Chapter 1300 - Service Marks, Collective Marks, and Certification Marks

The Trademark Act of 1946 provides for registration of trademarks, service marks, collective trademarks, and service marks, collective membership marks, and certification marks. 15 U.S.C. §§1051, 1053, and 1054. The language of this Manual is generally directed to trademarks. Procedures for trademarks usually apply to other types of marks, unless otherwise stated. This chapter is devoted to special circumstances relating to service marks, collective marks, collective membership marks, and certification marks.

1301    Service Marks

Section 45 of the Trademark Act, 15 U.S.C. §1127, defines "service mark" as follows:

The term "service mark" means any word, name, symbol, or device, or any combination thereof--

  • (1) used by a person, or
  • (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this [Act],

to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown.  Titles, character names, and other distinctive features of radio or television programs may be registered as service marks notwithstanding that they, or the programs, may advertise the goods of the sponsor.

Therefore, to be registrable as a service mark, the asserted mark must function both to identify the services recited in the application and distinguish them from the services of others, and to indicate the source of the recited services, even if that source is unknown.  The activities recited in the identification must constitute services as contemplated by the Trademark Act.  See TMEP §§1301.01 et seq.

If a proposed mark does not function as a service mark for the services recited, or if the applicant is not rendering a registrable service, the statutory basis for refusal of registration on the Principal Register is §§1, 2, 3, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, 1053, and 1127.

See TMEP §1303 concerning collective service marks.

1301.01   What Is a Service?

A service mark can only be registered for activities that constitute services as contemplated by the Trademark Act.  15 U.S.C. §§1051, 1052, 1053, and 1127.  The Trademark Act defines the term "service mark," but it does not define what constitutes a service.  Many activities are obviously services (e.g., dry cleaning, banking, shoe repairing, transportation, and house painting).

1301.01(a)   Criteria for Determining What Constitutes a Service

The following criteria have evolved for determining what constitutes a service:  (1) a service must be a real activity; (2) a service must be performed to the order of, or for the benefit of, someone other than the applicant; and (3) the activity performed must be qualitatively different from anything necessarily done in connection with the sale of the applicant’s goods or the performance of another service.  In re Canadian Pacific Ltd., 754 F.2d 992, 224 USPQ 971 (Fed. Cir. 1985); In re Betz Paperchem, Inc., 222 USPQ 89 (TTAB 1984); In re Integrated Resources, Inc., 218 USPQ 829 (TTAB 1983); In re Landmark Communications, Inc., 204 USPQ 692 (TTAB 1979).

1301.01(a)(i)   Performance of a Real Activity

A service must be a real activity.  A mere idea or concept, e.g., an idea for an accounting organizational format or a recipe for a baked item, is not a service.  Similarly, a system, process, or method is not a service.  In re Universal Oil Products Co., 476 F.2d 653, 177 USPQ 456 (C.C.P.A. 1973); In re Citibank, N.A., 225 USPQ 612 (TTAB 1985); In re Scientific Methods, Inc., 201 USPQ 917 (TTAB 1979); In re McCormick & Co., Inc., 179 USPQ 317 (TTAB 1973).  See TMEP §1301.02(e) regarding marks that identify a system or process.

The commercial context must be considered in determining whether a real service is being performed.  For example, at one time the activities of grocery stores, department stores, and similar retail stores were not considered to be services.  However, it has long been recognized that gathering various products together, making a place available for purchasers to select goods, and providing any other necessary means for consummating purchases constitutes the performance of a service.

1301.01(a)(ii)   For the Benefit of Others

To be a service, an activity must be primarily for the benefit of someone other than the applicant.  While an advertising agency provides a service when it promotes the goods or services of its clients, a company that promotes the sale of its own goods or services is doing so for its own benefit rather than rendering a service for others.  In re Reichhold Chems., Inc., 167 USPQ 376 (TTAB 1970); see TMEP §1301.01(b)(i).  Similarly, a company that sets up a personnel department to employ workers for itself is merely facilitating the conduct of its own business, while a company whose business is to recruit and place workers for other companies is performing employment agency services.

The controlling question is who primarily benefits from the activity for which registration is sought.  If the activity is done primarily for the benefit of others, the fact that applicant derives an incidental benefit is not fatal.  In re Venture Lending Assocs., 226 USPQ 285 (TTAB 1985).  On the other hand, if the activity primarily benefits applicant, it is not a registrable service even if others derive an incidental benefit.  In re Dr. Pepper Co., 836 F.2d 508, 5 USPQ2d 1207 (Fed. Cir. 1987) (contest promoting applicant’s goods not a service, even though benefits accrue to winners of contest); City Nat’l Bank v. OPGI Mgmt. GP Inc./Gestion OPGI Inc., 106 USPQ2d 1668, 1676 (TTAB 2013) (finding that intranet website was used solely for internal purposes and that respondent was primary beneficiary); In re Alaska Northwest Publ'g Co., 212 USPQ 316, 317 (TTAB 1981) (stating that "[t]he that the activities and operations associated with the production, advertising or sale of the product may be indirectly beneficial to purchasers of the product is immaterial to the question of registrability of the mark as a service mark").

Collecting information for the purpose of publishing one’s own periodical is not a service because it is done primarily for the applicant’s benefit rather than for the benefit of others.  See TMEP §1301.01(b)(iii).

Offering shares of one’s own stock for investment is not a service because these are routine corporate activities that primarily benefit the applicant.  See TMEP §1301.01(b)(iv).  On the other hand, offering a retirement income plan to applicant’s employees was found to be a service, because it primarily benefits the employees.  Am. Int’l Reins. Co. v. Airco, Inc., 570 F.2d 941, 197 USPQ 69 (C.C.P.A. 1978), cert. denied 439 U.S. 866, 200 USPQ 64 (1978).

Licensing intangible property has been recognized as a separate service, analogous to leasing or renting tangible property, that primarily benefits the licensee.  In re Universal Press Syndicate, 229 USPQ 638 (TTAB 1986).

See TMEP §1301.01(b)(vi) regarding conducting clinical trials.

1301.01(a)(iii)   Sufficiently Distinct from Activities Involved in Provision of Goods or Performance of Other Services

In determining whether an activity is sufficiently separate from an applicant’s principal activity to constitute a service, the examining attorney must first ascertain the nature of the applicant’s principal activity under the mark in question (i.e., the performance of a service or the provision of a tangible product).  The examining attorney must then determine whether the activity identified in the application is in any material way a different kind of economic activity than what any provider of that particular product or service normally provides.  In re Landmark Commc'ns, Inc., 204 USPQ 692, 695 (TTAB 1979). The identification of goods/services, specimen of use, or other information in the application record may indicate whether the activity identified in the application is a separately registrable service. If necessary, the examining attorney should request additional information, pursuant to 37 C.F.R. §2.61(b), to determine if the activity constitutes a service as contemplated by the Trademark Act. See TMEP §814.  

For example, operating a grocery store is clearly a service.  Bagging groceries for customers is not considered a separately registrable service, because this activity is normally provided to and expected by grocery store customers, and is, therefore, merely ancillary to the primary service.

Providing general information or instructions as to the purpose and uses of applicant’s goods is merely incidental to the sale of goods, not a separate consulting service.  See TMEP §1301.01(b)(v).

Conducting clinical trials for one’s own pharmaceuticals is generally considered to be a normally expected and routine activity that is not separately registrable from the principal activity of providing the goods themselves because the U.S. Food and Drug Administration legally requires clinical trials as a prerequisite of pharmaceutical approval. See TMEP §1301.01(b)(vi).

Conducting a contest to promote the sale of one’s own goods or services is usually not considered a service, because it is an ordinary and routine promotional activity.  See TMEP §1301.01(b)(i).

While the repair of the goods of others is a recognized service, an applicant’s guarantee of repair of its own goods generally does not constitute a separate service, because that activity is ancillary to the principal activity of providing the goods and normally expected in the trade.  See TMEP §1301.01(b)(ii).

However, the fact that an activity is ancillary to a principal service or to the sale of goods does not in itself mean that it is not a separately registrable service.  The statute makes no distinction between primary, incidental, or ancillary services.  In re Universal Press Syndicate, 229 USPQ 638 (TTAB 1986) (licensing cartoon character found to be a separate service that was not merely incidental or necessary to larger business of magazine and newspaper cartoon strip); In re Betz Paperchem, Inc., 222 USPQ 89 (TTAB 1984) (chemical manufacturer’s feed, delivery, and storage of liquid chemical products held to constitute separate service, because applicant’s activities extend beyond routine sale of chemicals); In re Congoleum Corp., 222 USPQ 452 (TTAB 1984) (awarding prizes to retailers for purchasing applicant’s goods from distributors held to be sufficiently separate from the sale of goods to constitute a service rendered to distributors, because it confers a benefit on distributors that is not normally expected by distributors in the relevant industry); In re C.I.T. Fin. Corp., 201 USPQ 124 (TTAB 1978) (computerized financial data-processing services rendered to applicant’s loan customers held to be a registrable service, since it provides benefits that were not previously available, and is separate and distinct from the primary service of making consumer loans); In re U.S. Home Corp. of Tex., 199 USPQ 698 (TTAB 1978) (planning and laying out residential communities for others was found to be a service, because it goes above and beyond what the average individual would do in constructing and selling a home on a piece of land that he or she has purchased); In re John Breuner Co., 136 USPQ 94 (TTAB 1963) (credit services provided by a retail store constitute a separate service, since extension of credit is neither mandatory nor required in the operation of a retail establishment).

The fact that the activities are offered only to purchasers of the applicant’s primary product or service does not necessarily mean that the activity is not a service.  In re Otis Eng’g Corp., 217 USPQ 278 (TTAB 1982) (quality control and quality assurance services held to constitute a registrable service even though the services were limited to applicant’s own equipment); In re John Breuner Co., 136 USPQ at 95 (credit services offered only to customers of applicant’s retail store found to be a service).

The fact that the services for which registration is sought are offered to a different class of purchasers than the purchasers of applicant’s primary product or service is also a factor to be considered.  In re Forbes Inc., 31 USPQ2d 1315 (TTAB 1994); In re Home Builders Ass’n of Greenville, 18 USPQ2d 1313 (TTAB 1990).

Another factor to be considered in determining whether an activity is a registrable service is the use of a mark different from the mark used on or in connection with the applicant’s principal product or service.  See In re Mitsubishi Motor Sales of Am. Inc., 11 USPQ2d 1312, 1314-15 (TTAB 1989); In re Universal Press Syndicate, 229 USPQ at 640; In re Congoleum Corp., 222 USPQ at 453-54; In re C.I.T. Fin. Corp., 201 USPQ at 126.  However, an activity that is normally expected or routinely done in connection with sale of a product or another service is not a registrable service even if it is identified by a different mark.  In re Dr. Pepper Co., 836 F.2d 508, 5 USPQ2d 1207 (Fed. Cir. 1987); In re Television Digest, Inc., 169 USPQ 505 (TTAB 1971).  Moreover, the mark identifying the ancillary service does not have to be different from the mark identifying the applicant’s goods or primary service.  Ex parte Handmacher-Vogel, Inc., 98 USPQ 413 (Comm’r Pats. 1953).

1301.01(b)   Whether Particular Activities Constitute "Services"

1301.01(b)(i)   Contests and Promotional Activities

It is well settled that the promotion of one’s own goods is not a service.  In re Radio Corp. of America, 205 F.2d 180, 98 USPQ 157 (C.C.P.A. 1953) (record manufacturer who prepares radio programs primarily designed to advertise and sell records is not rendering a service); In re SCM Corp., 209 USPQ 278 (TTAB 1980) (supplying merchandising aids and store displays to retailers does not constitute separate service); Ex parte Wembley, Inc., 111 USPQ 386 (Comm’r Pats. 1956) (national advertising program designed to sell manufacturer’s goods to ultimate purchasers is not service to wholesalers and retailers, because national product advertising is normally expected of manufacturers of nationally distributed products, and is done in furtherance of the sale of the advertised products).

