1304 Collective Membership Marks
1304.01 History of Membership Marks
Section 4 of the Trademark Act of 1946, 15 U.S.C. §1054, provides that collective marks shall be registrable by persons exercising legitimate control over their use, even though not possessing an industrial or commercial establishment, and the definition of a collective mark in §45, 15 U.S.C. §1127, encompasses marks that indicate membership in a union, association, or other organization.
The Trademark Act of 1905 prohibited registration by anyone of symbols of collective groups. The Act of 1946, however, contains no prohibition and thus permits registration by the owners of collective marks, including those used to indicate membership.
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 wish to protect their marks to prevent their 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.
1304.02 Purpose of Membership Mark
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 Texas v. Constitution Ass’n USA, 152 USPQ 443 (TTAB 1966) (holding cancellation of collective mark registration proper since mark was not being used to indicate membership in registrant).
1304.03 Use of Membership Mark Is by Members
Registration of a membership mark 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 members. See In re Triangle Club of Princeton University, 138 USPQ 332 (TTAB 1963) (collective membership mark registration denied because specimen did not show use of mark by members). See also TMEP §1304.08(e).
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 (see TMEP §1303.01), but the same mark may not be used both as a membership mark and as a certification mark. TMEP §1306.05(a).
1304.04 Who May Apply to Register Membership Mark
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 and, therefore, owns or is entitled to use the mark. 15 U.S.C. §1054; In re Stencel Aero Engineering Corp., 170 USPQ 292 (TTAB 1971). Application may not be made by a mere member. Before a registration may be issued, however, the mark must have been used by members. See American Speech-Language-Hearing Ass’n v. National Hearing Aid Society, 224 USPQ 798, 806 (TTAB 1984); .
1304.05 Who May Own Membership Mark
The owner of a collective membership mark is normally the collective organization whose members use the mark. 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 Engineering Corp., 170 USPQ 292 (TTAB 1971).
1304.06 Nature of the Collective Group
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."
In order to apply to register a collective membership mark, the collective organization who owns the mark must be a person capable of suing and being sued in a court of law. See 15 U.S.C. §1127. See TMEP §§803.01 et seq.
The persons who compose a collective group may be either natural or juristic persons.
1304.07 Character of the Mark
A collective membership mark may be a letter or letters, a word or 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 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 pins or rings. See TMEP §§1304.03 and 1304.08(e) regarding use of membership marks and acceptable specimens.
1304.08 Examination of Collective Membership Mark
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 Industries Inc. v. Bane-Clene Corp., 35 USPQ2d 1832, 1837 (TTAB 1994); In re Association of Energy Engineers, Inc., 227 USPQ 76, 77 (TTAB 1985). However, use and ownership requirements are slightly different due to the nature of collective membership marks.
1304.08(a) Matter that Does Not Function as a Membership Mark
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), which held that Greek letter abbreviations are not collective membership marks indicating membership in Greek letter societies simply because some people apply them to athletic jerseys, and In re Mountain Fuel Supply Co., 154 USPQ 384 (TTAB 1967), which held that the design on a jewelry pin indicated longevity rather than membership in an organization. If a proposed mark does not function as a mark indicating membership, the examining attorney should refuse registration under §§1, 2, 4, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, 1054, and 1127. See TMEP §1304.08(a)(i) as to degrees or titles.
1304.08(a)(i) Degree or Title Designations Contrasted to Membership Marks
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 International Institute 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 entity). See also In re National Society of Cardiopulmonary Technologists, Inc., 173 USPQ 511 (TTAB 1972). Cf. In re Thacker, 228 USPQ 961 (TTAB 1986); In re National Ass’n of Purchasing Management, 228 USPQ 768 (TTAB 1986); In re Mortgage Bankers Ass’n of America, 226 USPQ 954 (TTAB 1985).
If the proposed mark functions simply as a degree or title, the examining attorney should refuse registration under §§1, 2, 4, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, 1054, and 1127, on the ground that the matter does not function as a membership mark. See TMEP §1304.08(a).
