1306.05(a) Same Mark Not Registrable as Certification Mark and as Any Other Type of Mark
Trademarks or service marks and certification marks are different and distinct types of marks, which serve different purposes. 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.
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 §1306.07 regarding §14(5) of the Act. Thus, if a party owns a registration as a trademark or service mark for any goods or services, he or she may not register the same mark as a certification mark for those goods or services. Conversely, a registration as a certification mark precludes registration of the same mark by its owner as a trademark or service mark for any goods or services to which the certification mark applies. 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 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. Variations in wording or design, even though small, can, if meaningful, create different marks. 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), in which the mark 88OPEN COMPATIBILITY CERTIFIED and design was found 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, 1306.06(c), and 1306.09.