However, an activity that goes above and beyond what is normally expected of a manufacturer in the relevant industry may be a registrable service, even if it also serves to promote the applicant’s primary product or service.  In re U.S. Tobacco Co., 1 USPQ2d 1502 (TTAB 1986) (tobacco company’s participating in auto race held to constitute an entertainment service, because participating in an auto race is not an activity that a seller of tobacco normally does); In re Heavenly Creations, Inc., 168 USPQ 317 (TTAB 1971) (applicant’s free hairstyling instructional parties found to be a service separate from the applicant’s sale of wigs, because it goes beyond what a seller of wigs would normally do in promoting its goods); Ex parte Handmacher-Vogel, Inc., 98 USPQ 413 (Comm’r Pats. 1953) (clothing manufacturer’s conducting women’s golf tournaments held to be a service, because it is not an activity normally expected in promoting the sale of women’s clothing).

Conducting a contest to promote the sale of one’s own goods is usually not considered a service, even though benefits may accrue to the winners of the contest.  Such a contest is usually ancillary to the sale of goods or services, and is nothing more than a device to advertise the applicant’s products or services.  In re Dr. Pepper Co., 836 F.2d 508, 5 USPQ2d 1207 (Fed. Cir. 1987); In re Loew’s Theatres, Inc., 179 USPQ 126 (TTAB 1973); In re Johnson Publishing Co., Inc., 130 USPQ 185 (TTAB 1961).  However, a contest that serves to promote the sale of the applicant’s goods may be registrable if it operates in a way that confers a benefit unrelated to the sale of the goods, and the benefit is not one that is normally expected of a manufacturer in that field.  In re Congoleum Corp., 222 USPQ 452 (TTAB 1984).

A mark identifying a beauty contest is registrable either as a promotional service, rendered by the organizer of the contest to the businesses or groups that sponsor the contest, or as an entertainment service.  In re Miss American Teen-Ager, Inc., 137 USPQ 82 (TTAB 1963).  See TMEP §1402.11.

See TMEP §1301.01(b)(iii) regarding the providing of advertising space in a periodical.

1301.01(b)(ii)   Warranty or Guarantee of Repair

While the repair of the goods of others is a recognized service, an applicant’s guarantee of repair of its own goods does not normally constitute a separate service, because that activity is ancillary to and normally expected in the trade.  In re Orion Research Inc., 669 F.2d 689, 205 USPQ 688 (C.C.P.A. 1980) (guarantee of repair or replacement of applicant’s goods that is not separately offered, promoted, or charged for is not a service); In re Lenox, Inc., 228 USPQ 966 (TTAB 1986) (lifetime warranty that is not separately offered, promoted, or charged for is not a service).

However, a warranty that is offered or charged for separately from the goods, or is sufficiently above and beyond what is normally expected in the industry, may constitute a service.  In re Mitsubishi Motor Sales of America, Inc., 11 USPQ2d 1312 (TTAB 1989) (comprehensive automobile vehicle preparation, sales, and service program held to be a service, where applicant’s package included features that were unique and would not normally be expected in the industry); In re Sun Valley Waterbeds Inc., 7 USPQ2d 1825 (TTAB 1988) (retailer’s extended warranty for goods manufactured by others held to be a service, where the warranty is considerably more extensive than that offered by others); In re Otis Engineering Corp., 217 USPQ 278 (TTAB 1982) (non-mandatory quality control and quality assurance services held to constitute a registrable service even though the services were limited to applicant’s own equipment, where the services were separately charged for, the goods were offered for sale without services, and the services were not merely a time limited manufacturer’s guarantee).

Providing warranties to consumers and retailers on power-operated outdoor products was held to be a registrable service where the warranty covered goods manufactured by applicant but sold under the marks of third-party retailers.  Noting that none of applicant’s trademarks appeared on the goods or identified applicant as the source of the goods, the Board found that the third-party retailers rather than applicant would be regarded as the manufacturer of the products.  Because purchasers would make a distinction between the provider of the warranty and the provider of the goods, applicant’s warranty service would not be regarded as merely an inducement to purchase its own goods.  The Board also noted that applicant’s activities constitute a service to the third-party retailers, because applicant’s provision of warranties avoids the need of the retailer itself to provide a warranty.  In re Husqvarna Aktiebolag, 91 USPQ2d 1436 (TTAB 2009).

When an applicant offers a warranty on its own goods or services, the identification of services must include the word "extended," or similar wording, to indicate that the warranty is "qualitatively different" from a warranty normally provided ancillary to the sale of the applicant’s goods/services.  When an applicant offers a warranty on third-party goods, the identification of services must so indicate.  See In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541 (Fed. Cir. 2007) (affirming that the USPTO has the discretion to determine whether and how a trademark registration should include a more particularized identification of the goods for which a mark is used).

The identification of services must also specify the item(s) that the extended warranty covers, e.g., "providing extended warranties on television sets." Id.

Extended warranty services are classified in Class 36.

1301.01(b)(iii)   Publishing One’s Own Periodical

The publication of one’s own periodical is not a service, because it is done primarily for applicant’s own benefit and not for the benefit of others.  In re Billfish Int’l Corp., 229 USPQ 152 (TTAB 1986) (activities of collecting, distributing, and soliciting information relating to billfishing tournaments for a periodical publication not a separate service, because these are necessary preliminary activities that a publisher must perform prior to publication and sale of publication); In re Alaska Northwest Publishing Co., 212 USPQ 316 (TTAB 1981) (title of magazine section not registrable for magazine publishing services, because the activities and operations associated with designing, producing, and promoting applicant’s own product are ancillary activities that would be expected by purchasers and readers of any magazine); In re Landmark Communications, Inc., 204 USPQ 692 (TTAB 1979) (title of newspaper section not registrable as service mark for educational or entertainment service, because collected articles, stories, reports, comics, advertising, and illustrations are indispensable components of newspapers without which newspapers would not be sold); In re Television Digest, Inc., 169 USPQ 505 (TTAB 1971) (calculating advertising rates for a trade publication not a registrable service, because this is an integral part of the production or operation of any publication).

However, providing advertising space in one’s own periodical may be a registrable service, if the advertising activities are sufficiently separate from the applicant’s publishing activities.  In re Forbes Inc., 31 USPQ2d 1315 (TTAB 1994) ("providing advertising space in a periodical" held to be a registrable service, where the advertising services were rendered to a different segment of the public under a different mark than the mark used to identify applicant’s magazines); In re Home Builders Ass’n of Greenville, 18 USPQ2d 1313 (TTAB 1990) (real estate advertising services rendered by soliciting advertisements and publishing a guide comprising the advertisements of others held to be a registrable service, where advertising was found to be the applicant’s primary activity, and the customers who received the publication were not the same as those to whom the advertising services were rendered).

1301.01(b)(iv)   Soliciting Investors

Offering shares of one’s own stock for investment and reinvestment, and publication of reports to one’s own shareholders, are not services, because these are routine corporate activities that primarily benefit the applicant.  In re Canadian Pacific Ltd., 754 F.2d 992, 224 USPQ 971 (Fed. Cir. 1985).  Similarly, soliciting investors in applicant’s own partnership is not a registrable service.  In re Integrated Resources, Inc., 218 USPQ 829 (TTAB 1983) (syndicating investment partnerships did not constitute a service within the meaning of the Trademark Act, because there was no evidence that the applicant was in the business of syndicating the investment partnerships of others; rather, the applicant partnership was engaged only in syndication of interests in its own organization).  On the other hand, investing the funds of others is a registrable service that primarily benefits others.  In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985) (investment of funds of institutional investors and providing capital for management found to be a registrable service).

In Canadian Pacific, 224 USPQ at 974, the court noted that since shareholders are owners of the corporation, an applicant who offers a reinvestment plan to its stockholders is essentially offering the plan to itself and not to a segment of the buying public.  The court distinguished American Int’l Reinsurance Co., Inc. v. Airco, Inc., 570 F.2d 941, 197 USPQ 69 (C.C.P.A. 1978), cert. denied 439 U.S. 866, 200 USPQ 64 (1978), in which offering an optional retirement plan to applicant’s employees was found to be a registrable service that primarily benefits the employees.

1301.01(b)(v)   Informational Services Ancillary to the Sale of Goods

Providing general information or instructions as to the purpose and uses of applicant’s goods is merely incidental to the sale of goods, not a separate informational service.  In re Moore Business Forms Inc., 24 USPQ2d 1638 (TTAB 1992) (paper manufacturer who rates the recycled content and recyclability of its own products is merely providing information about its goods, not rendering a service to others); In re Reichhold Chemicals, Inc., 167 USPQ 376 (TTAB 1970) ("promoting the sale and use of chemicals" is not a registrable service, where applicant is merely providing "technical bulletins" that contain information about its own products); Ex parte Armco Steel Corp., 102 USPQ 124 (Comm’r Pats. 1954) (analyzing the needs of customers is not registrable as a consulting service, because it is an ordinary activity that is normally expected of a manufacturer selling goods); Ex parte Elwell-Parker Electric Co., 93 USPQ 229 (Comm’r Pats. 1952) (providing incidental instructions on the efficient use of applicant’s goods not a service).  However, an applicant’s free hairstyling instructional "parties" were found to be a service, because conducting parties goes beyond what a seller of wigs would normally do in promoting its goods.  In re Heavenly Creations, Inc., 168 USPQ 317 (TTAB 1971).

1301.01(b)(vi)   Clinical Trials

Because conducting clinical trials necessary for governmental approval of one’s own pharmaceuticals generally is a normally expected, routine, and legally required activity in connection with the sale of pharmaceuticals, it is not a separate registrable service done primarily for the benefit of others. Cf. In re Dr Pepper Co., 836 F.2d 508, 509, 5 USPQ2d 1207, 1208 (Fed. Cir. 1987) ("[I]t has become a settled principle that the rendering of a service which is normally ‘expected or routine’ in connection with the sale of one's own goods is not a registrable service whether denominated by the same or a different name from the trademark for its product."); In re Landmark Commc’ns, Inc., 204 USPQ 692, 695 (TTAB 1979) (noting that "to be separately recognizable, as services, an applicant’s activity must be qualitatively different from anything necessarily done in connection with the sale of goods").

Pharmaceutical companies are legally required to conduct clinical trials before pharmaceutical preparations can be approved for human use. See U.S. Food & Drug Admin., What is the Approval Process for a New Prescription Drug?, http://www.fda.gov/AboutFDA/Transparency/Basics/ucm194949.htm (accessed Sept. 2, 2014); see also 21 C.F.R. §312.21 (explaining the three phases of clinical trials for a previously untested drug). An activity or process that is necessary or legally required for an applicant to be able to provide the main product or service is not separable from the main product or service. See In re Orion Research, Inc., 523 F.2d 1398, 1400, 187 USPQ 485, 486-87 (C.C.P.A. 1975) (holding a warranty to repair or replace one’s own merchandise to be a normally expected and legally required duty of a merchandiser and not a separate and registrable service); In re Television Digest, Inc., 169 USPQ 505, 508 (TTAB 1971) (noting that providing a schedule of advertising rates is necessary for publishing a directory or magazine and is not a separate service). Therefore, since conducting a clinical trial is a legally required prerequisite to pharmaceutical sales, when this service is conducted by a pharmaceutical company for its own goods, it is an expected and mandated activity not separately registrable from the principal activity of providing the pharmaceutical preparations themselves.