1304.08(b) Likelihood of Confusion
Likelihood of confusion may arise from the contemporaneous use 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 National 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); Boise Cascade Corp. v. Mississippi Pine Manufacturers Assn., 164 USPQ 364 (TTAB 1969).
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 which happen to be 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. In re Code Consultants Inc., 60 USPQ2d 1699, 1701 (TTAB 2001).
1304.08(c) Classification in Membership Mark Applications
Section 1 and §44 Applications. In applications under §§1 and 44 of the Trademark Act, collective membership marks are classified in Class 200. 37 C.F.R. §6.4. 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 as such 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 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 Class 200.
Section 66(a) Applications. In a §66(a) application (i.e., a request for extension of protection of an international registration to the United States under the Madrid Protocol), classification is determined by the International Bureau of the World Intellectual Property Organization ("IB"), in accordance with the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks ("Nice Agreement"). Class 200 comes from the old United States classification system (see TMEP §1401.02) and is not included in the international classification system. In a §66(a) application, the international classification of goods/services cannot be changed from the classification given to the goods/services by the IB. See TMEP §1401.03(d). Accordingly, if the mark in a §66(a) application is identified as a collective membership mark, or appears to be a collective membership mark, the United States Patent and Trademark Office ("USPTO") will not reclassify it into Class 200. However, the examining attorney must ensure that the applicant complies with all other United States requirements for collective membership marks, regardless of the classification chosen by the IB.
1304.08(d) Identifications in Membership Mark Applications
An identification of goods or services is not appropriate in connection with a collective membership mark. The purpose of a collective membership mark is to indicate membership in an organization. Appropriate 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, e.g., "indicating membership in an organization of computer professionals."
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.
1304.08(e) Specimens of Use for Membership Marks
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 International Ass’n for Enterostomal Therapy, Inc., 218 USPQ 343 (TTAB 1983); In re Triangle Club of Princeton University, 138 USPQ 332 (TTAB 1963). See also TMEP §1304.03.
The most common type of specimen is a membership card. Membership certificates are also acceptable. The applicant may submit 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 University, 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 Institute for Certification of Computer Professionals, 219 USPQ 372 (TTAB 1983) (in view of contradictory evidence in record, lapel pin 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 pin did not indicate membership in organization, but merely showed length of service).
Shoulder, sleeve, pocket, or similar patches, 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.
1304.08(f) Special Elements of Applications for Collective Membership Marks
1304.08(f)(i) Exercise of Control
An application to register a collective membership mark must accurately convey the use or intended use of the mark with appropriate language, as follows.
In an application based on use in commerce under §1(a) of the Trademark Act, the applicant must assert that the applicant is exercising legitimate control over the use of the mark in commerce by its members.
In an application based on §1(b), §44, or §66(a) of the Act, the applicant must assert that the applicant has a bona fide intention to exercise legitimate control over the use of the mark in commerce by its members. In a §1(b) application, before the mark can register, the applicant must file an allegation of use alleging that the applicant is exercising legitimate control over the use of the mark in commerce by its members.
1304.08(f)(ii) Manner of Control
In addition to specifying and containing all elements that are applicable for trademarks, an application for registration of a collective mark under §1(a) of the Act must specify the class of persons entitled to use the mark, 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).
In addition to specifying and containing all elements that are applicable for trademarks, an application for registration of a collective mark under §1(b), §44, or §66(a) of the Act must specify the class of persons intended to be entitled to use the mark, indicating what their relationship to the applicant will be, and the nature of the control the applicant intends to exercise over the use of the mark. 37 C.F.R. §2.44(b).
The following language may be used for the above purpose:
Applicant controls (or, if the application is being filed under §1(b), §44, or §66(a), applicant intends to control) the use of the mark by the members in the following manner: [specify].
A statement that the applicant’s bylaws or other written provisions specify the manner of control, or intended manner of control, will be sufficient.
1304.08(f)(iii) Use by Members Indicated in Dates-of-Use Clause
When setting out dates of use of a collective membership mark, the application or allegation of use must state that the mark was first used by members 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.