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.