Accordingly, when registration is sought for a mark used in connection with the conducting of pharmaceutical clinical trials, the examining attorney must ascertain whether the services are provided for the pharmaceuticals of others. If the record is unclear, the examining attorney should request additional information, pursuant to 37 C.F.R. §2.61(b), to clarify whether the pharmaceutical clinical trials are registrable services as contemplated by the Trademark Act. See TMEP §814.

1301.02   What Is a Service Mark?

Not every word, combination of words, or other designation used in the performance or advertising of services is registrable as a service mark.  To function as a service mark, the asserted mark must be used in a way that identifies and distinguishes the source of the services recited in the application.  Even if it is clear that the applicant is rendering a service (see TMEP §§1301.01 et seq.), the record must show that the asserted mark actually identifies and distinguishes the source of the service recited in the application.  In re Advertising and Marketing Development Inc., 821 F.2d 614, 2 USPQ2d 2010 (Fed. Cir. 1987) (stationery specimen showed use of THE NOW GENERATION as a mark for applicant's advertising or promotional services as well as to identify a licensed advertising campaign, where the recited services were specified in a byline appearing immediately beneath the mark).

The fact that the proposed mark appears in an advertisement or brochure in which the services are advertised does not in itself show use as a mark.  The record must show that there is a direct association between the mark and the service.  See In re Universal Oil Products Co., 476 F.2d 653, 177 USPQ 456 (C.C.P.A. 1973) (term that identifies only a process does not function as a service mark, even where services are advertised in the same specimen brochure in which the name of the process is used); In re Duratech Industries Inc., 13 USPQ2d 2052 (TTAB 1989) (term used on bumper sticker with no reference to the services does not function as a mark); Peopleware Systems, Inc. v. Peopleware, Inc., 226 USPQ 320 (TTAB 1985) (term PEOPLEWARE used within a byline on calling card specimen does not constitute service mark usage of that term, even if specimen elsewhere shows that applicant provides the recited services); In re J.F. Pritchard & Co. and Kobe Steel, Ltd., 201 USPQ 951 (TTAB 1979) (proposed mark used only to identify a liquefaction process in brochure advertising the services does not function as a mark, because there is no direct association between the mark and the offering of services).  See TMEP §1301.04(b).

The question of whether a designation functions as a mark that identifies and distinguishes the recited services is determined by examining the specimen(s) and any other evidence in the record that shows how the designation is used.  In re Morganroth, 208 USPQ 284 (TTAB 1980); In re Republic of Austria Spanische Reitschule, 197 USPQ 494 (TTAB 1977).  It is the perception of the ordinary customer that determines whether the asserted mark functions as a service mark, not the applicant’s intent, hope, or expectation that it do so.  In re Standard Oil Co., 275 F.2d 945, 125 USPQ 227 (C.C.P.A. 1960).  Factors that the examining attorney should consider in determining whether the asserted mark functions as a service mark include whether the wording claimed as a mark is physically separate from textual matter, whether a term is displayed in capital letters or enclosed in quotation marks, and the manner in which a term is used in relation to other material on the specimen.

While a service mark does not have to be displayed in any particular size or degree of prominence, it must be used in a way that makes a commercial impression separate and apart from the other elements of the advertising matter or other material upon which it is used, such that the designation will be recognized by prospective purchasers as a source identifier.  In re C.R. Anthony Co., 3 USPQ2d 1894 (TTAB 1987); In re Post Properties, Inc., 227 USPQ 334 (TTAB 1985).  The proposed mark must not blend so well with other matter on specimen that it is difficult or impossible to discern what the mark is.  In re McDonald's Corp., 229 USPQ 555 (TTAB 1985); In re Royal Viking Line A/S, 216 USPQ 795 (TTAB 1982); In re Republic of Austria Spanische Reitschule, supra; Ex parte Nat’l Geographic Society, 83 USPQ 260 (Comm’r Pats. 1949).  On the other hand, the fact that the proposed mark is prominently displayed does not in and of itself make it registrable, if it is not used in a manner that would be perceived by consumers as an indicator of source.  In re Wakefern Food Corp., 222 USPQ 76 (TTAB 1984).  The important question is not how readily a mark will be noticed but whether, when noticed, it will be understood as identifying and indicating the origin of the services.  In re Singer Mfg. Co., 255 F.2d 939, 118 USPQ 310 (C.C.P.A. 1958).

The presence of the "SM" symbol is not dispositive of the issue of whether matter sought to be registered is used as a service mark.  In re British Caledonian Airways Ltd., 218 USPQ 737 (TTAB 1983).

See TMEP §1301.02(a) for further information about matter that does not function as a service mark, TMEP §§1301.01 et seq. regarding what constitutes a service, and TMEP §§1301.04 et seq. regarding service mark specimens.

1301.02(a)   Matter that Does Not Function as a Service Mark

To function as a service mark, a designation must be used in a manner that would be perceived by purchasers as identifying and distinguishing the source of the services recited in the application.

Use of a designation or slogan to convey advertising or promotional information, rather than to identify and indicate the source of the services, is not service mark use.  See In re Standard Oil Co., 275 F.2d 945, 125 USPQ 227 (C.C.P.A. 1960) (GUARANTEED STARTING found to be ordinary words that convey information about the services, not a service mark for the services of "winterizing" motor vehicles); In re Melville Corp., 228 USPQ 970 (TTAB 1986) (BRAND NAMES FOR LESS found to be informational phrase that does not function as a mark for retail store services); In re Brock Residence Inns, Inc., 222 USPQ 920 (TTAB 1984) (FOR A DAY, A WEEK, A MONTH OR MORE so highly descriptive and informational in nature that purchasers would be unlikely to perceive it as an indicator of the source of hotel services); In re Wakefern Food Corp., 222 USPQ 76 (TTAB 1984) (WHY PAY MORE found to be a common commercial phrase that does not serve to identify grocery store services); In re Gilbert Eiseman, P.C., 220 USPQ 89 (TTAB 1983) (IN ONE DAY not used as source identifier but merely as a component of advertising matter that conveyed a characteristic of applicant’s plastic surgery services); In re European-American Bank & Trust Co., 201 USPQ 788 (TTAB 1979) (slogan THINK ABOUT IT found to be an informational or instructional phrase that would not be perceived as a mark for banking services); In re Restonic Corp., 189 USPQ 248 (TTAB 1975) (phrase used merely to advertise goods manufactured and sold by applicant’s franchisees does not serve to identify franchising services).  Cf. In re Post Properties, Inc., 227 USPQ 334 (TTAB 1985) (the designation QUALITY SHOWS, set off from text of advertising copy in extremely large typeface and reiterated at the conclusion of the narrative portion of the ad, held to be a registrable service mark for applicant’s real estate management and leasing services, because it was used in a way that made a commercial impression separate from that of the other elements of advertising material upon which it was used, such that the designation would be recognized by prospective customers as a source identifier).  See also TMEP §1202.04 regarding informational matter that does not function as a trademark.

A term that is used only to identify a product, device, or instrument sold or used in the performance of a service rather than to identify the service itself does not function as a service mark.  See In re Moody’s Investors Service Inc., 13 USPQ2d 2043 (TTAB 1989) ("Aaa," as used on the specimen, found to identify the applicant’s ratings instead of its rating services); In re Niagara Frontier Services, Inc., 221 USPQ 284 (TTAB 1983) (WE MAKE IT, YOU BAKE IT only identifies pizza, and does not function as a service mark to identify grocery store services); In re British Caledonian Airways Ltd., 218 USPQ 737 (TTAB 1983) (term that identifies a seat in the first-class section of an airplane does not function as mark for air transportation services); In re Editel Productions, Inc., 189 USPQ 111 (TTAB 1975) (MINI-MOBILE identifies only a vehicle used in rendering services and does not serve to identify the production of television videotapes for others); In re Oscar Mayer & Co. Inc., 171 USPQ 571 (TTAB 1971) (WIENERMOBILE does not function as mark for advertising and promoting the sale of wieners, where it is used only to identify a vehicle used in rendering claimed services).

Similarly, a term that only identifies a process, style, method, or system used in rendering the services is not registrable as a service mark, unless it is also used to identify and distinguish the service.  See TMEP §1301.02(e) and cases cited therein.

A term that only identifies a menu item does not function as a mark for restaurant services.  In re El Torito Restaurant Inc., 9 USPQ2d 2002 (TTAB 1988).

The name or design of a character or person does not function as a service mark, unless it identifies and distinguishes the services in addition to identifying the character or person.  See TMEP §1301.02(b) and cases cited therein.

A term used only as a trade name is not registrable as a service mark.  See In re The Signal Companies, Inc., 228 USPQ 956 (TTAB 1986) (journal advertisement submitted as specimen showed use of ONE OF THE SIGNAL COMPANIES merely as an informational slogan, where words appeared only in small, subdued typeface underneath the address and telephone number of applicant’s subsidiary).  See TMEP §1202.01 for additional information about matter used solely as a trade name.

Matter that is merely ornamental in nature does not function as a service mark.  See In re Tad’s Wholesale, Inc., 132 USPQ 648 (TTAB 1962) (wallpaper design not registrable as a service mark for restaurant services).  See TMEP §§1202.03 et seq. for additional information about ornamentation.

See TMEP §1202.02(a)(vii) regarding functionality and service marks, and TMEP §1202.02(b)(ii) regarding trade dress.

1301.02(b)   Names of Characters or Personal Names as Service Marks

Under 15 U.S.C. §1127, a name or design of a character does not function as a service mark, unless it identifies and distinguishes services in addition to identifying the character.  If the name or design is used only to identify the character, it is not registrable as a service mark.  In re Hechinger Investment Co. of Delaware Inc., 24 USPQ2d 1053 (TTAB 1991) (design of dog appearing in advertisement does not function as mark for retail hardware and housewares services); In re McDonald’s Corp., 229 USPQ 555 (TTAB 1985) (APPLE PIE TREE does not function as mark for restaurant services, where the specimen shows use of mark only to identify one character in a procession of characters); In re Whataburger Systems, Inc., 209 USPQ 429 (TTAB 1980) (design of zoo animal character distributed to restaurant customers in the form of an iron-on patch not used in a manner that would be perceived as an indicator of source); In re Burger King Corp., 183 USPQ 698 (TTAB 1974) (fanciful design of king does not serve to identify and distinguish restaurant services).  See TMEP §1202.10 regarding the registrability of the names and designs of characters in creative works.

Similarly, personal names (actual names and pseudonyms) of individuals or groups function as marks only if they identify and distinguish the services recited and not merely the individual or group. In re Mancino, 219 USPQ 1047 (TTAB 1983) (holding that BOOM BOOM would be viewed by the public solely as applicant’s professional boxing nickname and not as an identifier of the service of conducting professional boxing exhibitions); In re Lee Trevino Enterprises, Inc., 182 USPQ 253 (TTAB 1974) (LEE TREVINO used merely to identify a famous professional golfer rather than as a mark to identify and distinguish any services rendered by him); In re Generation Gap Products, Inc., 170 USPQ 423 (TTAB 1971) (GORDON ROSE used only to identify a particular individual and not as a service mark to identify the services of a singing group).

The name of a character or person is registrable as a service mark if the record shows that it is used in a manner that would be perceived by purchasers as identifying the services in addition to the character or person.  In re Florida Cypress Gardens Inc., 208 USPQ 288 (TTAB 1980) (name CORKY THE CLOWN used on handbills found to function as a mark to identify live performances by a clown, where the mark was used to identify not just the character but also the act or entertainment service performed by the character); In re Carson, 197 USPQ 554 (TTAB 1977) (individual’s name held to function as mark, where specimen showed use of the name in conjunction with a reference to services and information as to the location and times of performances, costs of tickets, and places where tickets could be purchased); In re Ames, 160 USPQ 214 (TTAB 1968) (name of musical group functions as mark, where name was used on advertisements that prominently featured a photograph of the group and gave the name, address, and telephone number of the group’s booking agent); In re Folk, 160 USPQ 213 (TTAB 1968) (THE LOLLIPOP PRINCESS functions as a service mark for entertainment services, namely, telling children’s stories by radio broadcasting and personal appearances).

