1306.06(f) Special Elements of Certification Mark Applications
1306.06(f)(i) Statement of What the Mark Certifies
The application must contain a statement of the characteristic, standard, or other feature that is certified or intended to be certified by the mark. The statement should begin with wording, "The certification mark, as used (or intended to be used) by authorized persons, certifies (or is intended to certify) . . . ." See 37 C.F.R. §2.45.
All of the characteristics or features that the mark certifies should be included. A mark does not have to be limited to certifying a single characteristic or feature.
The characteristics or features that the mark certifies should be explained in reasonable detail, so that they are clear. 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, "quality" would not inform the public of the meaning of the certification where the characteristic being certified is limited, for example, to the strength of a material, or the purity of a strain of seed.
The statement of certification 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.
The statement of what the mark certifies is separate from the identification of goods and/or services.
1306.06(f)(ii) Standards
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. 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. §2.45(b).
The standards do not have to be original with 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."
1306.06(f)(iii) Exercise of Control
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 certification mark in commerce. 37 C.F.R. §2.45(a).
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, and is entitled, to exercise legitimate control over the use of the certification mark in commerce. See 37 C.F.R. §2.45(b). In a §1(b) application, before the mark can register, the applicant must file an allegation of use under 15 U.S.C. §1051(c) or 15 U.S.C. §1051(d), alleging that the applicant is exercising legitimate control over the use of the certification mark in commerce.
If there is doubt as to the existence or nature of such control by the applicant, the examining attorney should 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).
1306.06(f)(iv) Use by Others Indicated in Dates-of-Use Clause
When specifying the dates of first use, the applicant must indicate that the certification mark was first used under the authority of the applicant, or by persons authorized by the applicant, because a certification mark is not used by the applicant itself.
1306.06(f)(v) Statement that Mark is Not Used by Applicant
The application must contain a statement that the applicant is not engaged in (or, if the application is filed under §1(b), §44, or §66(a) of the Act, will not engage in) the production or marketing of the goods or services to which the mark is applied. See 37 C.F.R. §2.45. This statement does not have to be verified, and can, therefore, be entered by examiner’s amendment.
1306.06(f)(vi) Amendment to Different Type of Mark
If an application is filed to register a mark as a certification mark and the mark is actually another type of mark, or if an application is filed to register a mark as another type when it is actually a certification mark, the application may be amended to request registration as the proper type of mark. It is preferred that the applicant completely rewrite the application to provide a clean copy, rather than amend the original documents. 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(c). Therefore, in a TEAS Plus application, an additional TEAS Plus processing fee will be required if the mark is amended to a collective, collective membership, or certification mark. See TMEP §819.01(a).