).
An application to register a collective membership mark on the Principal Register must meet all the criteria for registration of other marks on the Principal Register. 15 U.S.C. §1054; see 37 C.F.R. §2.46. Likewise, when determining the registrability of a collective membership mark on the Supplemental Register, the same standards are used as are applied to other types of marks. See 37 C.F.R. §2.47.
The examination of collective membership mark applications is conducted in the same manner as the examination of applications to register trademarks and service marks, using the same criteria of registrability. Thus, the same standards generally applicable to trademarks and service marks are used in considering issues such as descriptiveness or disclaimers. See Racine Indus. Inc. v. Bane-Clene Corp., 35 USPQ2d 1832, 1837 (TTAB 1994) ; In re Ass’n of Energy Eng’rs, Inc., 227 USPQ 76, 77 (TTAB 1985) ; In re Int’l Ass’n for Enterostomal Therapy, Inc., 218 USPQ 343 (TTAB 1983) . However, use (specimens) and ownership requirements are slightly different due to the nature of collective membership marks indicating membership rather than commercial origin.
See TMEP §1207.04 for information regarding seeking a concurrent use registration.
Under the definition of "collective mark" in §45 of the Trademark Act, 15 U.S.C. §1127, only a "cooperative, an association or other collective group or organization" can become the owner of a collective mark. However, there is great variety in the organizational form of collective groups whose members use membership marks. The terms "group" and "organization" are broad enough to cover all groups of persons who are brought together in an organized manner such as to justify their being called "collective."
The organization is usually an association, either incorporated or unincorporated, but is not limited to being an association and may have some other form.
A collective membership mark may be owned by someone other than the collective organization whose members use the mark, and the owner might not itself be a collective organization. An example is a business corporation who forms a club for persons meeting certain qualifications, and arranges to retain control of the group and of the mark used by the members of the group. The corporation that has retained control over the use of the mark is the owner of the mark, and is entitled to apply to register the mark. In re Stencel Aero Eng’g Corp., 170 USPQ 292 (TTAB 1971) .
To apply to register a collective membership mark, the collective organization which owns the mark must be a person capable of suing and being sued in a court of law. See 15 U.S.C. §1127; TMEP §803.01. The persons who compose a collective group may be either natural or juristic persons.
Application to register a membership mark must be made by the organization or person (including juristic persons) that controls or intends to control the use of the mark by the members and, therefore, owns or is entitled to use the mark. See 15 U.S.C. §1054; In re Stencel Aero Eng’g Corp., 170 USPQ 292 (TTAB 1971) . Application may not be made by a mere member.
Whether matter functions as a collective membership mark is determined by the specimen and evidence of record. It is the use of the mark to indicate membership, rather than the character of the matter composing the mark, that determines whether a term or other designation is a collective membership mark. See Ex parte Grand Chapter of Phi Sigma Kappa, 118 USPQ 467 (Comm’r Pats. 1958) (holding that use of Greek letter abbreviations on athletic jerseys did not function as collective membership marks indicating membership in Greek letter societies); In re Mountain Fuel Supply Co., 154 USPQ 384 (TTAB 1967) (holding that the design on a jewelry pin merely indicated longevity of service rather than membership in a collective organization). If a proposed mark does not function as a mark indicating membership, the examining attorney must refuse registration under §§1, 2, 4, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, 1054, 1127. See TMEP §1304.03(b)(ii) regarding specimens showing use as degrees or titles. See TMEP §904.07(b) for information about matter that fails to function as a trademark or service mark.
Professional, technical, educational, and similar organizations often adopt letters or similar designations to be used by persons to indicate that the persons have passed certain tests or completed certain courses of instruction that are specified by the organization, or have demonstrated a degree of proficiency to the satisfaction of the organization. When such a symbol is used solely as a personal title or degree for an individual (i.e., it is used in a manner that identifies only a title or degree conferred on this individual), then it does not serve to indicate membership in an organization, and registration as a membership mark must be refused. In re Int’l Inst. of Valuers, 223 USPQ 350 (TTAB 1984) (registration properly refused where use of the mark on specimen indicated award of a degree or title, and not membership in collective organization); see also In re Nat’l Soc’y of Cardiopulmonary Technologists, Inc., 173 USPQ 511 (TTAB 1972) ; cf. In re Thacker, 228 USPQ 961 (TTAB 1986); In re Nat’l Ass’n of Purchasing Mgmt., 228 USPQ 768 (TTAB 1986) ; In re Mortg. Bankers Ass’n of Am., 226 USPQ 954 (TTAB 1985) .
If the proposed mark functions merely as a degree or title, the examining attorney must refuse registration under §§1, 2, 4, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, 1054, 1127, on the ground that the matter does not function as a collective membership mark. See TMEP §1304.03(b)(i).
Likelihood of confusion may arise from the contemporaneous use, by one party, of a collective membership mark on the one hand and a trademark or service mark on the other. The same standards used to determine likelihood of confusion between trademarks and service marks also apply to collective membership marks. See 15 U.S.C. §1052(d); In re Nat’l Novice Hockey League, Inc., 222 USPQ 638 (TTAB 1984) ; Allstate Life Ins. Co. v. Cuna Int’l, Inc., 169 USPQ 313 (TTAB 1971) , aff’d, 487 F.2d 1407, 180 USPQ 48 (C.C.P.A. 1973).
The finding of likelihood of confusion between a collective membership mark and a trademark or service mark is not based on confusion as to the source of any goods or services provided by the members of the collective organization. Rather, the question is whether relevant persons are likely to believe that "the trademark owner’s goods or services emanate from or are endorsed by or are in some other way associated with the collective organization." Pierce-Arrow Soc’y v. Spintek Filtration, Inc., 2019 USPQ2d 471774, at *8-9 (TTAB 2019) (quoting Carefirst of Md., Inc. v. FirstHealth of the Carolinas Inc., 77 USPQ2d 1492, 1513 (TTAB 2005)); In re Code Consultants Inc., 60 USPQ2d 1699, 1701 (TTAB 2001) . For purposes of Section 2(d), the identification of goods or services is used to determine the relevant consuming public. Pierce-Arrow Soc’y, 2019 USPQ2d 471774, at *9 (citing In re Gulf Coast Nutritionals, Inc., 106 USPQ2d 1243, 1247 (TTAB 2013)). Relevant purchasers for a collective membership mark consist of "those persons or groups of persons for whose benefit the membership mark is displayed." Id. (citing Carefirst of Md., Inc., 77 USPQ2d at 1513).
A collective organization may itself use trademarks and service marks to identify its goods and services, as opposed to collective trademarks and service marks or collective membership marks used by the collective’s members. See B.F. Goodrich Co. v. Nat'l Coops., Inc., 114 USPQ 406 (Comm’r Pats. 1957) (mark used to identify tires made for applicant cooperative and sold by its distributors is a trademark, not a collective mark that identifies goods of applicant’s associated organizations; applicant alone provides specifications and other instructions and applicant alone is responsible for faulty tires).
The examination of applications to register trademarks and service marks used or intended to be used by collective organizations is conducted in the same manner as for other trademarks and service marks, using the same criteria of registrability.
The form of the application used by collective organizations is the same as for those used or intended to be used by other applicants. The collective organization should be listed as the applicant, because it uses or intends to use the mark itself. The specimen submitted must be material applied by the collective organization to its goods or used in connection with its services.
Section 4 of the Trademark Act, provides for the registration of "certification marks, including indications of regional origin," which are defined in Section 45 as follows:
The term "certification mark" means any word, name, symbol, or device, or any combination thereof--
to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person’s goods or services or that the work or labor on the goods or services was performed by members of a union or other organization.
Based on the statute, there are generally three types of certification marks, that is, those that certify:
Differences between certification marks and trademarks or service marks. Two characteristics differentiate certification marks from trademarks or service marks: first, a certification mark is not used by its owner but rather by authorized users and, second, a certification mark does not indicate commercial source or distinguish the goods or services of one person from those of another person but rather indicates that the goods/services of authorized users are certified as to a particular aspect of the goods/services. See TMEP §1306.06(a) for a discussion of the distinction between a certification mark and a collective trademark, collective service mark, or collective membership mark.
A certification mark may not be used, in the trademark sense of "used," by the owner of the mark; it may be used only by a person or persons other than the owner of the mark. That is, the owner of a certification mark does not apply the mark to his or her goods or services and, in fact, usually does not attach or apply the mark at all. The mark is generally applied by other persons to their goods or services, with authorization from the owner of the mark.
The owner of a certification mark does not produce the goods or perform the services in connection with which the mark is used, and thus does not control their nature and quality. Therefore, it is not appropriate to inquire about control over the nature and quality of the goods or services. What the owner of the certification mark does control is use of the mark by others on their goods or services. This control consists of taking steps to ensure that the mark is applied only to goods or services that contain the characteristics or meet the requirements that the certifier/owner has established or adopted for the certification. See TMEP §1306.03(b) regarding submission of the standards established by the certifier to determine whether the certification mark may be used in relation to the goods and/or services of others.
A certification mark "is a special creature created for a purpose uniquely different from that of an ordinary service mark or trademark . . . ." In re Fla. Citrus Comm’n, 160 USPQ 495, 499 (TTAB 1968). That is, the purpose of a certification mark is to inform purchasers that the goods or services of a person possess certain characteristics or meet certain qualifications or standards established by another person. A certification mark does not indicate origin in a single commercial or proprietary source the way a trademark or service mark does. Rather, the same certification mark is used on the goods or services of many different producers.
The message conveyed by a certification mark is that the goods or services have been examined, tested, inspected, or in some way checked by a person who is not their producer, using methods determined by the certifier/owner. The placing of the mark on goods, or its use in connection with services, thus constitutes a certification by someone other than the producer that the prescribed characteristics or qualifications of the certifier for those goods or services have been met.
If the applicant has used the appropriate application form, the application will clearly indicate that the mark is intended to be a certification mark and should include the required elements. For certification mark applications based on §66(a) of the Trademark Act, the request for extension of protection will include a field indicating that the mark is a "Collective, Certificate or Guarantee Mark." See TMEP §1904.02(d) regarding requirements for §66(a) applications for certification and collective marks.
The examining attorney may also determine that the mark is a certification mark based on a review of the information in the application, which should include a certification statement or language indicating the mark’s use, or intended use, to certify some aspect of the goods or services, such as certifying regional origin, or that the labor was performed by a certain group, or that the goods or services meet certain safety standards. If the nature of the mark and its intended use are unclear, the examining attorney must seek clarification, through a Trademark Rule 2.61(b) requirement for additional information or, if appropriate, by telephone or email communication. See 37 C.F.R. §2.61(b); TMEP §§1306.04(b)(ii), TMEP §1306.06-1306.06(b). Any clarification regarding the certification statement that is received by informal communication must be recorded in a Note to the File. In addition, if certain required elements, such as those discussed in TMEP §1306.03, are missing or unacceptable, the applicant will be required to provide or amend them.
Under 37 C.F.R. §2.45, a complete application for a certification mark must include the following:
Requirements that differ in form from those in trademark or service mark applications. Most application requirements for certification marks are the same as those for regular trademarks and service marks. However, the filing basis, verification, identification, and classification requirements for certification mark applications differ in form from other trademarks and service mark applications because of the difference between who owns and uses certification marks. See TMEP §1306.02(a)-(a)(v) for information regarding filing-basis requirements, §§1306.02(b)-(b)(ii) for information regarding the verification of certain statements, §1306.02(c) for identification requirements, and §1306.02(d) for classification requirements in certification mark applications.