See TMEP §§1202.09(a) et seq. regarding the registrability of the names and pseudonyms of authors and performing artists, and TMEP §1202.09(b) regarding the registrability of the names of artists used on original works of art.  

1301.02(c)   Three-Dimensional Service Marks

The three-dimensional configuration of a building is registrable as a service mark only if it is used in such a way that it is or could be perceived as a mark.  Evidence of use might include menus or letterhead that show promotion of the building’s design, or configuration, as a mark.  See In re Lean-To Barbecue, Inc., 172 USPQ 151 (TTAB 1971); In re Master Kleens of America, Inc., 171 USPQ 438 (TTAB 1971); In re Griffs of America, Inc., 157 USPQ 592 (TTAB 1968).  Cf. Fotomat Corp. v. Cochran, 437 F. Supp. 1231, 194 USPQ 128 (D. Kan. 1977); Fotomat Corp. v. Photo Drive-Thru, Inc., 425 F. Supp. 693, 193 USPQ 342 (D.N.J. 1977).

A three-dimensional costume design may function as a mark for entertainment services.  See In re Red Robin Enterprises, Inc., 222 USPQ 911 (TTAB 1984).

Generally, a photograph is a proper specimen of use for a three-dimensional mark.  However, photographs of a building are not sufficient to show use of the building design as a mark for services performed in the building if they only show the building in which the services are performed.  The specimen must show that the proposed mark is used in a way that would be perceived as a mark.

See 37 C.F.R. §2.52(b)(2) and TMEP §807.10 regarding drawings of three-dimensional marks.

When examining a three-dimensional mark, the examining attorney must determine whether the proposed mark is inherently distinctive.  See TMEP §1202.02(b)(ii).

1301.02(d)   Titles of Radio and Television Programs

The title of a continuing series of presentations (e.g., a television or movie "series," a series of live performances, or a continuing radio program), may constitute a mark for either entertainment services or educational services.  However, the title of a single creative work, that is, the title of one episode or event presented as one program, does not function as a service mark. In re Posthuma, 45 USPQ2d 2011 (TTAB 1998) (term that identifies title of a play not registrable as service mark for entertainment services).  The record must show that the matter sought to be registered is more than the title of one presentation, performance, or recording.  See TMEP §§1202.08 et seq. and cases cited therein for further information regarding the registrability of the title of a single creative work.

Specimens that show use of a service mark in relation to television programs or a movie series may be in the nature of a photograph of the video or film frame when the mark is used in the program.

Service marks in the nature of titles of entertainment programs may be owned by the producer of the show, by the broadcasting system or station, or by the author or creator of the show, depending upon the circumstances.  Normally, an applicant’s statement that the applicant owns the mark is sufficient; the examining attorney should not inquire about ownership, unless information in the record clearly contradicts the applicant’s verified statement that it is the owner of the mark.

1301.02(e)   Process, System, or Method

A term that only identifies a process, style, method, system, or the like is not registrable as a service mark.  A system or process is only a way of doing something, not a service.  The name of a system or process does not become a service mark, unless it is also used to identify and distinguish the service.  In re Universal Oil Products Co., 476 F.2d 653, 177 USPQ 456 (C.C.P.A. 1973) (term not registrable as service mark where the specimen shows use of the term only as the name of a process, even though applicant is in the business of rendering services generally and the services are advertised in the same specimen brochure in which the name of the process is used); In re HSB Solomon Assoc. LLC, 102 USPQ2d 1269, 1274 (TTAB 2012) (finding that the specimens show CEI identifying only a process and do not show a direct association between CEI and the applied-for services); In re Hughes Aircraft Co., 222 USPQ 263 (TTAB 1984) (term does not function as service mark where it only identifies a photochemical process used in rendering service); In re Vsesoyuzny Ordena Trudovogo Krasnogo Znameni Nauchoissledovatelsky Gorno-Metallurgichesky Institut Tsvetnykh Mettalov "Vnitsvetmet", 219 USPQ 69 (TTAB 1983) (KIVCET identifies only a process and plant configuration, not engineering services); In re Scientific Methods, Inc., 201 USPQ 917 (TTAB 1979) (term that merely identifies educational technique does not function as mark to identify educational services); In re J.F. Pritchard & Co. and Kobe Steel, Ltd., 201 USPQ 951 (TTAB 1979) (term used only to identify liquefaction process does not function as mark to identify design and engineering services); In re Produits Chimiques Ugine Kuhlmann Societe Anonyme, 190 USPQ 305 (TTAB 1976) (term that merely identifies a process used in rendering the service does not function as service mark); In re Lurgi Gesellschaft Fur Mineraloltechnik m.b.H., 175 USPQ 736 (TTAB 1972) (term that merely identifies process for recovery of high-purity aromatics from hydrocarbon mixtures does not function as service mark for consulting, designing, and construction services); Ex parte Phillips Petroleum Co., 100 USPQ 25 (Comm’r Pats. 1953) (although used in advertising of applicant’s engineering services, CYCLOVERSION was only used in the advertisements to identify a catalytic treating and conversion process).

If the term is used to identify both the system or process and the services rendered by means of the system or process, the designation may be registrable as a service mark.  See Liqwacon Corp. v. Browning-Ferris Industries, Inc., 203 USPQ 305 (TTAB 1979), in which the Board found that the mark LIQWACON identified both a waste treatment and disposal service and a chemical solidification process.

The name of a system or process is registrable only if:  (1) the applicant is performing a service (see TMEP §§1301.01 et seq.); and (2) the designation identifies and indicates the source of the service.  In determining eligibility for registration, the examining attorney must carefully review the specimen, together with any other information in the record, to see how the applicant uses the proposed mark.  The mere advertising of the recited services in a brochure that refers to the process does not establish that a designation functions as a service mark; there must be some association between the offer of services and the matter sought to be registered.  In re Universal Oil Products Co., supra; In re J.F. Pritchard & Co., supra.

1301.02(f)   Computer Software

A term that only identifies a computer program does not become a service mark, unless it is also used to identify and distinguish the service.  In re Walker Research, Inc., 228 USPQ 691 (TTAB 1986) (term that merely identifies computer program used in rendering services does not function as a mark to identify market analysis services); In re Information Builders Inc., 213 USPQ 593 (TTAB 1982) (term identifies only a computer program, not the service of installing and providing access to a computer program); In re DSM Pharmaceuticals, Inc., 87 USPQ2d 1623 (TTAB 2008) (term that merely identifies computer software used in rendering services does not function as a mark to identify custom manufacturing of pharmaceuticals).  However, it is important to review the record carefully to determine the manner of use of the mark and the impression it is likely to make on purchasers.  The Trademark Trial and Appeal Board has noted that:

[I]n today’s commercial context if a customer goes to a company’s website and accesses the company’s software to conduct some type of business, the company may be rendering a service, even though the service utilizes software.  Because of the ... blurring between services and products that has occurred with the development and growth of web-based products and services, it is important to review all the information in the record to understand both how the mark is used and how it will be perceived by potential customers.

In re Ancor Holdings, 79 USPQ2d 1218, 1221 (TTAB 2006) (INFOMINDER found to identify reminder and scheduling services provided via the Internet, and not just software used in rendering the services).

1301.03   Use of Service Mark in Commerce

1301.03(a)   Use of Service Mark in Advertising to Identify Services

In examining an application under 15 U.S.C. §1051(a), an amendment to allege use under 15 U.S.C. §1051(c), or a statement of use under 15 U.S.C. §1051(d), the examining attorney ordinarily must refuse registration if the record shows that the services advertised have not been rendered.  For example, the use of a mark in the announcement of a future service, including an advance reservation for or advance purchase of the service, does not constitute use as a service mark.  Aycock Eng'g, Inc. v. Airflite, Inc., 560 F.3d 1350, 90 USPQ2d 1301 (Fed. Cir. 2009) (holding that actual use of the mark in commerce in connection with an existing service is required and that mere preparations to use a mark sometime in the future does not constitute use in commerce); In re Port Auth. of N. Y., 3 USPQ2d 1453 (TTAB 1987) (finding advertising and promoting telecommunications services before the services were available insufficient to support registration); In re Cedar Point, Inc., 220 USPQ 533 (TTAB 1983) (holding that advertising of a marine entertainment park, which was not yet open, was not a valid basis for registration); In re Nationwide Mutual Ins. Co., 124 USPQ 465 (TTAB 1960) (holding that stickers placed on policies, bills, and letters announcing prospective name change is mere adoption, not service mark use).

Sometimes a service-mark specimen may show the wording "beta" being used in connection with the relevant services. This term is commonly used to describe a preliminary version of a product or service. Although some beta services may not be made available to consumers, others are. For example, a beta version of non-downloadable or downloadable software may be made available to the public for use even though the final version has not been released. Thus, the appearance of this term on a service-mark specimen does not, by itself, necessarily mean that the relevant services are not in actual use in commerce or that the specimen is unacceptable. However, if examination of the specimen indicates that the beta version is not in actual use in commerce, the examining attorney must refuse registration because applicant has not provided evidence of use of the applied-for mark in commerce. The statutory basis for refusal is 15 U.S.C. §§1051 and 1127. See TMEP §§904.03(e) and 904.03(i) regarding trademark specimens containing the term "beta."

See TMEP §806.03(c) regarding amendment of the basis to intent-to-use under 15 U.S.C. §1051(b) when a §1(a) basis fails; TMEP §1104.10 regarding withdrawal of an amendment to allege use, and TMEP §§1109.16-1109.16(e) regarding the time limits for correcting deficiencies in a statement of use.

1301.03(b)   Rendering of Service in Commerce Regulable by Congress

In an application under §1(a) or §1(b) of the Trademark Act, 15 U.S.C. §1051(a) or §1051(b), the applicant must use the mark in commerce before a registration may be granted.  Section 45 of the Act, 15 U.S.C. §1127, defines "commerce" as "all commerce which may lawfully be regulated by Congress."  See TMEP §§901.01 and 901.03.

The following are three examples of how a service may be rendered in commerce:  (1) the applicant’s services are rendered across state lines; (2) customers come across state lines in response to advertising for the services; and (3) the applicant’s licensees or franchisees who use the mark are located in more than one state.  See TMEP §901.03 and cases cited therein.

1301.04   Specimens of Use for Service Marks

A service-mark specimen must show the mark as actually used in the sale or advertising of the services recited in the application.  37 C.F.R. §2.56(b)(2).  "[B]ecause by its very nature a service mark can be used in a wide variety of ways, the types of specimens which may be submitted as evidence of use are varied." In re Metriplex, Inc., 23 USPQ2d 1315, 1316 (TTAB 1992). Whatever type of specimen is submitted, it must show proper use in commerce of the mark, which may be established by (1) showing the mark used or displayed as a service mark in the sale of the services, which includes use in the course of rendering or performing the services, or (2) showing the mark used or displayed in advertising the services, which encompasses marketing and promotional materials. See On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1088, 56 USPQ2d 1471, 1476-77 (Fed. Cir. 2000) (indicating that an online menu item bearing the mark ONLINE TODAY was proper service mark use in connection with "providing access to online computer services offering computer-industry news, commentary and product reviews" because, inter alia, the "menu items are the mechanisms by which users obtained access to a particular online service"); In re Metriplex, Inc., 23 USPQ2d at 1316 (indicating that a specimen that does not explicitly refer to the services may be acceptable if it "show[s] use of the mark in the rendering, i.e., sale, of the services"); In re Red Robin Enters., 222 USPQ 911, 914 (TTAB 1984) (stating that "rendition" of services is properly viewed as an element of the "sale" of services); 37 C.F.R. §2.56(b)(2). For purposes of clarity and simplicity, the term "rendering" is used in the following sections when discussing specimens that show use of the mark in the sale, performance, or rendering of the services.

The type of specimen submitted will often be apparent without the need for additional information regarding how the mark is used on the specimen. However, a specimen description submitted by the applicant typically helps clarify the manner in which the mark is used in commerce, and the more explanation the applicant provides initially, the more helpful it is to the examining attorney’s analysis. Thus, applicants are encouraged to provide a specimen description and explain how the applicant renders or provides the services and, if relevant, how marks are commonly used in the particular industry for such services. For instance, a description stating that a specimen comprises a title screen bearing the mark and showing the mark used in rendering the identified services is helpful for determining the nature and acceptability of the specimen.

If it is not readily apparent that the specimen meets the criteria for an advertisement or rendering type of specimen, and any specimen description does not provide adequate clarification, the specimen must be refused for failure to show use of the mark in commerce. See TMEP §1301.04(g) regarding the grounds for refusal. If further clarification regarding the nature of the specimen or the manner in which the mark is used may easily overcome the refusal (e.g., an explanation that the specimen is a title screen displaying the mark at the start of the provision of the identified services), an advisory to that effect may be included with the refusal. Under Trademark Rule 2.61(b), 37 C.F.R. §2.61(b), an examining attorney may also require the applicant to submit additional information about the specimen or the mark’s manner of use.

Regardless of whether the specimen shows the mark used in the advertising or rendering of the services, the examining attorney should consider the following when determining whether a service-mark specimen is acceptable.

1301.04(a)   Whether the Specimen Shows the Mark as Actually Used by the Applicant in Commerce in the Sale or Advertising of the Services

The specimen must show the mark as actually used by the applicant in selling or advertising the services. 37 C.F.R. §2.56(b)(2). Acceptable specimens may include newspaper and magazine advertisements, brochures, billboards, handbills, direct-mail leaflets, menus (for restaurants), press releases that are publicly available (e.g., on the applicant’s website), and the like. However, printer’s proofs or mock-ups of advertisements, press releases sent exclusively to news media, or printed articles resulting from such releases are not acceptable because they do not demonstrate the required use of the mark by the applicant. See TMEP §1301.04(f). Business documents such as letterhead and invoices may be acceptable service-mark specimens if they show the mark and refer to the relevant services. In some instances, a specimen or the specimen description may indicate that the specimen is not yet in use in commerce by inclusion of wording such as "internal only," "printer’s proof," "website coming soon," or "under construction."

1301.04(b)   Whether the Identified Services Are Registrable Services

A service-mark specimen must show the mark used or displayed in connection with a registrable service offered for the benefit of others. For information regarding activities that constitute registrable services, see TMEP §§1301.01–1301.01(b)(v).

1301.04(c)   Whether the Specimen Shows Use in Connection with All Classes in a Multiple-Class Application

The same specimen may be acceptable for multiple classes if the specimen shows direct association between the mark and at least one of the identified services in each class. See TMEP §1301.04(f)(ii). If the applicant intends for a submitted specimen to support multiple classes, the applicant should include a statement to that effect and indicate the classes supported by the specimen, but the applicant need not submit multiple copies of the same specimen. See TMEP §904.01(b).

1301.04(d)   Whether the Mark Is Used in Connection With the Identified Services

The specimen must demonstrate the mark serving as a source indicator for the identified services. Therefore, registration must be refused if the specimen shows the mark is used only to promote goods rather than the identified services, or the mark is used as a service mark but not for the identified services (i.e., the applicant misidentified the services). See TMEP §§1301.02(a), 1301.02(e)–1301.02(f). See TMEP §1301.04(g)(i) regarding failure to show use in commerce and §1301.04(h)(iii) regarding misidentified services.

1301.04(e)   Whether the Mark Functions as a Service Mark

The mark must actually function as a source-indicating service mark. Thus, registration must be refused if, for example, the specimen shows the mark serves solely as a trade name, only as the name of a computer software program or application, exclusively as the name of a method, process, or system, or merely as informational or ornamental matter. See In re Universal Oil Prods. Co., 476 F.2d 653, 655, 177 USPQ 456, 457 (C.C.P.A. 1973) ("The requirement that a mark must be ‘used in the sale or advertising of services’ to be registered as a service mark is clear and specific. We think it is not met by evidence which only shows use of the mark as the name of a process and that the company is in the business of rendering services generally, even though the advertising of the services appears in the same brochure in which the name of the process is used. The minimum requirement is some direct association between the offer of services and the mark sought to be registered therefor."); In re Osmotica Holdings Corp., 95 USPQ2d 1666, 1669 (TTAB 2010) (finding that, although the submitted specimens referenced the identified consulting services, the applied-for mark, as used on the specimens, would be perceived by the relevant public as identifying only applicant’s drug technology and thus the specimens failed to establish the required association between the mark and the identified services); In re DSM Pharm., Inc., 87 USPQ2d 1623, 1625-26 (TTAB 2008) (finding the submitted specimen unacceptable evidence of use of the mark in connection with custom manufacturing services because it did not show an association between the mark and the services, but instead the mark was used only to refer to computer software); TMEP §§1202.01, 1202.03–1202.04, 1301.02(a), 1301.02(e)–1301.02-(f). That the software or process may actually be used in providing the identified services neither transforms that software or process into the identified services, nor associates the name of that software or process as the name of the identified services. See In re HSB Solomon Assocs., LLC, 102 USPQ2d 1269, 1274 (TTAB 2012) (finding no direct association between the mark, CEI, and the identified technical consultation services because the submitted specimens showed the mark being used only to identify a metric, index, equivalency factor, standard, or performance measure and never to identify the identified services; noting that, even if the CEI metric, index, equivalency factor, standard, or performance measure is used by applicant in performing the identified services, that "does not transform that metric into a technical consulting service or associate the term CEI with the technical consulting service such that it serves as a source identifier rather than simply the name of a process"); In re Walker Research, Inc., 228 USPQ 691, 692 (TTAB 1986) (finding the submitted specimen unacceptable since SEGMENTOR referred only to the computer software used in performing the services and not to identify and distinguish the services themselves; noting that "[t]he fact that applicant does not sell the ‘SegMentor’ software and may not use ‘SegMentor’ in a technical trademark case in connection with the software does not . . . warrant a finding that ‘SegMentor’ must therefore function as a service mark"); TMEP §1301.02(f). However, the specimen may be acceptable if it also shows that the mark serves as a service mark for the identified services. See TMEP §§1301.02(e)–1301.02(f).

The use of the "SM" symbol with the mark does not, by itself, transform a designation into a service mark if other indicia suggest that it does not function as a service mark. Likewise, the "TM" symbol, which is occasionally used in connection with service marks, is not, by itself, an indication that the designation functions as a service mark. See TMEP §1301.02.

See 37 C.F.R. §2.59 and TMEP §§904.05 and 904.07 et seq. regarding substitute specimens.

1301.04(f)   Elements of an Acceptable Service-Mark Specimen

To be acceptable, a service-mark specimen must show the mark sought to be registered used in a manner that demonstrates a direct association between the mark and the services. Essentially, the mark must be shown "in a manner that would be perceived by potential purchasers as identifying the applicant's services and indicating their source." In re DSM Pharm., Inc., 87 USPQ2d 1623, 1624 (TTAB 2008); see In re Ancor Holdings, LLC, 79 USPQ2d 1218, 1220 (TTAB 2006) (citing In re Walker Research, Inc., 228 USPQ 691, 692 (TTAB 1986)).

The acceptability of a specimen is determined based on the facts and evidence of record, and viewed in the context of the relevant commercial environment. See In re Ancor Holdings, LLC, 79 USPQ2d at 1220 ("[W]e must base our determination of public perception of applicant's mark on the manner of use of [the mark] in the advertising which has been submitted as a specimen. Further, we must make that determination within the current commercial context, and, in doing so, we may consider any other evidence of record ‘bearing on the question of what impact applicant's use is likely to have on purchasers and potential purchasers.’" (quoting In re Safariland Hunting Corp., 24 USPQ2d 1380, 1381 (TTAB 1992)). Thus, the information provided by the specimen itself, any explanations offered by the applicant clarifying the nature, content, or context of use of the specimen, and any other information in the record should be considered in the analysis. In re DSM Pharm., Inc., 87 USPQ2d at 1626 ("In determining whether a specimen is acceptable evidence of service mark use, we may consider applicant's explanations as to how the specimen is used, along with any other available evidence in the record that shows how the mark is actually used."); In re Ancor Holdings, LLC, 79 USPQ2d at 1220.

When the identified services involve newer technology, the examining attorney must follow the appropriate examination policies and procedures, but also should employ a practical approach in analyzing the submitted specimen. See In re Ralph Mantia Inc., 54 USPQ2d 1284, 1286 (TTAB 2000) (finding a business card and stationery displaying the mark and the word "design" were acceptable specimens of use for applicant’s mark in connection with commercial art design services, noting that "[i]t is not necessary that the specific field of design, i.e., commercial art, also appear thereon" and that "the word ‘design’ alone is sufficient to create in the minds of purchasers an association between the mark and applicant's commercial art services"); In re Metriplex, Inc., 23 USPQ2d 1315, 1316 (TTAB 1992) (finding the submitted specimens acceptable to show use of applicant’s mark in connection with data transmission services because the specimens showed "the mark as it appears on a computer terminal in the course of applicant's rendering of the service" and noting that "purchasers and users of the service would recognize [applicant’s mark], as it appears on the computer screen specimens, as a mark identifying the data transmission services which are accessed via the computer terminal"). This may entail reviewing all the information of record to understand both how the mark is used and how it will be perceived by consumers. In re Ancor Holdings, LLC, 79 USPQ2d at 1221. Additionally, if the examining attorney elects to conduct research regarding the mark, the services, or practices in the particular industry, it may be helpful to consider any information uncovered regarding how the applicant and others in the industry typically advertise and render the identified services in the relevant marketplace, as well as the manner in which service marks are normally used in connection with those services. See TMEP §1301.04(h)(iii) for a discussion of issues surrounding technology-related services.

1301.04(f)(i)   Show the Mark

The mark on the drawing must be a substantially exact representation of the mark shown on the specimen. See TMEP §§807.12–807.12(a)(iii) and 807.12(d)–807.12(e) regarding agreement of the mark on the drawing and on the specimen. Furthermore, the designation must appear sufficiently prominent on the specimen (e.g., placement, size, or stylization) so that it will be perceived by consumers as a mark. See In re Dell Inc., 71 USPQ2d 1725, 1729 (TTAB 2004) (finding a mark "sufficiently prominent" even though it was "shown in a smaller type size than other words appearing on the webpage," given that it appeared "in a bullet listing of information about the product," and was placed "at the beginning of a line and [was] followed by the ‘TM’ trademark indicator"); TMEP §904.03(i)(B)(1). Compare In re Quantum Foods, Inc., 94 USPQ2d 1375, 1378 (TTAB 2010) (describing a mark as "prominently displayed" on the specimen when the mark appeared by itself above pictures relating to applicant’s goods in relatively large font and in a different color than some of the other text on the page) with In re Osterberg, 83 USPQ2d 1220, 1223 (TTAB 2007) (finding the mark not prominently displayed because it was buried in text describing the mark and, while the mark was shown in bold font, so was other matter). For instance, if shown in the same font, size, and color as the surrounding text on the specimen, the designation may not be perceived as a source indicator. See In re Osterberg, 83 USPQ2d at 1223.