See TMEP §1306.03 for further information regarding the special elements of certification mark applications. See TMEP Chapter 1600 for post-registration requirements.
See TMEP §1303.01(a) for information regarding an application filing basis for a collective trademark or collective service mark. These requirements apply similarly to certification marks.
For a list of the requirements pertaining to each filing basis, see 37 C.F.R. §2.45(a)(4)(i)-(v) and TMEP §§1306.02(a)(i)-(v).
Under 15 U.S.C. §1051(a), §1054, and 37 C.F.R. §2.45(a)(4)(i), to establish a basis under §1(a) of the Trademark Act, the applicant must:
The Trademark Act defines "commerce" as commerce which may lawfully be regulated by the U.S. Congress, and "use in commerce" as the bona fide use of a mark in the ordinary course of trade. 15 U.S.C. §1127; see TMEP §§901–901.04.
An applicant may claim both use in commerce under §1(a) of the Act and intent to use under §1(b) of the Act as a filing basis in the same application, but may not assert both §1(a) and §1(b) for the identical goods or services in the same application. 37 C.F.R. §2.45(c); see TMEP §806.02(b).
An applicant may not claim a §1(a) basis unless the mark was in use in commerce on or in connection with all the goods or services covered by the §1(a) basis as of the application filing date. Cf. E.I. du Pont de Nemours & Co. v. Sunlyra Int’l, Inc., 35 USPQ2d 1787, 1791 (TTAB 1995) .
If the applicant claims use in commerce in addition to another filing basis, but does not specify which goods or services are covered by which basis, the USPTO may defer examination of the specimen(s) until the applicant identifies the goods or services for which use is claimed. TMEP §806.02(c).
See TMEP §1306.03(a) regarding statements specifying what the mark certifies, §1306.03(b) regarding certification standards, and §1306.03(c) regarding a statement that the applicant is not engaged in the production or marketing of the goods/services.
When specifying the dates of use as a certification mark, the applicant must indicate that the certification mark was first used by the applicant’s authorized users because a certification mark is not used by the applicant itself. See 37 C.F.R. §2.45(a)(4)(i)(D).
The date of first use anywhere is the date when an applicant’s authorized user’s goods were first sold or transported, or an applicant’s authorized user’s services were first rendered, under the mark, if such use is bona fide and in the ordinary course of trade. See 15 U.S.C. §1127 (definition of "use" within the definition of "abandonment of mark"). For every applicant, whether foreign or domestic, the date of first use of a mark is the date of the first use anywhere, in the United States or elsewhere, regardless of whether the nature of the use was local or national, intrastate or interstate, or of another type.
The date of first use in commerce is the date when an applicant’s authorized user’s goods were first sold or transported, or an applicant’s authorized user’s services were first rendered, under the mark in a type of commerce that may be lawfully regulated by the U.S. Congress, if such use is bona fide and in the ordinary course of trade. See 15 U.S.C. §1127 (definition of "use" within the definition of "abandonment of mark"). See TMEP §901.01 for definitions of "commerce" and "use in commerce," and §901.03 regarding types of commerce.
In a §1(a) application, the applicant may not specify a date of use that is later than the filing date of the application. If an applicant who filed under §1(a) cannot show that an authorized user used the mark in commerce on or before the application filing date, the applicant may amend the basis to §1(b). See 37 C.F.R. §2.35(b)(1). See TMEP §806.03 regarding amendments to the basis.
Neither a date of first use nor a date of first use in commerce is required to receive a filing date in an application based on use in commerce under §1(a) of the Act. If the application does not include a date of first use and/or a date of first use in commerce, the examining attorney must require that the applicant specify the date of first use and/or date of first use in commerce. See 37 C.F.R. §2.45(a)(4)(i)(D). The dates must be supported by an affidavit or declaration under 37 C.F.R. §2.20. See 37 C.F.R. §§2.45(a)(4)(i)(D), 2.71(c).
An applicant may not file an application on the basis of use of a mark in commerce if such use has been discontinued.
A certification mark specimen must show how a person other than the owner uses the mark to reflect certification of regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of that person’s goods or services; or that members of a union or other organization performed the work or labor on the goods or services. 37 C.F.R. §2.56(b)(5); see In re Council on Certification of Nurse Anesthetists, 85 USPQ2d 1403 (TTAB 2007) .
Although a certification mark performs a different function from a trademark or a service mark, users of certification marks typically apply them to goods and services in a manner similar to trademarks and service marks. That is, certification marks appear on labels, tags, or packaging for goods, or on materials used in the sale or advertising of services. Thus, specimens of use in certification mark applications generally are examined using the same standards that apply to specimens for trademarks and service marks. See TMEP §§904–904.07(b)(i) regarding specimens for trademarks and TMEP §1301.04-TMEP §1301.04(j) regarding specimens for service marks. However, because it is improper for certification marks to be used by their owners, any specimen of use submitted in support of a certification mark application must show use of the mark as a certification mark by an authorized user. 37 C.F.R. §2.56(b)(5).
Sometimes, the owner/certifier prepares tags or labels that bear the certification mark and that are supplied to the authorized users to attach to their goods or use in relation to their services. See Ex parte Porcelain Enamel Inst., Inc., 110 USPQ 258 (Comm’r Pats. 1956). These tags or labels are acceptable specimens if they are shown affixed to the certified goods. Cf. 37 C.F.R. §2.56(b)(1)-(2). A label or tag that is not shown physically attached to the goods may be accepted if, on its face, it clearly shows the mark in actual use in commerce. See TMEP §904.03(a) for more information regarding unattached labels or tags.
See TMEP §1306.04(c) for information regarding characteristics of certification marks and specimens that show the mark functions as a certification mark and §1306.05(b)(iii) regarding specimens for geographic certification marks.
Under 15 U.S.C. §§1051(b), 1054, and 37 C.F.R. §2.45(a)(4)(ii), to establish a basis under §1(b) of the Trademark Act, the applicant must:
Prior to registration, the applicant must file an allegation of use (i.e., either an amendment to allege use under 15 U.S.C. §1051(c) or a statement of use under 15 U.S.C. §1051(d) ) that states that (a) the mark is in use in commerce and (b) the applicant is exercising legitimate control over the use of the mark in commerce, includes dates of use and a filing fee for each class, and includes one specimen evidencing such use for each class. See 37 C.F.R. §§2.76, 2.88. See 37 C.F.R. §2.76 and TMEP §§1104–1104.11 regarding amendments to allege use and 37 C.F.R. §2.88 and TMEP §§1109–1109.18 regarding statements of use.
Once an applicant claims a §1(b) basis for any or all of the goods or services, the applicant may not amend the application to seek registration under §1(a) of the Act for those goods or services unless the applicant files an allegation of use under §1(c) or §1(d) of the Act. 37 C.F.R. §2.35(b)(8).
See TMEP §1306.03(a) regarding statements specifying what the mark is intended to certify and TMEP §1306.03(c) regarding statements that the applicant will not engage in the production or marketing of the goods/services.
See TMEP Chapter 1100 for additional information about intent-to-use applications.
Section 44(d) of the Act provides a basis for receipt of a priority filing date, but not a basis for publication or registration. Before the application can be approved for publication, or for registration on the Supplemental Register, the applicant must establish a basis under §1(a), §1(b), or §44(e) of the Act. See 37 C.F.R. §2.45(a)(4); TMEP §1003.03. If the applicant claims a §1(b) basis, the applicant must file an allegation of use before the mark can be registered. See TMEP §1306.02(a)(ii) regarding the requirements for a §1(b) basis.
Under 15 U.S.C. §§1054, 1126(d), and 37 C.F.R. §2.45(a)(4)(iv), to establish a basis under §44(d) of the Trademark Act, the applicant must:
The scope of the goods/services covered by the §44 basis in the U.S. application may not exceed the scope of the goods/services in the foreign application or registration. 37 C.F.R. §2.45(a)(2); TMEP §1402.01(b).
If an applicant properly claims a §44(d) basis in addition to another basis, the applicant may retain the priority filing date without perfecting the §44(e) basis. 37 C.F.R. §2.35(b)(3), (b)(4). See TMEP §806.04(b) regarding processing an amendment electing not to perfect a §44(e) basis and §806.02(f) regarding the examination of applications that claim §44(d) in addition to another basis.
See TMEP §1306.03(a) regarding statements specifying what the mark is intended to certify and TMEP §1306.03(c) regarding statements that the applicant will not engage in the production or marketing of the goods/services.
See TMEP §§1003–1003.08 for further information about §44(d) applications.
Under 15 U.S.C. §§1054, 1126(e) and 37 C.F.R. §2.45(a)(4)(iii), the requirements for establishing a basis for registration under §44(e), relying on a registration granted by the applicant’s country of origin, are:
If the applicant does not submit a certification or a certified copy of the registration from its country of origin, the applicant must submit a true copy or photocopy of a document that has been issued to the applicant by, or certified by, the intellectual property office in the applicant’s country of origin. A photocopy of an entry in the intellectual property office’s gazette (or other official publication) or a printout from the intellectual property office’s website is not, by itself, sufficient to establish that the mark has been registered in that country and that the registration is in full force and effect. See TMEP §1004.01.
The scope of the goods/services covered by the §44 basis in the U.S. application may not exceed the scope of the goods/services in the foreign registration. 37 C.F.R. §2.45(a)(2); TMEP §1402.01(b).
An application may be based on more than one foreign registration. If the applicant amends an application to rely on a different foreign registration, this is not considered a change in basis; however, the application must be republished. TMEP §1004.02. See TMEP §806.03 regarding amendments to add or substitute a basis.
See TMEP §1306.03(a) regarding statements specifying what the mark is intended to certify and §1306.03(c) regarding statements that the applicant will not engage in the production or marketing of the goods/services.
See TMEP §§1004–1004.02 for further information about §44(e) applications.
A registration as a certification mark in the United States may not be based on a foreign registration that is actually a trademark registration, i.e., a registration that is based on the registrant’s placement of the mark on his or her own goods as a trademark. See In re Löwenbräu München, 175 USPQ 178 (TTAB 1972) (noting that the U.S. registration cannot exceed the breadth or scope of the foreign registration on which it is based); TMEP §1402.01(b). The scope of the registration, i.e., the nature of the registration right, would not be the same.
The scope and nature of the registration is not always immediately apparent from a foreign registration certificate. Foreign registration certificates may not always clearly identify whether the mark is a trademark, service mark, collective mark, or certification mark and even when they indicate the type, the significance of the term used for the type is not always clear. For example, the designation "collective" represents a different concept in some foreign countries than it does in the United States. Moreover, while a certificate printed on a standardized form may be headed with the designation "trademark," the body of the certificate might contain language to the contrary.
If a foreign registration certificate has a heading that designates the mark as a certification mark, or if the body of the foreign certificate contains language indicating that the registration is for certification, the foreign registration normally may be accepted to support registration in the United States as a certification mark.
Whenever there is ambiguity about the scope or nature of the foreign registration, or whenever the examining attorney believes that the foreign certificate may not reflect the actual registration right, the examining attorney should inquire regarding the basis of the foreign registration, pursuant to 37 C.F.R §2.61(b).
Section 66(a) of the Trademark Act, 15 U.S.C. §1141f(a), provides for a request for extension of protection of an international registration to the United States. See 37 C.F.R. §2.45(a)(4)(v). To establish a basis under §66(a), the applicant must:
See TMEP §1306.02(b)(ii) for additional information regarding the requirements for the verified statement in applications under §66(a) of the Trademark Act.
A §66(a) applicant may not change the basis or claim more than one basis unless the applicant meets the requirements for transformation under §70(c). 37 C.F.R. §§2.35(a), 2.45(c). See TMEP §1904.09 regarding the limited circumstances under which a §66(a) application may be transformed into an application under §1 or §44.
Section 66(a) requires transmission of a request for extension of protection by the IB to the USPTO. It may not be added or substituted as a basis in an application originally filed under §1 or §44.
Under 15 U.S.C. §1141g, the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) Article 4(2), and 37 C.F.R. §7.27, the §66(a) applicant may claim a right of priority within the meaning of Article 4 of the Paris Convention if:
See Regs. Rule 9(4)(a)(iv).
The procedures for examining an application with multiple bases, amending or deleting a basis, and reviewing the basis information prior to publication or issuance of a registration are the same as for trademark and service mark applications. See TMEP §806.02 for information about multiple bases, §806.03 regarding amending the basis, §806.04 regarding deleting a basis, and §806.05 regarding review of a basis prior to publication or issue.
An application must include certain statements that are verified by the applicant or by someone who is authorized to verify facts on behalf of an applicant. 15 U.S.C. §1051(a)(3), (b)(3); 37 C.F.R. §§2.45(a)(4)(i)(F), (a)(4)(ii)(C), (a)(4)(iii)(C), (a)(4)(iv)(C), (a)(4)(v)(B), 2.193(e)(1); see TMEP §1306.02(b)(i)-(ii).
In an application under §1 or §44 of the Trademark Act, a signed verification is not required for receipt of an application filing date under 37 C.F.R. §2.21(a). If the initial application does not include a proper verified statement, the examining attorney must require the applicant to submit a verified statement that relates back to the original filing date. See TMEP §§804.01–804.01(b) regarding the form of the oath or declaration, §1306.02(b)(i) regarding the essential allegations required to verify an application for registration of a mark, and §804.04 regarding persons properly authorized to sign a verification on behalf of an applicant.
In §66(a) applications, this particular verified statement is not part of the international registration on file at the IB; therefore the examining attorney must require the verified statement during examination. See 37 C.F.R. §2.45(a)(4)(v)(B); TMEP §§804.05, 1306.02(b)(ii), 1904.01(c).
The requirements for the verified statement in applications under §1 or §44 of the Trademark Act are set forth in 37 C.F.R. §2.45(a)(4)(i)–(iv). See 15 U.S.C. §§1051(a)(3), 1051(b)(3), 1126. These allegations are required regardless of whether the verification is in the form of an oath (TMEP §804.01(a)) or a declaration (TMEP §804.01(b)). See TMEP §1306.02(b)(ii) regarding the requirements for verification of a §66(a) application. See TMEP §§1306.02(a)–(a)(iv) for further information regarding filing-basis requirements, including the verified statement.
Truth of Facts Recited. Under 15 U.S.C. §§1051(a)(3)(B) and 1051(b)(3)(C), verification of an application for registration must include an allegation that "to the best of the verifier’s knowledge and belief, the facts recited in the application are accurate." The language in 37 C.F.R. §2.20 that "all statements made of [the signatory’s] own knowledge are true and all statements made on information and belief are believed to be true" satisfies this requirement. See 37 C.F.R. §2.45(a)(4)(i)(F), (a)(4)(ii)(C), (a)(4)(iii)(C), (a)(4)(iv)(C).
Use in Commerce and Exercising Legitimate Control. If the filing basis is §1(a), the applicant must submit a verified statement that the mark is in use in commerce and that the applicant is exercising legitimate control over the use of the mark in commerce. 37 C.F.R. §2.45(a)(4)(i)(F). If this verified statement is not filed with the original application, it must also allege that, as of the application filing date, the mark was in use in commerce and the applicant was exercising legitimate control over the use of the mark in commerce. 37 C.F.R. §2.45(b)(2).
Bona Fide Intention and Entitlement to Exercise Legitimate Control. If the filing basis is §1(b), §44(d), or §44(e), the applicant must submit a verified statement that the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce, and that to the best of the signatory’s knowledge and belief, no other persons, except authorized users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods or services of such other persons, to cause confusion or mistake, or to deceive. 37 C.F.R. §2.45(a)(4)(ii)(C), (a)(4)(iii)(C), (a)(4)(iv)(C). If this verified statement is not filed with the original application, it must also allege that, as of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce. 37 C.F.R. §2.45(b)(2).
Ownership. In an application based on §1(a), the verified statement must allege that the applicant believes the applicant is the owner of the mark, and that to the best of the signatory’s knowledge and belief, no other persons except authorized users have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods or services of such other persons, to cause confusion or mistake, or to deceive. 37 C.F.R. §2.45(a)(4)(i)(F); see 15 U.S.C. §1051(a)(3)(A), (a)(3)(D).
Concurrent Use. The verification for concurrent use should be modified to indicate that no other persons except authorized users and concurrent users as specified in the application have the right to use the mark in commerce. 37 C.F.R. §2.45(d); see 15 U.S.C. §1051(a)(3)(D). See TMEP §1207.04(d)(ii) for concurrent use application requirements for a certification mark.
Affirmative, Unequivocal Averments Based on Personal Knowledge Required. The verification must include affirmative, unequivocal averments that meet the requirements of the Act and the rules. Statements such as "the undersigned [person signing the declaration] has been informed that the mark is in use in commerce [or has been informed that applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce] . . .," or wording that disavows the substance of the declaration, are unacceptable.
Verification Not Filed Within Reasonable Time. If the verified statement is not filed within a reasonable time after it is signed, the examining attorney will require the applicant to submit a substitute verified statement attesting that, as of the application filing date, the mark was in use in commerce and the applicant was exercising legitimate control over the use of the mark in commerce (in an application based on §1(a)); or, as of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce (in an application based on §1(b) or §44). 37 C.F.R. §2.45(b)(1). See TMEP §804.03 for information regarding time between execution and filing of documents.
Substitute Verification. If the verified statement does not include all the necessary averments, the examining attorney will require a substitute or supplemental affidavit or declaration under 37 C.F.R. §2.20.
The verified statement for a certification mark in a §66(a) application is not part of the international registration on file at the IB; therefore, the examining attorney must require the verified statement during examination. See 37 C.F.R. §2.45(b)(2).
In applications under §66(a) of the Act, the applicant must amend the request for extension of protection to the United States to include a declaration that the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce that the U.S. Congress can regulate on or in connection with the goods or services specified in the international application/subsequent designation. 37 C.F.R. §2.45(a)(4)(v)(B). The declaration must include a statement that the signatory is properly authorized to execute the declaration on behalf of the applicant and that to the best of his/her knowledge and belief, that no other person, firm, corporation, association, or other legal entity, except authorized users, has the right to use the mark in commerce that the U.S. Congress can regulate, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, firm, corporation, association, or other legal entity, to cause confusion, or to cause mistake, or to deceive. 37 C.F.R. §2.45(a)(4)(v)(B); see 15 U.S.C. §1141(f)(a).
Additionally, because the verified statement cannot be filed with the initial application, the verified statement must also allege that, as of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce. 37 C.F.R. §2.45(b)(2).
See TMEP §1306.02(a)(v) for further information regarding filing-basis requirements, including the verified statement.
The identification of goods or services in a certification mark application must describe the goods and/or services of the party who will receive the certification, not the activities of the certifier/owner of the certification mark. This is consistent with the requirement that the owner of a certification mark not produce the goods or perform the services in connection with which the mark is used. See 37 C.F.R. §2.45(a)(4)(i)(C), (a)(4)(ii)(B), (a)(4)(iii)(B), (a)(4)(iv)(B), (a)(4)(v)(A). The certification activities of the certifier are described in the certification statement, not in the identification of goods/services. For an explanation of the certification statement, see TMEP § 1306.03(a).
In a certification mark application, the goods or services that are certified may be identified less specifically than in an application for registration of a trademark or service mark. Ordinarily, it is only necessary to indicate the general category of goods and services, such as the following: food, agricultural commodities, electrical products, clothing, printed material, insurance services, machinery repair, or restaurant services. However, sufficient information must be provided to enable a comparison of goods/services and analysis of trade channels in regard to possible likelihood-of-confusion scenarios. If the certification program itself is limited to specific items of goods or services, for example, wine, wood doors, or bakery machinery, then the identification in the application must also reflect this level of specificity.
The terms "certification," "certify," or "certifies" should not be included in the identification, which should be limited only to the goods or services, as in the following examples:
Building and construction materials and products, in International Class A
Medical services in the field of addiction medicine and treatment, in International Class B
Furthermore, the identification in an application for a geographic certification mark need not refer to the specific geographic origin of the goods or services. For example, the identification of goods for the geographic certification mark WISCONSIN REAL CHEESE is "dairy products, namely, cheese."
Section 1 and Section 44 Applications
In applications to register certification marks, all goods are classified in U.S. Class A and all services are classified in U.S. Class B. 37 C.F.R. §6.3. Both U.S. Classes A and B (but not any other classes) may be included in one application. See TMEP §§1403–1403.06 regarding multiple-class applications.
NOTE: When the Trademark Act of 1946 went into effect, the goods and services for which certification marks were registered were classified in the regular numbered international classes for goods and services. It was later concluded that this was not reasonable, because a certification mark is commonly used on a great variety of goods and services, and the specialized purpose of these marks makes it unrealistic to divide the goods and services into the competitive groups that the regular classes represent. The change to classification in U.S. Classes A and B for certification marks was made by amendment to the Trademark Rules on August 15, 1955.
Section 66(a) Applications
In a §66(a) application, classification is determined by the International Bureau of the World Intellectual Property Organization (IB), in accordance with the Nice Agreement. Classes A and B come from the old United States classification system (see TMEP §1401.02) and are not included in the international classification system. In a §66(a) application, the international classification of goods/services may not be changed from the classification assigned to the goods/services by the IB. See TMEP §§1401.03(d), 1904.02(b). Accordingly, if the mark in a §66(a) application is identified as a certification mark, the USPTO will not reclassify it into U.S. Class A or B. However, the examining attorney must ensure that the applicant complies with all other U.S. requirements for certification marks, regardless of the classification assigned by the IB.
The application must contain a statement of the characteristic, standard, or other feature that is certified or intended to be certified by the mark, also known as the certification statement. The certification statement should begin with wording, "The certification mark, as used or intended to be used by persons authorized by the certifier, certifies or is intended to certify that the goods/services provided have . . . ." See 37 C.F.R. §2.45(a)(4)(i)(A), (a)(4)(ii)(A), (a)(4)(iii)(B), (a)(4)(iv)(B), (a)(4)(v)(A).
The certification statement must be sufficiently detailed to give proper notice of what is being certified. All of the characteristics or features that the mark certifies should be included. A certification mark application is not limited to certifying a single characteristic or feature.
The broad suggestive terms of the statute, such as quality, material, mode of manufacture, are generally not satisfactory by themselves, because they do not accurately reveal the nature of the certification. How specific the statement should be depends in part on the narrowness or breadth of the certification. For example, indicating that "quality" is being certified does not inform the public of what is being certified where the characteristic being certified is limited, for example, to the strength of a material, or the purity of a strain of seed.