1301.04(f)(ii)   Associate the Mark with the Identified Services

The specimen must show the mark used in a manner that creates in the minds of potential consumers a direct association between the mark and the services. In re Universal Oil Prods. Co., 476 F.2d 653, 655, 177 USPQ 456, 457 (C.C.P.A. 1973) ("The minimum requirement is some direct association between the offer of services and the mark sought to be registered therefor."); see also In re Adver. & Mktg. Dev., Inc., 821 F.2d 614, 620, 2 USPQ2d 2010, 2014 (Fed. Cir. 1987) ("The ‘direct association’ test does not create an additional or more stringent requirement for registration; it is implicit in the statutory definition of ‘a mark used * * * to identify and distinguish the services of one person * * * from the services of others and to indicate the source of the services.’"); In re Johnson Controls, Inc., 33 USPQ2d 1318, 1320 (TTAB 1994) ("While the nature of the services does not need to be specified in the specimens, there must be something which creates in the mind of the purchaser an association between the mark and the service activity."). Direct association is the minimum the specimen must show, and it may be established textually, contextually, or logically. In re Universal Oil Prods. Co., 476 F.2d at 655, 177 USPQ at 457. What is necessary to establish direct association differs depending on the type of specimen submitted, that is, whether it is an advertising specimen or a rendering specimen.

Mark Used in Advertising: For specimens showing the mark used in advertising the identified services, the specimen must explicitly reference the services to establish the requisite direct association. See In re Monograms Am., Inc., 51 USPQ2d 1317, 1318 (TTAB 1999). While the services need not be stated word for word, a "sufficient reference" to the services themselves or a general reference to the trade, industry, or field of use is required. See id.; In re Ralph Mantia Inc., 54 USPQ2d 1284, 1286 (TTAB 2000) (reversing the specimen refusal since the term "design" appeared on applicant’s letterhead stationery, envelope, and business cards and stating "[i]t is not necessary that the specific field of design, i.e., commercial art, also appear [on the specimen]. Here, the word ‘design’ alone is sufficient to create in the minds of purchasers an association between the mark and applicant's commercial art services."); In re Monograms Am., Inc., 51 USPQ2d at 1318; see also TMEP §1301.04(h). However, if the alleged reference to the services is so vague that the services cannot be discerned, the specimen will not be acceptable. In re Chengdu AOBI Info. Tech. Co., Ltd., 111 USPQ2d 2080, 2082 (TTAB 2011); see In re Monograms Am., Inc., 51 USPQ2d at 1318. See TMEP §1301.04(i).

Mark Used in Rendering: For specimens showing the mark used in rendering the identified services, the services need not be explicitly referenced to establish the requisite direct association. See In re Metriplex, Inc., 23 USPQ2d 1315, 1316-17 (TTAB 1992) (noting that "the requirements specific to specimens which are advertising are not applicable" and finding the submitted specimens acceptable to show use of applicant’s mark in connection with data transmission services because the specimens showed "the mark as it appears on a computer terminal in the course of applicant's rendering of the service" and noting that "purchasers and users of the service would recognize [applicant’s mark], as it appears on the computer screen specimens, as a mark identifying the data transmission services which are accessed via the computer terminal"). Rather, direct association may be indicated by the context or environment in which the services are rendered, or may be inferred based on the consumer’s general knowledge of how certain services are provided or from the consumer’s prior experience in receiving the services. Id. In other words, the context in which the services are provided and consumer knowledge and experience create an inference of the services without an explicit textual reference to the services. See TMEP §1301.04(i), Example 17 (CASHFLOW UNITS).

The applicant may respond to a specimen refusal for failing to show direct association by explaining the nature of the mark’s use or the manner in which the services are advertised or rendered. In re Metriplex, Inc., 23 USPQ2d at 1316 (finding the submitted specimens acceptable based, in part, on applicant’s explanation that the specimens showed the mark as it appeared on a computer terminal in the course of rendering the services). With respect to a particular industry’s typical use of marks in relation to specific services, it may also be helpful for the applicant to provide an explanation regarding industry practice concerning the use of the mark during the rendering of such services and how the applicant’s use comports with such practice. See TMEP §1301.04(i), Example 19 (design of speech bubbles).

The mere fact that the mark is displayed and the services are explicitly referenced or can be inferred from the context of the specimen does not automatically result in direct association between the mark and the services. See In re Johnson Controls, 33 USPQ2d at 1320. The specimen must associate the mark with the services such that the mark serves as a source identifier for those particular services. Cf. In re Sones, 590 F.3d 1282, 1288, 93 USPQ2d 1118, 1123 (Fed. Cir. 2009) ("[T]he test for an acceptable website-based specimen, just as any other specimen, is simply that it must in some way evince that the mark is ‘associated’ with the goods and serves as an indicator of source." (emphasis added)). The requisite mark-services association is present when the specimen makes a direct link or connection between the mark and the identified services. See TMEP §1301.04(i), Example 17 (CASHFLOW UNITS) and Example 18 (RIDE 411).

Thus, a specimen is unacceptable if it fails to convey a proper nexus between the mark and the services, or if the services are too attenuated from the proposed mark, either in terms of proximity or logical connection. See, e.g., In re Metriplex, Inc., 23 USPQ2d at 1316; In re Monograms Am., Inc., 51 USPQ2d at 1319. The mere fact that wording from the identification of services appears somewhere on the specimen may not necessarily suffice for the mark-services association or nexus, if there is nothing else to connect that wording to the mark, such as proximity or additional text that establishes the connection.

When examining for the mark-services association, the examining attorney should consider the specimen’s content, layout, and overall look and feel, as well as any description of the specimen and industry practice relating to service-mark usage in advertising and rendering the services.

1301.04(g)   Grounds for Refusal

1301.04(g)(i)   Failure to Show the Mark Used in Commerce

Trademark Act Sections 1 and 45, 15 U.S.C §§ 1051, 1127, are the statutory bases for refusing a specimen that does not meet the requirements of an acceptable service-mark specimen; such specimen is not acceptable because it does not show the mark in "use in commerce." For instance, if the mark does not appear on the specimen or the specimen shows use of the mark in connection with goods rather than the identified services, the specimen must be refused for failure to show service-mark use in commerce in connection with the identified services.

The applicant’s response options include submitting an acceptable substitute specimen or, if appropriate, amending the application to a §1(b) filing basis. See TMEP §806.03(c) regarding amending filing basis from §1(a) to §1(b), and §§904.07–904.07(b)(i) regarding requirements for substitute specimens. In some cases, the applicant may respond by providing clarification of the nature of the original specimen submitted, or an explanation of the content of the original specimen, to justify its acceptability.

The examining attorney may consider any of the following facts and evidence properly made of record:

  • declarations from persons with firsthand knowledge of the facts, with a sufficiently detailed explanation of how the mark is used in advertising or rendering the services or how the services are advertised or rendered;
  • clarification of the specimen of record, such as an explanation of the nature, content, or context of use of the specimen (this explanation need not be verified with a declaration);
  • evidence, such as declarations or industry-related periodicals, regarding industry practice with respect to how marks and services are promoted in advertising or how the services are rendered;
  • additional background materials, such as printouts showing information on subsequent webpages from the applicant’s website or subsequent screenshots of an electronic device on which the services may be accessed, rendered, and experienced (this matter generally need not be verified with a declaration); and/or
  • responses to any Trademark Rule 2.61(b) request for information.

If the specimen of record, the specimen description, the applicant’s response and explanations, and any additional proffered evidence are unpersuasive, a final refusal must issue, if the application is otherwise in condition for final. See 37 C.F.R. §2.63(b)–(b)(4); TMEP §714.03.

1301.04(g)(ii)   Failure to Show the Mark Functioning as a Service Mark

A specimen may show the mark used as something other than a service mark for the identified services. For instance, it may show the mark used solely as a trade name, only as the name of a computer software program or application, exclusively as the name of a method, process, or system, or merely as informational or ornamental matter. See TMEP §§1202.01, 1202.03–1202.04, 1301.02(a), 1301.02(e)–1301.02(f). In such cases, the mark does not function as a service mark to identify and distinguish the applicant’s services and indicate their source. Thus, a failure-to-function refusal should issue under Trademark Act Sections 1, 2, 3, and 45. 15 U.S.C. §§1051─1053, 1127; see TMEP §1301.04(e). No specimen refusal should issue, however, if the mark identifies, for example, both a process and the identified services and the requisite mark-services association is present. See TMEP §§1301.02(e), 1301.04(ii) (Example 21 (LEADING EDGE TONERS)).

1301.04(h)   Considerations and Common Issues when Examining Certain Specimens

1301.04(h)(i)   Letterhead

Letterhead stationery, business cards, or invoices bearing the mark may be accepted if they create an association between the mark and the services. To create an association between the mark and the services, the specimen does not have to spell out the specific nature or type of services. A general reference to the industry may be acceptable. In re Ralph Mantia Inc., 54 USPQ2d 1284 (TTAB 2000) (letterhead and business cards showing the word "Design" are acceptable evidence of use of mark for commercial art design services); In re Southwest Petro-Chem, Inc., 183 USPQ 371 (TTAB 1974) (use of mark on letterhead next to the name SOUTHWEST PETRO-CHEM, INC. found to be sufficient to show use of the mark for "consulting and advisory services relating to the making and using of lubricating oils and greases," when used for letters in correspondence with customers).

Letterhead or business cards that bear only the mark and a company name and address are not adequate specimens (unless the mark itself has a descriptive portion that refers to the service), because they do not show that the mark is used in the sale or advertising of the particular services recited in the application. In re Monograms Am., Inc., 51 USPQ2d 1317 (TTAB 1999) (letterhead specimen showing the mark MONOGRAMS AMERICA and the wording "A Nationwide Network of Embroidery Stores" held insufficient to support registration for consulting services for embroidery stores).

If the letterhead itself does not include a reference to the services, a copy of an actual letter on letterhead stationery bearing the mark is an acceptable specimen of use if the content of the letter indicates the field or service area in which the mark is used. In Monograms America, the Board indicated that the letterhead specimen might have been accepted if the applicant had submitted a copy of a letter to a store owner describing the services. 51 USPQ2d at 1319.

1301.04(h)(ii)   Specimens for Entertainment Services

For live entertainment services, acceptable specimens include a photograph of the group or individual in performance with the name displayed, e.g., the name printed on the drum of a band. For any entertainment service, advertisements or radio or television listings showing the mark may be submitted, but the specimen must show that the mark is used to identify and distinguish the services recited in the application, not just the performer. See In re Ames, 160 USPQ 214 (TTAB 1968) (advertisements for records show use of the mark for entertainment services rendered by a musical group, where the advertisements prominently feature a photograph of musical group and give the name, address, and telephone number of a booking agent).

A designation that identifies only the performer is not registrable as a service mark. See TMEP §1301.02(b) regarding the registrability of names of characters or personal names as service marks, and TMEP §§1202.09(a) et seq. regarding the registrability of names and pseudonyms of performing artists.

1301.04(h)(iii)   Specimens for Technology-Related Services

Proper specimen analysis requires consideration of the nature of the identified services. Modern computer and technology-related services present special challenges because these services, and the terminology used to describe them, are continually evolving. In addition, any online activity entails the use of computer software, making it difficult to differentiate the various services provided online from the underlying technology used to provide them. As the Board has noted, "[a]lthough it may well be software that is generating the [services], in today's commercial context if a customer goes to a company's website and accesses the company's software to conduct some type of business, the company may be rendering a service, even though the service utilizes software." In re Ancor Holdings, LLC, 79 USPQ2d 1218, 1221 (TTAB 2006).

It may be unclear, based on the submitted specimen, whether the applicant is providing non-software services in a given field or subject matter (e.g., "financial consulting in the field of retirement planning" in Class 36), or offering computer software or application services involving that same field or subject matter (e.g., "providing temporary use of non-downloadable software for retirement planning" in Class 42), or both. Sometimes, an applicant that is actually providing non-downloadable software services (e.g., "providing temporary use of non-downloadable software for medical billing" in Class 42) misidentifies the services as the underlying function of the software (e.g., "medical billing" in Class 35). Similarly, the applicant may be using social networking websites to advertise non-social networking services (e.g., operating a pet store) and communicate with customers, leading the applicant to misidentify the services as "online social networking services" in Class 45.

Thus, a primary consideration in these instances is whether the specimen indicates that the applicant is actually performing the relevant service activities for others, or, for instance, merely providing software that allows users of the software to perform those activities themselves, or only offering an online game that is accessed via a social networking website. See TMEP §1301.04(i), Example 5 (ATHENACOORDINATOR), Example 7 (CLINICANYWHERE), and Example 14 (OUTERNAUTS).

Furthermore, some traditional services, and the associated terminology, may require fresh understanding and broader interpretation in the modern commercial environment. More and more traditional services are now offered online and, increasingly, multiple services are seamlessly integrated, creating difficulty in distinguishing the source of the services. For instance, television programs that were once provided only by broadcast television and cable outlets are now also accessible via streaming services like Netflix®, Hulu®, or YouTube®. Thus, typical service identification terms like "broadcasting," "distribution," and "transmission" have taken on new meaning in the modern marketplace. Thinking of traditional and other services more broadly and being cognizant of the current marketplace realities will also help the examining attorney determine whether the specimen properly shows use of the mark in association with the identified services.

When the nature of the services is not readily apparent from the information of record, such as the identification and specimen, the examining attorney may consult several resources for research and guidance, including: the notices and notes in the U.S. Acceptable Identification of Goods and Services Manual (ID Manual); the applicant’s and third-party websites; telephone or e-mail communication with the applicant or applicant’s attorney; technology dictionaries, encyclopedias, and trade and industry publications; and the Office of Trademark Classification Policy & Practice. In addition, the Trademark Law Library is available to assist examining attorneys with research. Finally, the examining attorney may require the applicant to provide further information about the services, pursuant to Trademark Rule 2.61(b). 37 C.F.R. §2.61(b).

1301.04(h)(iv)   Common Forms of Specimens for Modern Technology-Related Services

As noted above, an applicant may submit a specimen that shows the mark as used in rendering the services. These specimens are often submitted in connection with modern technology-related services, and common types are discussed below.

For specimens showing use of the mark in rendering the services, an explicit, textual reference to the services or their trade, industry, or field of use is not necessary, but an indication of the services sufficient to establish direct association between the mark and the services is required. The examining attorney must refuse the specimen if neither the specimen itself nor the description of the specimen provides sufficient information to decipher the nature of the services, determine the manner of use, and assess whether the necessary mark-services association exists. See TMEP §1301.04(g)(i).

1301.04(h)(iv)(A)   Sign-In Screens

Applicants often submit screenshots of sign-in screens as specimens for online services, such as non-downloadable software services and application-service-provider services. Sign-in screens show that the services are available and the context indicates that they are accessed by inputting credentials, which is a generally known and accepted means of accessing many online services. In re Metriplex, Inc., 23 USPQ2d 1315, 1317 (TTAB 1992) (finding the submitted specimens acceptable to show use of applicant’s mark in connection with data transmission services because "we have a situation where the service are rendered through the means of a tangible item, namely, a computer terminal, so that the mark can appear on the computer screen, and the specimens show such use").

Some sign-in screens may include a reference to the services and effectively function as an advertisement. See TMEP §1301.04(i), Example 6 (MYFITAGE). Other sign-in screens may contain no reference to the services, but may nonetheless be acceptable if the overall content of the specimen sufficiently indicates the services. Or, the specimen description may explain the context of the services by stating the specimen is a sign-in screen for accessing the services and that applicant is offering the type of services being applied for. Such an explanation may provide a sufficient basis for accepting the sign-in screen specimen, as long as there is no contradictory information in the record indicating that the mark is not associated with the identified services. See TMEP §1301.04(i), Example 4 (STAFFTAP).

1301.04(h)(iv)(B)   Title or Launch Screens

A title or launch screen is an on-screen graphic typically displayed at the beginning of entertainment content, such as video games or ongoing television programs, often with other information about the content featured. For services such as Class 41 entertainment services involving the provision, production, or distribution of entertainment content, screenshots of title or launch screens from the content may create the requisite direct association between the mark and the services. Thus, title or launch screens may be acceptable specimens as long as their nature as such is clear either from the overall look and feel of the specimen or from the applicant’s description of the specimen.

While showing the title or launch screen being displayed on any particular electronic device (e.g., television, computer, or smartphone) is not required, a specimen showing an electronic device bearing the title or launch screen may be acceptable without further explanation because it places the mark in the context of how the services are rendered. See TMEP §1301.04(i), Example 14 (OUTERNAUTS). A title or launch-screen specimen showing only the mark but not the electronic device, with no specimen description or an insufficient description, may require a specimen description identifying the specimen as a title or launch screen and placing the mark in the context of the services. See TMEP §1301.04(i), Example 13 (DELICIOSO).

While title or launch-screen specimens may be acceptable to show service-mark use, the mark must be refused if the specimen shows that the mark is the title of a single creative work (e.g., the title or name of one episode of a television or radio program, one movie, or one show presented as a single event). See TMEP §§1202.08–1202.08(f) regarding titles of single creative works and §1301.02(d) regarding titles of radio and television programs.

1301.04(h)(iv)(C)   Webpages

Webpages from an applicant’s or a third-party’s website are routinely submitted as advertising and are acceptable if they show the mark used as a service mark, explicitly/textually reference the identified services, and associate the mark with those services.

Webpages lacking a reference to the services may be acceptable if they show use of the mark in rendering the services. See TMEP §1301.04(i), Example 14 (OUTERNAUTS).

Webpages from social-networking websites should be scrutinized to ensure that the mark is properly associated with the identified services. Some applicants may mistakenly mischaracterize their services as "social networking" because they assume that advertising or promoting their non-social-networking services via a social-networking website means they are providing social-networking services. For instance, an applicant may mistakenly file an application for "online social-networking services" and provide a Facebook® webpage as a specimen when, in fact, they operate a pet store and are only using the Facebook® website to advertise the pet store and communicate information to and messages with actual and potential customers. Such a specimen is not acceptable for the social-networking services since it does not demonstrate that the applicant is providing these services.

1301.04(h)(iv)(D)   Software Applications ("Apps")

Software applications ("apps") for smartphones and computer tablets are now commonly used to provide online services. Apps are simply the interface that enables the providers of the services to reach the users and render the services, and the users to access those services. Common specimens for such apps are usually screenshots of electronic devices demonstrating the apps delivering the services. Such a specimen may not always depict proper service-mark use of the mark in connection with the identified services, but it may be acceptable if the displayed screenshot clearly and legibly shows the mark associated with the identified services as the services are rendered or performed via the app. See TMEP §1301.04(i), Example 15 (KURBKARMA).

1301.04(i)   Examples of Acceptable Service-Mark Specimens

Cloud-Computing Services

EXAMPLE 1

Screenshot of CSC Cloudlab webpage advertising computer services.

Mark: CSC CLOUDLAB

Relevant Services: Infrastructure as a Service (IAAS) services, namely, providing web-based use of virtualized computer hardware, networking, and storage equipment on a utility computing basis, namely, providing virtual computer systems and virtual computer environments through cloud computing, in Class 42.

Analysis:

  • Specimen is described as "web page screenshot" and appears to be advertising.
  • Mark is displayed near the top center of the webpage in large, color font, and in the middle center of the webpage at the beginning of a statement shown in bold font.
  • Services are referenced in the following statements:
    • "CSC CloudLab offers on-demand, web-based access to virtual machines and data centers."
    • "CloudLab Cloud Application Testing Services delivers on-demand scalable, virtualized infrastructure."
  • Mark-services association is present because the mark is used directly in connection with the services in textual statements describing the services, and is placed immediately above explicit/textual references to the services.

EXAMPLE 2

Original Specimen

Screenshot of Parse webpage displaying fill-in fields for signing up for Parse software goods.

Substitute Specimen

Screenshot of Parse webpage adverising computer services.

Mark: PARSE

Services: Platform as a service (PAAS) featuring computer software platforms offering server-side functionality to provide backend services, namely, data storage, push notifications and user management, all for mobile applications, in Class 42.

Analysis:

  • Original specimen is described as "website offering purchase and download of Parse software"; the substitute specimen is described as "website advertising."
  • On the substitute specimen, the mark is presented in large font on the top of the webpage and on the screen of an electronic device.
  • Original specimen was refused because the specimen and its description indicated the mark is used in association with software goods rather than PAAS services.
  • Substitute specimen is acceptable due to the following statements referencing the services and the following indicia of the context in which the services are rendered:
    • The wording "The mobile app platform for developers" and "Add a powerful and scalable backend in minutes for your Marketing App" describes the nature of the services.
    • The "Manage your apps" button indicating that the services are accessed by clicking on the button.
  • Mark-services association is present because it is customary to display service marks near the top of the webpages on which the services are advertised or through which they are accessed, rendered, and experienced. Here, the mark is in close proximity to explicit textual references to the services and the "Manage your apps" button, thus creating the mark-services connection.

EXAMPLE 3

Screenshot of Montagable webpage advertising computer services.

Mark: MONTAGABLE

Services: Computer software platform as a service (PAAS) featuring computer software platforms for application building, in Class 42.

Analysis:

  • Specimen is described as "screenshots" from applicant’s website and appears to be advertising.
  • Mark is prominently shown in large font on the top of the webpage.
  • Services are referenced in the following statements:
    • "Montagable is a better way to build web apps."
    • "Thanks to our exclusive, structureless database platform, it’s incredibly quick and painless to get your custom app up and running . . . ."
    • "Everything’s hosted and managed on our secure services, so you can always get to it with any internet connection."
  • Mark-services association is present because the mark is used directly in connection with the services in textual statements describing the services, and is placed immediately above explicit textual references to the services as well as in statements referencing the services.

EXAMPLE 4

Screenshots of StaffTap home screen and sign-in screen with fill-in fields for logging in, and schedule screen showing schedule for Friday and Saturday. The right-hand side shows a screenshot of StaffTap showing a date and time grid for scheduling tasks and menu options for utilizing the staff management funcitons of the software services.

Mark: STAFFTAP

Services: Software as a service (SAAS) services featuring software for use in staff management and related scheduling tasks, in Class 42.

Analysis:

  • Specimen is described as "screenshot capture of a representative online portal" and appears to show the mark used in rendering the services.
  • Mark appears prominently in large font on a launch screen, on the sign-in screen, and on the top of a screen displaying the software services in use.
  • Services are indicated by the context in which they are rendered, as follows:
    • A launch screen with the wording "Version 1.0.27" indicates the version of the online software services being rendered.
    • The "Employee Login" screen indicates that one must log in to access the software services and the subsequent screen shows the schedule for Friday and Saturday.
    • A screen showing a date and time grid for scheduling tasks and the menu on the left containing options, including "Manage My Shifts" and "View Task Assignments," indicates the staff management functions of the software services.
  • Mark-services association is present because the mark appears on the launch screen where it is customary in such industry to place the mark under which the services are offered and such placement is recognized as the introduction of the online services; and the mark also appears on the sign-in screen where it is customary to input credentials to gain access to online services. The context in which the mark is used, i.e., on the title and sign-in screens, creates the mark-services connection (since using such screens is common practice for rendering such services) and implies that the services are available and rendered once the user initiates access to the services by logging in. The launch screen alone is acceptable because it is generally known that such screens are used to initiate the start up of or access to online services. The sign-in screen is also acceptable on its own since it is a generally known means of accessing online services. The mark is also displayed on another screen which shows the mark while the services are being performed and, thus, the proximity of the mark to the services conveys a connection.