The certification statement in the application is printed on the registration certificate. For that reason, it should be reasonably specific but does not have to include the details of the specifications of the characteristic being certified. If practicable, however, more detailed specifications should be made part of the application file record.
Amendments that would materially alter the certification statement must not be permitted. 37 C.F.R. §2.71(e).
The statement of what the mark certifies is a separate requirement from that of the identification of goods and/or services.
See TMEP §1306.05(b)(i) for information regarding the certification statement for geographic certification marks.
The applicant (certifier) must submit a copy of the standards established to determine whether others may use the certification mark on their goods and/or in connection with their services. 37 C.F.R. §2.45(a)(4)(i)(B). For an intent-to-use application, under §1(b) of the Act, 15 U.S.C. §1051(b), the standards are submitted with the allegation of use (i.e., either the amendment to allege use or the statement of use). 37 C.F.R. §§2.76(b)(5), 2.88(b)(5).
The standards do not have to be originally created by the applicant. They may be standards established by another party, such as specifications promulgated by a government agency or standards developed through research of a private research organization.
The standards must cover the full scope of the goods/services identified in the application. For example, if the goods are "olive oil," but the standards are only for "extra virgin olive oil," the examining attorney must require the applicant to submit standards that cover all types of olive oil or to amend the identification to "extra virgin olive oil."
In the rare circumstance when it is impracticable to provide a copy of the standards, the USPTO may accept a permanent link or permanent URL to the applicant’s standards with a synopsis of those standards. This provision is not intended as a general alternative to providing a copy of the standards; it applies only to situations when the nature of the standards makes providing a copy impracticable. For example, it may be impracticable to include a copy of the standards if the standards exceed 1,000 or more pages.
For applications based on §1(a) of the Act, the application must contain a statement that the applicant is not engaged in the production or marketing of the goods or services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant. 37 C.F.R. §2.45(a)(4)(i)(C). For applications based on §1(b), §44, or §66(a) of the Act, the application must contain a statement that the applicant will not engage in the production or marketing of the goods or services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant. 37 C.F.R. §2.45(a)(4)(ii)(B), (a)(4)(iii)(B), (a)(4)(iv)(B), (a)(4)(v)(A). This statement does not have to be verified and, therefore, may be entered by examiner’s amendment.
Except where specified otherwise, the same procedures are used to determine the registrability of certification marks that are used for other types of marks. Thus, the standards generally applicable to trademarks and service marks are used in considering issues such as descriptiveness, disclaimers, and likelihood of confusion. But see TMEP §1306.05 regarding certification marks indicating regional origin only.
Certification marks are subject to the same qualifications and bar to registration under §2(e) of the Trademark Act, 15 U.S.C. §1052(e) for mere descriptiveness as other marks. In re Nat’l Ass’n of Veterinary Technicians in Am., Inc., 2019 USPQ2d 269108, at *1 (TTAB 2019) (citing In re Council on Certification of Nurse Anesthetists, 85 USPQ2d 1403, 1411-15 (TTAB 2007); In re Nat’l Ass’n of Legal Sec’ys (Int’l), 221 USPQ 50, 52 (TTAB 1983)); In re Univ. of Miss., 1 USPQ2d 1909, 1911 (TTAB 1987) (citing 15 U.S.C §1054; In re Pro. Photographers of Ohio, Inc., 149 USPQ 857, 859 (TTAB 1966)); see Cmty. of Roquefort v. Santo, 443 F.2d 1196, 1199, 170 USPQ 205, 208 (C.C.P.A. 1971). When assessing the descriptiveness of a certification mark under §2(e) of the Act, "the identified goods or services are those provided by the certified users." In re Nat’l Ass’n of Veterinary Technicians in Am. Inc., 2019 USPQ2d 269108, at *2 (citing Council on Certification of Nurse Anesthetists, 85 USPQ2d at 1411 (considering whether the certification mark "refer[s] to anesthesia services rendered and administered by certified registered nurse anesthetists")). See TMEP §§1209.03–1209.03(u) regarding factors that often arise in determining whether a mark is merely descriptive or generic, §§1213–1213.11 concerning disclaimer of merely descriptive matter within a mark, §1303.02 and §1304.03 regarding assessing descriptiveness in collective marks.
Further, certification marks are subject to the same bar to registration under §2(d) of the Act, 15 U.S.C. §1052(d), as other marks, and the same du Pont analysis for determining likelihood of confusion is applied. In re Accelerate s.a.l., 101 USPQ2d 2047, 2049 (TTAB 2012) (quoting Motion Picture Ass’n of Am., Inc. v. Respect Sportswear, Inc., 83 USPQ2d 1555, 1559-60 (TTAB 2007) ); see In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) ; see also Procter & Gamble Co. v. Cohen, 375 F.2d 494, 153 USPQ 188 (C.C.P.A. 1967) ; Tea Bd. of India v. Republic of Tea, Inc., 80 USPQ2d 1881 (TTAB 2006) .
However, because a certification mark owner does not use the mark itself, the likelihood-of-confusion analysis is based on a comparison of the mark as applied to the goods and/or services of the certification mark users, including the channels of trade and classes of purchasers. In re Accelerate s.a.l., 101 USPQ2d at 2049 (quoting Motion Picture Ass’n of Am. Inc., 83 USPQ2d at 1559-60); see also Jos. S. Cohen & Sons Co. v. Hearst Mags., Inc., 220 F.2d 763, 765, 105 USPQ 269, 271 (C.C.P.A. 1955) .
A refusal to register because the specimen fails to show the applied-for mark functioning as a certification mark is predicated on §§1, 2, 4, and 45 of the Act, 15 U.S.C. §§1051, 1052, 1054, 1127. For example, registration should be refused on this basis where the specimen shows use only as an educational or other degree or title awarded to individuals, and not use as a certification mark. Titles and degrees indicate qualifications or attainments of a person; they do not pertain to or certify services that have been performed by the person. See TMEP §1306.04(d)(ii).
See TMEP §1207.04 for information regarding seeking a concurrent use registration.
See TMEP §1306.05 regarding the examination of geographic certification mark applications.
In evaluating the drawing, the same standards used in relation to trademark and service mark drawings apply to certification marks (see TMEP §§807–807.18). For §1(a) applications, the examining attorney must refer to the specimen to determine what constitutes the mark. See In re Nat’l Inst. for Auto. Serv. Excellence, 218 USPQ 744 (TTAB 1983) . The drawing in the application must include the entire certification mark, but it should not include matter that is not part of the mark.
The owner of a certification mark is the party responsible for the certification that is conveyed by the mark. The party who affixes the mark, with authorization of the certifier, does not own the mark; nor is the mark owned by someone who merely acts as an agent for the certifier, for example, an inspector hired by the certifier. The certifier, as owner, is the only person who may file an application for registration of a certification mark. See In re Safe Elec. Cord Comm., 125 USPQ 310 (TTAB 1960) .
Certification is often the sole purpose for the owner of a certification mark. However, a person is not necessarily precluded from owning a certification mark because he or she also engages in other activities, including the sale of goods or the performance of services. However, the certification mark may not be the same mark that the person uses as a trademark or service mark on the same goods or services. See 37 C.F.R. §2.45(f); TMEP §1306.04(f).
Examples of organizations that conduct both types of activities are trade associations and other membership or "club" types of businesses, such as automobile associations. These organizations may perform services for their members, and sell various goods to their members and others, as well as conduct programs in which they certify characteristics or other aspects of goods or services, especially of kinds which relate to the main purpose of the association.
Manufacturing or service companies that do not certify the goods or services of members may nonetheless engage in certification programs under proper circumstances. For example, a manufacturer of chemical wood preservatives might conduct a program certifying certain characteristics of wood or wood products that are treated and sold by others. Among the characteristics or circumstances certified could be the fact that a preservative produced by this manufacturer under a specified trademark was used in the treatment.
A magazine publisher may also conduct a certification program relating to goods or services that are advertised in or have some relevance to the interest area of the magazine.
The certifier/owner determines the requirements for the certification. The standards do not have to be created by the certifier/owner, but may be standards established by another person, such as specifications promulgated by a government agency or standards developed through research of a private research organization. See TMEP §1306.03(b) regarding the standards for certification. However, if the name of the organization that developed the standards is part of the mark, an issue could arise as to whether the mark is deceptively misdescriptive under 15 U.S.C. §1052(e)(1) (see TMEP §1209.04) or falsely suggests a connection with persons, institutions, beliefs, or national symbols under 15 U.S.C. §1052(a) (see TMEP §1203.03(b)).
See TMEP §1306.04(d)(i) regarding appearance of a trademark or service mark in a certification mark or on a specimen, and §1306.05(b)(ii) regarding the authority to control a geographic certification mark.
As stated in the application requirements, an application based on use in commerce under §1(a) of the Trademark Act, and an allegation of use under 15 U.S.C. §1051(c) or 15 U.S.C. §1051(d) filed in connection with a §1(b) application, must include a verified statement that the applicant is exercising legitimate control over the use of the certification mark in commerce. 37 C.F.R. §§2.45(a)(4)(i)(F), 2.76(b)(1)(v), 2.88(b)(1)(v). For an application based on §1(b), §44, or §66(a) of the Act, the verified statement must specify that the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the certification mark in commerce. 37 C.F.R. §§2.45(a)(4)(ii)(C), (a)(4)(iii)(C), (a)(4)(iv)(C), (a)(4)(v)(B).
If there is any evidence of record that casts doubt as to the existence or nature of such control by the applicant, the examining attorney must require an explanation and sufficient disclosure of facts, or the filing of appropriate documents, to support the applicant’s statement regarding the exercise of control over the use of the mark, pursuant to 37 C.F.R. §2.61(b).
Sometimes, an application requests registration of a certification mark, but there is a contractual relationship in the nature of a franchise or license between the applicant and the user of the mark, whereby the applicant, as the franchisor or licensor, specifies the nature or quality of the goods produced (or of the services performed) under the contract. These situations require care in examination because they usually indicate trademark or service mark use (through related companies) rather than certification mark use, because the applicant, as franchisor or licensor, controls the nature of the goods or services and has the responsibility for their quality.
The key distinction between use of subject matter as a certification mark and use as a trademark or service mark through a related company is the purpose and function of the mark in the market place, and the significance that it would have to the relevant purchasing public. A trademark or service mark serves to indicate the origin of goods or services, whereas a certification mark serves to guarantee certain qualities or characteristics. See In re Monsanto Co., 201 USPQ 864, 870 (TTAB 1978) ; In re Celanese Corp. of Am., 136 USPQ 86 (TTAB 1962) .
Furthermore, the owner of a certification mark must permit use of the mark if the goods or services meet the certifier’s standard, whereas a trademark owner may, but is not obligated to, license use of its mark to third parties. In re Monsanto Co., 201 USPQ at 870.
Sometimes, the owner of a patent asserts ownership of the mark that is applied to goods that are manufactured under license from the patent owner, in accordance with the terms and specifications of the patent. Typically, these marks have been registered as trademarks, on the basis of related-company use, rather than as certification marks. Generally, the patent owner’s purpose, in arranging for the application of a mark to the goods manufactured under his or her license, would be to identify and distinguish those goods whose nature and quality the patent owner controls through the terms and specifications of the patent. Therefore, registration as a trademark (on the basis of related-company use) rather than registration as a certification mark would be appropriate.
The Trademark Act does not require that a certification mark be in any specific form or include any specific wording. A certification mark may be wording only, design only, or a combination of wording and design. In other words, there is no particular way that a mark must look in order to be a certification mark.
A certification mark often includes wording such as "approved by," "inspected," "conforming to," "certified," or similar wording, because certification (or approval) is practically the only significance the mark is to have when it is used on goods or in connection with services. However, this wording is not required, and a mark that lacks this wording can perform the function of certification.
The examining attorney must look to the specimen and any facts disclosed in the record to determine whether the mark is used in certification activity and is in fact a certification mark.
It is not necessary to show that the mark is instantly recognizable as a certification mark, or that the mark has already become well known to the public as a certification mark. However, it should be clear from the record that the circumstances surrounding the use or promotion of the mark will give certification significance to the mark in the marketplace. See Ex parte Van Winkle, 117 USPQ 450 (Comm’r Pats. 1958).
If the specimen shows the proposed mark is not being used by a person other than the applicant or does not function as a certification mark, the examining attorney must refuse registration under §§1, 2, 4, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, 1054, 1127. The applicant may overcome the refusal by submitting an acceptable substitute specimen or amending the filing basis to §1(b), if appropriate. See TMEP §§806.03(c), 904.05. See TMEP §1306.04(d)(ii) regarding specimens showing use as degrees or titles. See TMEP §904.07(b) for information about matter that fails to function as a trademark or service mark.
See TMEP §1306.05(b)(iii) regarding the specimens of use for geographic certification mark applications.
It is customary for trademarks or service marks to be placed on goods or used with services in conjunction with certification marks. However, it is also possible for a certification mark to be the only mark used on goods or with services. Some producers market their goods or services without using a trademark or service mark, yet these producers may be authorized to use a certification mark and, as a result, the certification mark would be the only mark on the goods or services. In these situations, the significance of the mark might not be readily apparent and the examining attorney should request an explanation under 37 C.F.R. §2.61(b) of the circumstances to ascertain whether the mark is a certification mark rather than a trademark or service mark. See TMEP §1306.06.
When a trademark or a service mark appears on the specimen in addition to a certification mark, the certification mark can be on a separate label, or can be included on a single label along with the user’s own trademark or service mark.
A composite certification mark may include a trademark or service mark, provided the composite mark functions to certify, with the trademark or service mark serving only to inform, or to suggest the certification program, rather than to indicate the commercial origin of the goods or services with which the mark is used. These situations usually are created when a company that produces goods or performs services wants to develop a program and a mark to certify characteristics of the goods or services of others that are related to the producer’s own goods or services. See the examples in TMEP §1306.04(b).
Under these circumstances, the trademark or service mark must be owned by the same person who owns the certification mark, and the trademark or service mark may not be identical to the certification mark. See 37 C.F.R. §§2.45(f), 2.86(d).
Further, a party may not include the trademark or service mark of another in a certification mark, even with a disclaimer. If the examining attorney believes that a trademark or service mark included in a certification mark is not owned by the applicant, the examining attorney must refuse registration of the certification mark based on Section 2(d), 15 U.S.C. §1052(d), or false association under Section 2(a), 15 U.S.C. §1052(a), as appropriate.
A certification mark may be used to certify that the work or labor on the goods or services was performed by a member of a union or other organization, or by a person who meets certain standards and tests of competency set by the certifier. 15 U.S.C. §1127. The certifier does not certify the quality of the work being performed, but only that the work was performed by a member of the union or group, or by someone who meets certain standards. In re Nat’l Inst. for Auto. Serv. Excellence, 218 USPQ 744, 747 (TTAB 1983) ; see also Am. Speech-Language-Hearing Ass’n v. Nat’l Hearing Aid Soc’y, 224 USPQ 798 (TTAB 1984) . Used in this manner, the mark certifies a characteristic of the goods or services. Whether or not specific matter functions as a certification mark depends on whether the matter is used in connection with the goods or services in such a manner that the purchasing public will recognize it, either consciously or otherwise, as a certification mark.
Occasionally, it is not clear whether a term is being used to certify that work or labor relating to the goods or services was performed by someone meeting certain standards or by members of a union or other organization to indicate membership, or whether the term is merely being used as a title or a degree of the performer to indicate professional qualifications. Matter that might appear to be simply a title or a degree may function as a certification mark if used in the proper manner. See In re Council on Certification of Nurse Anesthetists, 85 USPQ2d 1403 (TTAB 2007) (CRNA functions as certification mark used to certify that anesthesia services are being performed by a person who meets certain standards and tests of competency); In re Software Publishers Ass’n, 69 USPQ2d 2009 (TTAB 2003) (CERTIFIED SOFTWARE MANAGER used on certificate merely indicates that holder of the certificate has been awarded a title or degree, and is not likely to be perceived as certification mark); In re Nat’l Ass’n of Purchasing Mgmt., 228 USPQ 768 (TTAB 1986) (C.P.M. used merely as title or degree, not as certification mark); In re Nat’l Ass’n of Legal Secretaries (Int’l), 221 USPQ 50 (TTAB 1983) (PROFESSIONAL LEGAL SECRETARY not used on the specimen in such a way as to indicate certification significance); In re Nat’l Inst. for Auto. Serv. Excellence, supra (design mark not used simply as a degree or title, but to certify that the performer of the services had met certain standards); In re Inst. of Certified Prof’l Bus. Consultants, 216 USPQ 338 (TTAB 1982) (CPBC not used as a certification mark for business consulting services, but only as a title or degree); In re Prof’l Photographers of Ohio, Inc., 149 USPQ 857 (TTAB 1966) (CERTIFIED PROFESSIONAL PHOTOGRAPHER used only as the title of a person, not as a certification mark); cf. In re Univ. of Miss., 1 USPQ2d 1909 (TTAB 1987) (use of university seal on diplomas did not represent use as a certification mark).
See TMEP §1306.06(a) regarding the difference between a certification mark and a collective mark.
A petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed as follows by any person who believes that he is or will be damaged, including as a result of a likelihood of dilution by blurring or dilution by tarnishment under section 1125(c) of this title, by the registration of a mark on the principal register established by this [Act], or under the Act of March 3, 1881, or the Act of February 20, 1905....
. . .
(5) At any time in the case of a certification mark on the ground that the registrant (A) does not control, or is not able legitimately to exercise control over, the use of such mark, or (B) engages in the production or marketing of any goods or services to which the certification mark is applied, or (C) permits the use of the certification mark for purposes other than to certify, or (D) discriminately refuses to certify or to continue to certify the goods or services of any person who maintains the standards or conditions which such mark certifies....
. . .
Nothing in paragraph (5) shall be deemed to prohibit the registrant from using its certification mark in advertising or promoting recognition of the certification program or of the goods or services meeting the certification standards of the registrant. Such uses of the certification mark shall not be grounds for cancellation under paragraph (5), so long as the registrant does not itself produce, manufacture, or sell any of the certified goods or services to which its identical certification mark is applied.
Section 14 of the Trademark Act, 15 U.S.C. §1064, provides for petitions to cancel registrations. Subsection (5) lists specific circumstances when petitions to cancel certification marks may be filed. The only subsections in (5) applicable to examination would be (A) and (B), as an analysis of (5)(A)-(D) below shows:
Subsection A ("exercising legitimate control"): In an application, the applicant states under oath or declaration that the applicant is exercising, or has a bona fide intention to exercise, legitimate control over the use in commerce of the certification mark. See 37 C.F.R. §§2.45(a)(4)(i)(F), (a)(4)(ii)(C), (a)(4)(iii)(C), (a)(4)(iv)(C), (a)(4)(v)(B); TMEP §1306.04(b)(i). Such statement is accepted, unless the examining attorney has knowledge of facts indicating that it should not be accepted.
Subsection B (not engaged in, or will not engage in, the production or marketing of any goods or services to which the certification mark is applied …"): The applicant is required to state, as appropriate, that he or she is not engaged in, or will not engage in, the production or marketing of any goods or services to which the certification mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant. See 37 C.F.R. §2.45(a)(4)(i)(C), (a)(4)(ii)(B), (a)(4)(iii)(B), (a)(4)(iv)(B), (a)(4)(v)(A); TMEP §1306.03(c). Such statement is accepted, unless the record contains facts to the contrary.
Subsection C (used for purposes other than to certify): This subsection concerns whether a party permits use of the certification mark for purposes other than to certify. No statements are required in the application specifically on this point. The existence of unauthorized or illegal uses by others without the applicant’s authorization is not within the examining attorney’s province and cannot be used as a basis for refusal to register, provided that use authorized by the applicant, as supported by the record, is proper certification use.
Subsection D (discriminately refusing to certify): This subsection relates to the obligation of the owner not to discriminately refuse to certify. This subject is not mentioned in §4 or §45, 15 U.S.C. §1054 or §1127. The USPTO does not evaluate, in ex parte examination, whether the standards or characteristics which the mark certifies, as set out by the applicant, are discriminatory per se; nor is it in the province of ex parte procedure to investigate or police how the certification is practiced.
A trademark or service mark is used by the owner of the mark on his or her goods or services, whereas a certification mark is used by persons other than the owner of the mark. A certification mark does not distinguish between producers, but represents a certification regarding some characteristic that is common to the goods or services of many persons. Using the same mark for two contradictory purposes would result in confusion and uncertainty about the meaning of the mark and would invalidate the mark for either purpose. Thus, registration as a certification mark precludes the same owner from registering the same mark as any other type of mark (e.g., a trademark or a service mark) for the same goods or services.) See 15 U.S.C. §1064(5)(B) (providing for cancellation of a registered certification mark if the registrant engages in the production or marketing of any goods or services to which the certification mark is applied); In re Monsanto Co., 201 USPQ 864, 868-69 (TTAB 1978) ; TMEP §1306.04(f).
Section 4 of the Trademark Act, 15 U.S.C. §1054, prohibits the registration of a certification mark "when used so as to represent falsely that the owner or a user thereof makes or sells the goods or performs the services on or in connection with which such mark is used;" and §14(5)(B) of the Act, 15 U.S.C. §1064(5)(B), provides for the cancellation of a registered certification mark where the registrant engages in the production or marketing of any goods or services to which the certification mark is applied. See TMEP §1306.04(e) regarding §14(5) of the Act. Thus, if a party attempts to register the same mark as a trademark or service mark for particular goods or services and as a certification mark for those goods or services, the applied-for mark must be refused under Trademark Act §§4 and 14(5)(B). 15 U.S.C. §§1054, 1064(5)(B); see also 37 C.F.R. §2.45; TMEP §1306.04(f).
The prohibition against registration both as a trademark or service mark and as a certification mark applies to marks that are identical or so similar as to constitute essentially the same mark. For these purposes, two marks need not be identical, but any differences must be so insignificant that the marks would still be viewed as essentially the same. Even small variations in wording or design, if meaningful, could create different marks that may coexist on the register. On the other hand, inconsequential differences, such as the style of lettering or the addition of wording of little importance, normally would not prevent marks from being regarded as the same. See In re 88Open Consortium Ltd., 28 USPQ2d 1314 (TTAB 1993) (finding the mark 88OPEN COMPATIBILITY CERTIFIED and design registrable as a certification mark even though applicant owned six registrations for the marks 88OPEN in typed and stylized form as trademarks, service marks, and collective membership marks. The Board noted that the words COMPATIBILITY CERTIFIED served to inform those seeing the mark that it is functioning as a certification mark, and that the certification mark included a design feature not found in the previously registered marks.). See also TMEP §§1306.04(b), 1306.04(d)(i), 1306.06.
The owner of a certification mark may seek registration of the same mark as a trademark or service mark for goods or services other than those to which the certification mark is applied. However, the application for a certification mark must be filed separately from the application for a trademark or service mark, because the purpose and use of a trademark or service mark differ from those of a certification mark as do the allegations and claims made in support of a certification mark.
The nature of the activity in which the mark is used or intended to be used may change from use to certify characteristics of goods or services to use on the party’s own goods or services, or on goods or services produced for the party by related companies. The change might also be the other way around, from trademark or service mark use to certification mark use.
If there is already a registration as one type of mark and the registrant files an application for registration of the mark as the other type, the applicant must surrender the previous registration under §7(e) of the Trademark Act, 15 U.S.C. §1057(e), before the examining attorney approves the new application for publication for opposition or issuance of a registration on the Supplemental Register. See 37 C.F.R. §2.172 and TMEP §1608 regarding surrender. The registration certificate for the new application should not issue until the prior registration actually has been cancelled.
In examining the new application, the examining attorney must carefully review the application to ensure that the facts of record support the new application.
A geographic certification mark is a word, name, symbol, device, or some combination of these elements, used alone or as a portion of a composite mark, to certify that the goods or services originate in the geographical region identified by the term or, in some circumstances, from a broader region that includes the region identified by the term. See 15 U.S.C. §1127. As noted in Cmty of Roquefort v. William Faehndrich, Inc., 303 F.2d 494, 497, 133 USPQ 633, 635 (2d Cir. 1962):
A geographical name does not require a secondary meaning in order to qualify for registration as a certification mark. It is true that section 1054 provides that certification marks are "subject to the provisions relating to the registration of trademarks, so far as they are applicable...." But section 1052(e)(2), which prohibits registration of names primarily geographically descriptive, specifically excepts "indications of regional origin" registrable under section 1054. Therefore, a geographical name may be registered as a certification mark even though it is primarily geographically descriptive.
A geographic certification mark may feature a recognized geographic term that identifies the relevant geographic region, as in the marks ROQUEFORT for cheese, DARJEELING for tea, and COLOMBIAN for coffee. Or the mark may contain a variation or abbreviation of a geographic term or a combination of different geographic terms, with or without other matter. Sometimes the mark will include or consist of a designation or figurative element that is not technically geographic, but nonetheless has significance as an indication of geographic origin solely in a particular region. For example, the mark CIAUSCOLO is not the name of a particular place, but it nevertheless certifies that the salami to which it is applied originates in various municipalities of certain Italian provinces. See TMEP §1306.05(j) for additional examples of geographic certification marks.
As with any certification mark, a geographic certification mark is not used by its owner in the same way a trademark or service mark is. Rather, the owner of a geographic certification mark controls use of the mark by other parties. These parties apply the mark to goods or services to indicate to consumers that the goods or services have been certified as meeting the standards set forth by the certifier. Thus, the goods or services to which a geographic certification mark is applied may emanate from a number of sources comprising various certified producers in the relevant region. See TMEP §§1306.01–1306.01(b), 1306.04(b).
The issue in determining whether a designation is registrable as a regional certification mark is whether the public understands that goods bearing the mark come only from the region named in the mark, not whether the public is expressly aware of the certification function of the mark per se. If use of the designation in fact is controlled by the certifier and limited to products meeting the certifier’s standards of regional origin, and if purchasers understand the designation to refer only to products produced in the particular region and not to products produced elsewhere, then the designation functions as a regional certification mark. Institut Nat’l Des Appellations D’Origine v. Brown-Forman Corp., 47 USPQ2d 1875 (TTAB 1998) .
Regardless of an applicant’s intent, however, consumers may perceive some terms as identifying a type or category of the relevant goods or services, rather than indicating geographic origin. As discussed in TMEP §1306.05(c), these terms do not function as geographic certification marks and may not be registered as such. Not every certification mark that features a geographic designation serves as a geographic certification mark. See TMEP §1306.05(f). But, as explained in TMEP §1306.05(d), those that do are specifically excluded from the provisions of Trademark Act §2(e)(2). Furthermore, for purposes of a §2(d) likelihood-of-confusion analysis, geographic designations that appear in a certification mark and function to certify regional origin should be treated like distinctive terms and should not be considered "weak." See TMEP §1306.05(g).
Applications for geographic certification marks must include all of the elements of a certification mark application. See TMEP §§1306.02–1306.02(d), 1306.03. As discussed in TMEP §1306.05(b), additional considerations apply to some of the elements.
Indicating the Region
When a geographic term is being used as a certification mark to indicate regional origin, the application must define the regional origin that the mark certifies. The identified region might be as large as a country or as small as a village, and an applicant may define it in general terms in the certification statement (e.g., "the Darjeeling region in India" or "the community of Roquefort, Department of Aveyron, France"). The certification standards, however, will usually be more specific as to the particular geographic boundaries involved.
If the available evidence indicates that the region identified by a geographic designation in the mark is well known for the identified goods or services, or that the goods or services are principal products of the region, the certification statement must limit the defined region to the region identified by the designation in the mark. When the certification statement is not appropriately limited in these instances, it is possible that the mark will be applied to goods or services that do not originate in the region named in the mark. See In re St. Julian Wine Co., 2020 USPQ2d 10595, at *3 n.2 (TTAB 2020) (a certification statement to indicate regional origin "must be sufficiently detailed" or the geographic certification mark "could improperly be applied to goods [or services] not originating from that region" and be subject to a geographically deceptive refusal). Thus, the mark is geographically deceptive as to those goods or services and must be refused accordingly. See TMEP §1306.05(e). The applicant may overcome the refusal by amending the certification statement to limit the defined region to the region identified by the geographic designation in the mark.
If there is insufficient evidence to conclude that the region identified in the mark is known for the goods or services, or that the goods or services are principal products of the region, the region defined in the certification statement may be broader than the region named in the mark. However, the region named in the mark must still be encompassed by the larger region specified in the certification statement.
Other Characteristics
The certification statement must be sufficiently detailed to give proper notice of what is being certified, which may include other characteristics in addition to geographic origin. See TMEP §1306.03(a). For example, the registration for ROQUEFORT indicates the mark certifies that the cheese to which it is applied "has been manufactured from sheep’s milk only, and has been cured in the natural caves of the community of Roquefort, Department of Aveyron, France."
Form of Certification Statement
The certification statement must start with the following wording or the equivalent: "The certification mark, as used or intended to be used by persons authorized by the certifier, certifies or is intended to certify that the goods/services provided have . . . ." See TMEP §1306.03(a). The following are examples of acceptable certification statements for geographic certification marks:
The certification mark, as used or intended to be used by persons authorized by the certifier, certifies or is intended to certify the regional origin of potatoes grown in the State of Idaho and certifies that those potatoes conform to grade, size, weight, color, shape, cleanliness, variety, internal defect, external defect, maturity and residue level standards promulgated by the certifier.
The certification mark, as used or intended to be used by persons authorized by the certifier, certifies or is intended to certify that the cheese on which the mark is used has been made entirely in the State of California with cow's milk produced entirely within the State of California.
The certification mark, as used or intended to be used by persons authorized by the certifier, certifies or is intended to certify that the agricultural products are aquacultural seafood products from the waters in the Gulf of Mexico off the Florida coast that are determined to be safe from oil.
See TMEP §1306.03(a) for information regarding certification statements in general.
The right that a private person can acquire in a geographical term is usually a trademark right, on the basis of exclusive use resulting in the term becoming distinctive of that person’s goods. Sometimes, however, circumstances make it desirable or necessary for various persons in a region to use a geographic designation for that region not as a trademark indicating commercial origin in one particular source, but to certify the regional origin of all the parties’ goods. And, when geographic designations are used to certify regional origin, a governmental body or government-authorized entity is usually most able to exert the necessary control to ensure all qualified parties in the region are free to use the designation and to discourage improper or otherwise detrimental uses of the certification mark.
When a geographical term is used as a certification mark, two elements are of basic concern: first, preserving the freedom of all persons in the region to use the term and; second, preventing abuses or illegal uses of the mark that would be detrimental to all those entitled to use the mark. Normally, a private individual is not in the best position to fulfill these objectives. The government of a region would be the logical authority to control the use of the name of the region. The government, either directly or through a body to which it has given authority, would have power to preserve the right of all persons entitled to use the mark and to prevent abuse or illegal use of the mark.
The applicant may be the government itself (such as the government of the United States, a state, or a city), one of the departments of a government, or a body operating with governmental authorization that is not formally a part of the government. There may be an interrelationship between bodies in more than one of these categories and the decision as to which is the appropriate body to apply depends on which body actually conducts the certification program or is most directly associated with it. The examining attorney should not question the identity of the applicant, unless the record indicates that the entity identified as the applicant is not the certifier.
If an applicant’s authority to control use of a geographic certification mark featuring a geographic designation is not obvious, or is otherwise unclear, such as when the applicant is not a governmental entity, the examining attorney must request clarification, using a Trademark Rule 2.61(b) requirement for information. 37 C.F.R. §2.61(b). One acceptable response would be an explanation that the relevant governmental body has granted the applicant the authority to implement the certification program. See Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121 USPQ2d 1477, 1497-1501 (TTAB 2017) (finding that applicant, a nonprofit civil association accredited under Mexican law to certify tequila and authorized by the Mexican government to apply to register TEQUILA as a certification mark, had the authority to control use of the term).
If the applicant’s response does not establish applicant’s authority to control the mark, registration may be refused under Trademark Act Sections 4 and 45, 15 U.S.C. §§1054, 1127, on the ground that the application does not satisfy all of the statutory requirements for a certification mark because the applicant does not appear to exercise legitimate control over the use of the mark or does not have a bona fide intent to do so.
Users of certification marks typically apply them to goods and services in a manner similar to trademarks and service marks. That is, certification marks appear on labels, tags, or packaging for goods, or on materials used in the sale or advertising of services. Thus, specimens of use in certification mark applications generally are examined using the same standards that apply to specimens for trademarks and service marks. See TMEP §§904–904.07(b)(i) regarding specimens for trademarks and §§1301.04-1301.04(j) regarding specimens for service marks. However, because it is improper for certification marks to be used by their owners, any specimen of use submitted in support of a certification mark application must show use of the mark as a certification mark by an authorized user. 37 C.F.R. §2.56(b)(5). See TMEP §1306.02(a)(i)(B) for more information regarding specimens for certification marks.
Because geographic certification marks certify regional origin, and thus often consist primarily of a geographic term, they may appear in an inconspicuous fashion on specimens (see TMEP §1306.05(j), Examples 4 and 8) and they may not look the same as other types of certification marks, which typically include wording, such as "certified," or design elements, such as seals or similar matter. In other instances, the geographic certification mark may be the only mark displayed because the authorized user has chosen to market its goods or services without using a trademark or service mark. See TMEP §1306.05(j), Example 2. If the significance of the mark as used on the specimen is not apparent, the examining attorney may require the applicant, pursuant to 37 C.F.R. §2.61(b), to explain the circumstances surrounding the use of the mark so that the examining attorney may determine whether the mark truly functions as a certification mark.
If the examining attorney concludes either that the specimen does not show the mark being used by a person other than the applicant or that the specimen does not demonstrate the mark functioning as a certification mark, registration should be refused under Trademark Act §§1, 2, 4, and 45, 15 U.S.C. §§1051, 1052, 1054, 1127. The applicant may overcome the refusal by submitting an acceptable substitute specimen or amending the filing basis to §1(b), if appropriate. See TMEP §§806.03(c), 904.05.
When reviewing an application for a geographic certification mark, the examining attorney must consider the specimen of record and any other available evidence to determine whether the relevant consumers understand the designation as referring only to goods or services produced in the particular region identified by the term and not those produced elsewhere as well. Consumers need not be expressly aware of the certification purpose of a designation. It is sufficient that they would perceive the designation as an indication of a particular regional origin; if so, the designation functions as a geographic certification mark and is registrable. See Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121 USPQ2d 1477, 1483 (TTAB 2017).
However, if the available evidence shows that the relevant purchasing public perceives the primary significance of a term as identifying a type or category of the relevant goods or services, without regard to the origin of the goods or services or the methods and conditions for producing them, then the term is generic and does not serve to certify regional origin. See Int’l Dairy Foods Ass’n v. Interprofession du Gruyère, 2020 USPQ2d 10892, at *21 (TTAB 2020); Tea Bd. of India v. Republic of Tea, Inc., 80 USPQ2d 1881, 1887 (TTAB 2006). For example, the Trademark Trial and Appeal Board found that a mark did not function as a geographic certification mark for cheese because, although the identified cheese was originally produced in a particular part of Italy, the evidence showed that, to American purchasers, the word signifies a type of cheese with particular hardness, texture, and flavor characteristics, regardless of regional origin. In re Cooperativa Produttori Latte E Fontina Valle D'Acosta [sic], 230 USPQ 131, 133-34 (TTAB 1986) .
To determine whether the relevant designation in an applied-for geographic certification mark is generic, the examining attorney should undertake the same analysis as would be applied to any potentially generic matter. See TMEP §1209.01(c)(i) for further information.
The burden is on the examining attorney to establish a prima facie case that a designation is generic by providing a reasonable predicate (or basis) that the relevant purchasing public would primarily use or understand the matter sought to be registered to refer to genus of goods or services in question. Relevant evidence may include the following:
Int’l Dairy Foods Ass’n, 2020 USPQ2d 10892, at *18-22; Tea Bd. of India, 80 USPQ2d at 1887; In re Cooperativa Produttori Latte E Fontina Valle D'Acosta [sic], 230 USPQ at 133-34; see also Luxco, Inc, 121 USPQ2d at 1483-97 (holding opposer failed to establish genericness of TEQUILA, based on evidence that included federal regulations, advertising materials, product labels, recipes, news articles, retail-store signage, and consumer surveys). In addition, the fact that the term is commonly used to identify goods or services in third-party registrations may further support the conclusion that it is viewed in the relevant marketplace as generic, rather than as an indication of geographic origin. When considering the available evidence, the examining attorney must take particular care to distinguish evidence that shows true generic use of a designation from evidence that merely shows infringing or otherwise improper use of a certification mark.
When the certification mark consists solely of generic matter, or generic matter and other unregistrable matter, it should be refused under Trademark Act §§2(e)(1), 4, and 45, 15 U.S.C. §§1052(e)(1), 1054, 1127, if registration is sought on the Principal Register. If registration is sought on the Supplemental Register, the statutory bases for refusal are §§4, 23, and 45, 15 U.S.C. §§1054, 1091, 1127. If the mark contains registrable matter in addition to the generic matter, the examining attorney must require a disclaimer of the generic matter. See TMEP §1213.03(b).
Even if a proposed mark is not generic, the applicant’s specimen of use may fail to demonstrate that the mark functions as a certification mark, in which case registration should be refused under Trademark Act §§1, 2, 4, and 45. 15 U.S.C. §§1051, 1052, 1054, 1127. See TMEP §1306.05(b)(iii).
In response to a refusal on the ground that the mark is generic or otherwise does not function as a certification mark, an applicant may submit for the examining attorney’s consideration any information or evidence that the applicant believes would support registration.
Trademark Act §2(e)(2), 15 U.S.C. §1052(e)(2), bars registration of primarily geographically descriptive marks, but specifically excludes from this prohibition those marks that serve as indications of regional origin. Thus, when a mark consists of or includes a geographic designation that functions to certify regional origin, the examining attorney must not refuse registration or require a disclaimer on the basis that the designation is primarily geographically descriptive of the goods or services. See Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121 USPQ2d 1477, 1482 (TTAB 2017); TMEP §1210.09. However, a requirement to disclaim other matter in the mark may be appropriate. See TMEP §1213.03(b). For instance, for the geographic certification mark WISCONSIN CHEESE, which certifies that cheese products originate in Wisconsin, a disclaimer of the generic term "CHEESE" is appropriate.
A geographic certification mark that is geographically deceptive may not be registered on either the Principal or Supplemental Register and must be refused under Trademark Act §2(a), 15 U.S.C. §1052(a), or §2(e)(3), 15 U.S.C. §1052(e)(3), as appropriate. See TMEP §1210.05 regarding geographically deceptive marks.
Sometimes, a geographic designation in a certification mark is not used to certify the geographic origin of the goods or services. For example, a certification mark includes the word "California," but is used to certify that the fruits and vegetables to which it is applied are organically grown. The word "California" may or may not describe the geographic origin of the goods, but, in this instance, it is not being used to certify that the goods originate in California. If a geographic designation in a certification mark is primarily geographically descriptive of the goods or services, and the certification mark’s purpose, as indicated by the certification statement, is to certify something other than geographic origin, the examining attorney must refuse registration under Trademark Act §2(e)(2), 15 U.S.C. §1052(e)(2), or require a disclaimer, as appropriate. If a geographic designation in a non-geographic certification mark is geographically deceptive as applied to the goods or services, the mark must be refused under §2(a) 15 U.S.C. §1052(a), or §2(e)(3), 15 U.S.C. §1052(e)(3), as appropriate.
See TMEP §§1210–1210.07(b) for information on refusals under §§2(a), 2(e)(2), and 2(e)(3), including when it is appropriate to issue refusals in the alternative.
When comparing marks in a typical §2(d) likelihood-of-confusion analysis, terms that are geographically descriptive of the relevant goods or services are sometimes given less weight. See TMEP §§1207.01(b)(iii), 1207.01(b)(ix). However, as indicated in TMEP §1306.05(d), a registered certification mark containing a geographic designation that functions to certify regional origin is not considered geographically descriptive. See §15 U.S.C. §1052(e)(2) (barring registration of any mark that is primarily geographically descriptive of goods or services, but providing an exception for indications of regional origin). Rather, it is treated as if it is distinctive because it serves to designate and certify the particular geographic origin of the relevant goods or services. "Consequently, a registered geographic certification mark should not be considered 'weak' or subject to a narrower scope of protection." In re St. Julian Wine Co., 2020 USPQ2d 10595, at *5 (TTAB 2020) (citing Inst. Nat’l Des Appellations d’Origine v. Brown-Forman Corp., 47 USPQ2d 1875, 1889-91 (TTAB 1998).
Furthermore, the likelihood-of-confusion analysis is generally the same for certification marks as it is for trademarks or service marks, in that all of the relevant du Pont factors should be considered. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361-62, 177 USPQ 563, 567 (C.C.P.A. 1973) ; In re Accelerate s.a.l., 101 USPQ2d 2047, 2049 (TTAB 2012) ; Motion Picture Ass’n of Am. v. Respect Sportswear, Inc., 83 USPQ2d 1555, 1559 (TTAB 2007); Inst. Nat’l Des Appellations d’Origine, 47 USPQ2d at 1891; TMEP §1306.04. "The classification as a certification mark ‘has very little effect on [a] determination as to whether or not there is a likelihood of confusion.’" In re St. Julian Wine Co., 2020 USPQ2d 10595, at *3 (citing In re Accelerate s.a.l., 101 USPQ2d at 2049)). However, "because a certification mark may not be used by the owner of the mark, but is instead used by authorized users, the analysis is based on the authorized users' goods [or services]" and their relevant trade channels and classes of consumers. Id.; see TMEP §1306.04.
The following guidelines, which focus on the similarity-of-the-marks du Pont factor, are provided to aid the examining attorney in considering the issues when a likelihood-of-confusion search and analysis involves a geographic certification mark. The facts and evidence will vary in each application, affecting the relevance and weight of the various du Pont factors. But, for the purposes of these guidelines, assume that any other relevant du Pont factors, including the relatedness of the parties’ goods and services, either support a finding that source confusion is likely or otherwise do not outweigh the factors that support such a finding.
When the application is for a geographic certification mark, the examining attorney should consider citing not only any prior mark with distinctive elements (e.g., suggestive, arbitrary, or fanciful wording, or distinctive design elements) that are confusingly similar to those in the applied-for geographic certification mark, but also any prior mark of any type that contains a geographic designation (whether disclaimed or not) that is confusingly similar to the designation in the applied-for mark.
Thus, if the geographic certification mark certifies that figs originate in Wyoming, and consists of a stylized cowboy hat above the wording WYOMING CERTIFIED (with CERTIFIED disclaimed), the potential cites may include (i) a geographic certification mark that is applied to Wyoming figs and is composed of the wording WYOMING’S OWN and (ii) a trademark that is applied to figs and consists of a cowboy-hat design that is nearly identical to the design in the applied-for mark.
Or, if the geographic certification mark certifies that pecans originate in Shenandoah County, Virginia, and consists of the wording SHENANDOAH COUNTY, potential cites may include (i) a trademark for roasted mixed nuts, consisting of the wording T.MARKEY’S SHENANDOAH MIXED NUTS (with SHENANDOAH MIXED NUTS disclaimed) and (ii) a trademark for pecans, composed of a stylized depiction of a pecan and the wording PETE’S PRICELESS PECANS OF SHENANDOAH (with PECANS OF SHENANDOAH disclaimed).
If there are numerous registrations and prior applications containing the same geographic designation (whether disclaimed or not) as the geographic certification mark, then, in the absence of the consent of the relevant registrants and applicants, a §2(d) refusal citing all of the relevant registrations and an advisory citing the prior applications may be appropriate. In addition, the examining attorney should consider refusing registration under Trademark Act §§4 and 45, 15 U.S.C. §§1054, 1127, on the basis that the application does not satisfy all of the statutory requirements for a certification mark because the applicant does not appear to exercise legitimate control over the use of the applied-for mark. See 15 U.S.C. §1054; 37 C.F.R. §2.45; TMEP §1306.04(b)(i). The applicant may respond to these refusals by submitting information or evidence that supports registration, including information and evidence regarding the relationship between the applicant and the owners of the cited marks.
When the application is for a mark that contains a geographic designation but is not a geographic certification mark, the examining attorney should consider citing not only any prior mark with distinctive elements (e.g., suggestive, arbitrary, or fanciful wording, or distinctive design elements) that are confusingly similar to those in the applied-for mark, but also any prior geographic certification mark containing a geographic designation that is confusingly similar to the geographic designation in the applied-for mark. Even if the geographic designation in the applied-for mark is not the dominant element, is relatively inconspicuous, or appears with a number of other elements, it may nonetheless be appropriate to cite a prior geographic certification mark that contains the same designation. By contrast, if there are no prior geographic certification marks containing the geographic designation, but there are numerous prior trademarks or service marks that contain and disclaim the designation, then a §2(d) refusal based on the fact that the respective marks share the designation is likely not appropriate.
As an example of the analysis when a prior geographic certification mark is involved, consider an applied-for mark that is used as a trademark for fresh bamboo shoots, consisting of the wording ZZZ BAMBOO in large lettering appearing above EVERGLADES in small lettering (with BAMBOO and EVERGLADES disclaimed). A potential cite might be a geographic certification mark consisting of the wording CERTIFIED EVERGLADES BAMBOO (with CERTIFIED and BAMBOO disclaimed), which certifies that live bamboo plants originate in the Everglades. Citing the prior geographic certification mark, and only that mark, may be appropriate even if there are also a few prior trademarks that contain the word EVERGLADES and are applied to bamboo products.
Of course, "if other matter in the applied-for mark changes the commercial impression of what might otherwise be a geographic designation (e.g., GEORGE WASHINGTON FRUITS vs. WASHINGTON STATE RAISINS), then that factor would weigh against citing prior marks containing the geographic term." In re St. Julian Wine Co., 2020 USPQ2d 10595, at *5 (TTAB 2020) (quoting TMEP §1306.05(g)(ii)) (affirming the guidance in this section); see TMEP §1207.01(b)(iii).
Confusion as to sponsorship, affiliation, or connection may be likely even when the applicant’s goods or services have been certified by the owner of the certification mark or would otherwise be considered genuine. See Inst. Nat’l Des Appellations d’Origine v. Brown-Forman Corp., 47 USPQ2d 1875, 1890-91 (TTAB 1998) . Thus, the mere fact that the applied-for mark is, or will be, applied to goods or services that originate in the relevant geographic region covered by a confusingly similar registered certification mark, and otherwise meet the certification standards of the registrant, is not, by itself, sufficient to overcome a §2(d) refusal. See id. at 1889-91.
American Viticultural Areas (AVA) are defined grape-growing regions in the United States, created on petition by interested parties through the federal rulemaking process. AVA designations appear on wine labels and "allow vintners and consumers to attribute a given quality, reputation, or other characteristic of a wine made from grapes grown in an area to its geographic origin." Thus, these designations facilitate the accurate description of wine origins and aid consumers in identifying wines. See U.S. Dept. of the Treasury, Alcohol and Tobacco Tax and Trade Bureau, American Viticultural Area (AVA), https://www.ttb.gov/wine/american-viticultural-area-ava (accessed Dec. 19, 2019). The currently recognized AVA designations can be found at 27 C.F.R. Part 9, Subpart C. In addition, the Alcohol and Tobacco Tax and Trade Bureau of the U.S. Department of the Treasury provides an up-to-date alphabetical list of the designations at https://www.ttb.gov/wine/established-avas (June 3, 2020).
Where a mark is comprised of or contains an AVA designation, or if the specimen or other evidence of record indicates that the goods and/or services originate or are produced in an AVA, the examining attorney must require the applicant to submit an amended identification that references the relevant geographic designation or origin. The amended identification must indicate that the goods are made or produced, or the services feature goods made or produced, in accordance with certain, specific, or adopted standards.
The identification of goods and/or services should only contain the common commercial or generic name of the goods and/or services, using terminology that is generally understood by the average consumers in the United States. See TMEP §1402.01. In addition, the identification should not include references to "protected appellation of origin" or other laws, rules, or regulations. See generally, TMEP §1402.01. Therefore, if the identification contains the wording "American Viticultural Area," the term "AVA," or refers to a defined AVA designation, that wording generally should not be part of the identification of goods and/or services featuring those goods. In such cases, the examining attorney must issue an identification requirement instructing the applicant to submit an amended identification that is definite and complies with the USPTO identification practice. An applicant may not delete the reference to a geographic designation or origin entirely from the identification because such an amendment would impermissibly broaden the scope of the goods and/or services. See TMEP §§1402.06, 1402.07. In general, the amended identification must indicate that the goods are made or produced, or the services feature goods made or produced, in accordance with certain, specific, or adopted standards. The language used to describe the goods and/or services should be understandable to the average person and should not require an in-depth knowledge of the relevant field. TMEP §1402.01.
Examples of original identifications and the amended wording that may be recommended include the following:
| ORIGINAL ID | RECOMMENDED AMENDMENT |
|---|---|
| Wine | Wines produced in {insert geographic name or region} in accordance with adopted standards |
| AVA grape wine | Wines made from grapes grown in {insert the geographic name or region} in accordance with specific standards |
| Wine complying with the characteristics of the Horse Heaven Hills AVA | Wines produced in Horse Heaven Hills, located within the Columbia Valley area of Yakima, Washington in accordance with adopted standards |
| Retail stores featuring Alexander Valley AVA wines | Retail store services featuring wines from the Alexander Valley area of Sonoma, California made in accordance with adopted standards |
| Wines derived from grapes grown in the Sta. Rita Hills AVA, labeled and advertised in compliance with U.S. AVA laws | Wines made from grapes from Santa Rita Hills, California in accordance with specific standards |
Although AVA designations are similar to geographic certification marks in terms of their purpose and function, these designations raise complex issues when included in applied-for marks of any type. Thus, if an applied-for mark of any type contains an AVA designation, the assigned examining attorney must consult the Office of the Deputy Commissioner for Trademark Examination Policy before taking any action on the application.
Trademark Act §2(b), 15 U.S.C. §1052(b), bars the registration of marks that contain the flag, coat of arms, or other insignia of the United States, any state or municipality, or any foreign nation. If a geographic certification mark includes this matter, it must be refused registration. See TMEP §§1204–1204.05 regarding refusing registration under §2(b).
Example 1
Mark: IDAHO (typed drawing)
Specimen
Goods: Potatoes and potato products, namely, fresh, frozen, refrigerated and dehydrated potatoes
Certification Statement: "The Certification mark, as used by authorized persons, certifies that goods identified by the mark are grown in Idaho and that the goods conform to quality, grade and other requirements, pursuant to standards designated by the Applicant."
Example 2
Mark
Specimen
Goods: Potatoes and potato products, namely, fresh, frozen, refrigerated and dehydrated potatoes
Certification Statement: "The certification mark, as used by person[s] authorized by the certifier, certifies the regional origin of potatoes grown in the State of Idaho and certifies that those potatoes conform to grade, size, weight, color, shape, cleanliness, variety, internal defect, external defect, maturity and residue level standards promulgated by the certifier."
Example 3
Mark
Specimen
Goods: Cheese
Certification Statement: "The certification mark is used upon the goods to indicate that the same has been manufactured from sheep’s milk only, and has been cured in the nature caves of the community of Roquefort, Department of Aveyron, France." See TMEP §1306.05(b)(i) regarding the preferred form and content of the certification statement.
Example 4
Mark
Specimen
Goods: Oranges; grapefruit, tangerines, orange juice; grapefruit juice; orange juice concentrate and grapefruit juice concentrate, both frozen and unfrozen; and citrus salad
Certification Statement: "The mark certifies that the goods bearing the mark either consist of citrus fruit grown in the state of Florida, under specified standards, or are processed or manufactured from or with such fruit." See TMEP §1306.05(b)(i) regarding the preferred form and content of the certification statement.
Example 5
Mark: RECIOTO (standard characters)
Specimen
Goods: Alcoholic beverages, namely, wine
Certification Statement: "The certification mark, as used by persons authorized by the certifier, certifies a wine produced in the Valpolicella region of Italy."
Example 6
Mark
Specimen
Goods: Butter and cheese
Certification Statement: "The mark certifies that the goods are produced in Denmark and meet standards and quality established by applicant." See TMEP §1306.05(b)(i) regarding the preferred form and content of the certification statement
Example 7
Mark
Specimen
Services: "Retirement communities in Texas, development of retirement communities in Texas, and retirement homes in Texas"
Certification Statement: "The certification mark, as used or intended to be used by persons authorized by the certifier, certifies that the services provided originate in the State of Texas, and meet community, tax, housing, safety, employment, healthcare, public transportation, educational, leisure, and recreational standards as set by the certifier."
Example 8
Mark
Specimen
Goods: Tea
Certification Statement: "The certification mark, as used by persons authorized by certifier, certifies that a blend of tea contains at least sixty percent (60%) tea originating in the Darjeeling region of India, and that the blend meets other specifications established by the certifier." See TMEP §1306.05(b)(i) regarding the preferred form and content of the certification statement.
Example 9
Mark: VIDALIA (typed drawing)
Specimen
Goods: Fresh onions
Certification Statement: "The certification mark is intended to be used by persons authorized by certifier, and will certify that the goods in connection with which it is used are yellow Granex type onions and are grown by authorized growers within the Vidalia onion production area in Georgia as defined in the Georgia Vidalia onion act of 1986."
When the facts in the application are insufficient to provide an adequate basis for determining whether the mark is functioning as a trademark or service mark or as a certification mark, the examining attorney should ask, pursuant to 37 C.F.R. §2.61(b), for further explanation as to the activities in which the mark is or will be used and for the disclosure of facts regarding the mark to enable a proper examination to be made. The manner in which the activities associated with a mark are conducted is the main factor that determines the type of mark. The conduct of parties involved with the mark evidences the relationship between the parties, and the responsibilities of each to the goods or services and to the mark.
A collective trademark or collective service mark indicates origin of goods or services in the members of a group. A collective membership mark indicates membership in an organization. A certification mark certifies characteristics or features of goods or services. See Am. Speech-Language-Hearing Ass’n v. Nat'l Hearing Aid Soc'y, 224 USPQ 798, 806-808 (TTAB 1984) , for a discussion of the distinction between collective marks and certification marks.
Both collective marks and certification marks are used by more than one person, but only the users of collective marks are related to each other through membership in a collective group. The collective mark is used by all members and the collective organization holds the title to the collective mark for the benefit of all members.
A certification mark may be used to certify that the work or labor on the goods or services was performed by a member of a union or other organization. See TMEP §1306.04(d)(ii). Used in this manner, the certification mark certifies not that the user is a member of an organization but that the labor on the user’s goods or services was performed by a member of an organization.
An application to register a mark that is used or intended to be used by members of a collective group must be scrutinized carefully to determine the function of the mark. If the mark is used or intended to be used by the members as a trademark on goods they produce or as a service mark for services they perform, then the mark is a collective trademark or collective service mark. If the mark is used or intended to be used by members to indicate membership in an organization, then the mark is a collective membership mark. However, if use of the mark is or will be authorized only under circumstances designated by the organization to certify characteristics or features of the goods or services, the mark is a certification mark.
If a certification mark application is filed but the mark is actually another type of mark, or if an application for another type of mark is filed but it is actually a certification mark, the application may be amended to request registration as the proper type of mark. Also, the application should be re-executed because some essential allegations differ for the different types of marks.
Applications for certification marks, collective marks, and collective membership marks cannot be filed using TEAS Plus. 37 C.F.R. §2.22(d). Therefore, in a TEAS Plus application, an additional TEAS Plus processing fee will be required if the mark is amended to a collective trademark or collective service mark, collective membership mark, or certification mark. See TMEP §819.01(a).
See TMEP §1306.04(d)(i) regarding appearance of a trademark or service mark in a certification mark or on a specimen, §1306.04(b)(ii) regarding related company use, and §1306.04(b)(iii) regarding use under a patent license.
The examining attorney should take care to ascertain the correct type of mark during examination, and to require amendment if necessary. If a registration is issued for the wrong type of mark, it may be subject to cancellation. See Am. Speech-Language-Hearing Ass’n v. Nat’l Hearing Aid Soc’y, 224 USPQ 798 (TTAB 1984) ; Nat’l Trailways Bus Sys. v. Trailway Van Lines, Inc., 269 F. Supp. 352, 155 USPQ 507 (E.D.N.Y. 1965) .