EXAMPLE 5

Screenshot of AthenaCoordinator webpage advertising physician order support, medical practice management, and computer services.

Mark: ATHENACOORDINATOR

Services: Physician order support services and medical practice management services relating to medical tests and procedures, namely, verifying patient eligibility and benefits, handling scheduling requests, obtaining insurance pre-certifications, handling patient pre-registrations, and collecting self-pay balances from patients, in Class 35; and Software as a service (SAAS) services featuring software for use in communications between physicians and other participants in the health care system with respect to orders for medical tests and procedures, in Class 42.

Analysis:

  • Specimen is described as a "brochure" and appears to be advertising.
  • Mark appears prominently in large font on the top of the brochure.
  • Class 35 services are referenced in the following statements:
    • "Through software and service, we deploy critical knowledge to support effective and efficient care coordination."
    • "A dedicated team of remote specialists with essential clinical and payer knowledge verifies eligibility and benefits. They also obtain required insurance pre-certifications to ensure claims get paid the first time."
    • "A dedicated team of specialists delivers pre-registration services to ensure order fulfillment, registering patients in the hospital system and collecting self-pay balances. Patients and physicians benefit from an efficient registration process."
  • Class 42 services are referenced in the following statements:
    • "Through software and service, we deploy critical knowledge to support effective and efficient care coordination."
    • "The web-based platform facilitates easy order entry and status for physician, enables our pre-certification and pre-registration services and delivers a "clean" order to the hospital."
  • Mark-services association is present because the mark is used directly in connection with the services in textual statements describing the services, and is placed immediately above explicit textual references to the services.

Non-Downloadable Software Services

EXAMPLE 6

Screenshot of Myfitage webpage showing sign-in screen with fill-in fields for logging into and accessing the computer software services.

Mark: MYFITAGE

Services: Providing temporary use of non-downloadable computer software for retirement planning, in Class 42.

Analysis:

  • Specimen is described as "web printout" and appears to show the mark used in rendering the services.
  • Mark is shown in large font at the top of the webpage and in the middle of the webpage.
  • Services are referenced in the following statements and indicated by the context in which they are rendered, as follows:
    • The wording "financial planning simplified" appears above the mark.
    • The wording "Financial Independence Target" appears below the mark.
    • "myFiTage is your reality check. It estimates your FiT Age – the earliest age where your future financial resources are expected to exceed your future living needs."
    • "Log in" fields are provided for accessing the non-downloadable software.
  • Mark-services association is present because the mark appears on the sign-in screen where it is customary in such industry to input credentials to gain access to online services. The context in which the mark is used, i.e., during the sign-in process, creates the connection with the services since sign-in screens are common practice and imply that the services are available and rendered once the user logs in. Additionally, the mark is used directly in connection with the services in textual statements describing the services, and is placed above and below statements referencing the services, further conveying the mark-services connection. The sign-in screen alone would also be acceptable even if the services were not textually referenced since it is a generally known means of accessing online services. The specimen is acceptable both as an advertisement and as showing the mark in rendering the services.

EXAMPLE 7

Screenshot of ClincAnywhere advertisement for medical billing and computer software services.

Mark:

ClinicAnywhere Mark Image

Services: Medical Billing Support, in Class 35; and Providing on-line, non-downloadable, Internet-based software application for medical billing for physicians and health care institutions, in Class 42.

Analysis:

  • Specimen is described as an advertisement.
  • Mark is prominently displayed in large, color font in the middle of the advertisement.
  • Class 35 services are referenced in the following statement:
    • "Top-notch Medical Billing Services."
  • Class 42 services are referenced in the following statements:
    • "Cloud-based Practice Management and EHR Solutions."
    • "Any device. Any time. Anywhere.......ClinicAnywhere."
  • Mark-services association is present because the mark is used directly in connection with the services in textual statements describing the services, and is placed immediately below explicit textual references to the services.

Application-Service-Provider (ASP) Services

EXAMPLE 8

Screenshot of Ticket Central webpage showing the applicant's mark Insite Ticketing for application service provicer services.

Mark: INSITE TICKETING

Services: Application service provider (ASP), namely, hosting computer software applications for others in the field of ticketing and related ticketing services, in Class 42.

Analysis:

  • Specimen is described as a "screen shot" and appears to show the mark used in rendering the services.
  • Mark is prominently displayed on the bottom of the screenshot.
  • Services are indicated by the context in which they are rendered, as follows:
    • The mark is displayed directly below the area where customers purchase tickets, thereby indicating that the ASP hosting or providing the software services is INSITE TICKETING.
    • The wording "Technology by" placed next to the mark, implies that the software technology services that are operating the website are provided by the applicant.
  • Mark-services association is present because the mark is displayed on the screen where the services are rendered and experienced. While another mark, "Ticket Central," is shown on the top left of the webpage, it appears to be associated only with ticket-purchasing services, not ASP services, and thus does not detract from associating the applied-for mark with the identified services.

Telecommunications Services

EXAMPLE 9

Original Specimen

Screenshot of GovHub webpage showing pictures of government officials and a fill-in field for leaving feedback.

Substitute Specimen

Screenshot of GovHub webpage showing sign-in fields for logging in and accessing on-line forum services.

Mark: GOVHUB

Services: Providing on-line forums for transmission of messages among computer users, in Class 38.

Analysis:

  • Original specimen is described as "website screen-shot" and the substitute specimen is described as "screenshot of the homepage of the website."
  • Mark is presented on the substitute specimen at the top right of the webpage.
  • Original specimen was refused because it failed to reference the services.
  • Substitute specimen is acceptable because the services are indicated by the following:
    • "Sign in to GovHub" indicates that a user may log in to use the services, i.e., read and send messages.
    • "Top Discussions" shows two discussion topics in progress, and the "5" and "0" shown in the color blue specify that there are 5 messages posted for the first discussion and 0 for the second discussion, indicating that the services involve on-line forums for transmission of messages.
  • Mark-services association is present on the substitute specimen because it is customary to display service marks near the top of the webpage on which the services are advertised or through which they are accessed, rendered, and experienced. Here, the mark is in proximity to indicia implying the services and no other marks appear to negate the mark-services connection. While the services are not explicitly textually referenced, when viewing the heading "Top Discussions," the two discussion topics below it, and the "5" and "0" messages posted about the discussion topics – all these factors together indicate that applicant is offering online forum services.

EXAMPLE 10

Screenshot of Hometown Sounds webpage showing a schedule of music programs and a link for streaming music.

Mark: HOMETOWN SOUNDS

Services: Electronic transmission and streaming of digital media content for others via global and local computer networks; Streaming of audio material on the Internet; Transmission services via the Internet, featuring MP3 files and music videos, in Class 38.

Analysis:

  • Specimen is described as "website for Hometown Sounds" and appears to show the mark used in rendering the services.
  • Mark is presented in large font on the top of the webpage.
  • Services are referenced in the following statements and indicated by the context in which they are rendered, as follows:
    • The wording "DC’s local music internet station" describes the services.
    • The wording "Listen Now" indicates that the website may be used to stream audio content.
    • The link "Click Here to listen to Hometown Sounds" indicates that the services are accessed by clicking on the link.
  • Mark-services association is present because it is customary to display service marks near the top of the webpage on which the services are advertised or through which they are accessed, rendered, and experienced. Here, the mark is physically close to indicia implying the services and no other marks appear to negate the mark-services connection. The mark appears above textual references to the services as well as in textual instructions for accessing the services, which further conveys the mark-services connection. The specimen is acceptable both as an advertisement and as showing the mark in rendering the services.

EXAMPLE 11

Screenshot of HooplaHa webpage diplaying a play button for playing a video about hurricane healing, and showing latest videos on other topics that are available for viewing.

Mark:

HooplaHa with bird mark image

Services: Broadcasting of video and audio programming over the Internet, in Class 38.

Analysis:

  • Specimen is described as "web page" and appears to show the mark used in rendering the services.
  • Mark is shown in large font on the top of the webpage.
  • Services are indicated by the following:
    • A freeze-frame of a video featuring a play button is displayed, indicating the services are accessed by clicking the play button.
    • The wording "Join Now! Get the latest feel-good videos, news and events" conveys the different content that is available for broadcast.
    • The wording "Latest Videos" and the images of several videos appear near the bottom, implying that other videos are available for broadcast.
  • Mark-services association is present because it is customary to display service marks near the top of the webpages on which the services are advertised or through which they are accessed, rendered, and experienced. Here, the mark is sufficiently near indicia implying the services and no other marks appear to negate the mark-services connection. While the nature of the services is not explicitly textually referenced, the display of the play button and "Latest Videos" indicate that applicant is offering broadcasting services.

Entertainment Services

EXAMPLE 12

Screenshot of Cinemax webpage advertising various television programs.

Mark: CINEMAX

Services: Entertainment services in the nature of providing entertainment programming and content, namely, on-going television programs, and related clips and graphics and information relating to television programming and content in the fields of comedy, drama, action, adventure via television, cable and satellite systems, the Internet, electronic communications networks, computer networks and wireless communications networks, in Class 41.

Analysis:

  • Specimen is described as "mark as used in commerce on specified goods and services" and appears to be a webpage advertising some of the identified services and rendering other identified services.
  • Mark is displayed prominently at the top of the webpage.
  • Services are referenced in the following wording and statements:
    • The navigation tabs at the top "VIDEOS," "SCHEDULE," "ORIGINAL SERIES," "MOVIES," and "AFTER DARK" indicate the entertainment content available.
    • The play button next to "WATCH PREVIEW" indicates that a clip of the show "ASYLUM BLACKOUT" may be viewed.
    • The reference to "BANSHEE" states "From the creator of ‘True Blood’ comes a Cinemax original series about a small town where nothing is as it seems . . .," advertising another on-going television program.
  • Mark-services association is present because it is customary to display service marks near the top of the webpage on which the services are advertised or through which they are accessed, rendered, and experienced. Here, the mark is sufficiently near textual references to the services, thus indicating the mark-services connection.

EXAMPLE 13

Screenshot of the title screen of a television program about cooking.

Mark: DELICIOSO

Services: Entertainment and education services, namely, ongoing television program concerning cooking and nutrition, in Class 41.

Analysis:

  • Specimen is described as a "photo of opening title of applicant's television program" and appears to show the mark used in rendering the services.
  • Mark is prominently shown in large font on the title screen of an electronic device that is displaying the ongoing television program.
  • Mark-services association is present because the mark appears on the title screen where it is customary in such industry to place the mark under which the services are promoted. It is common practice for a title screen bearing the mark to appear at the start of entertainment content and indicate the launch of the services. While the nature of the services is not textually referenced, it is sufficient that the overall content of the specimen implies that applicant is offering entertainment services.
  • The specimen would be unacceptable without the specimen description, which clarifies that the specimen is an "opening title" and places the mark in the context of providing the services. Since the specimen could possibly be print advertising, a specimen description is necessary to clarify the nature of the specimen. The top right corner of the specimen shows some wording that suggests that the title screen is displayed on an electronic device. However, since that wording is not legible and the context of the title screen is not visible, the nature of the specimen is unclear and, thus, a specimen description is required clarifying that it is a title screen.

EXAMPLE 14

Screenshot of Facebook webpage displaying the applicant's mark Outernauts on the launch screen of a video game.

Mark: OUTERNAUTS

Services Entertainment services, namely, providing online video games, in Class 41.

Analysis:

  • Specimen is described as a "screenshot of the page on Facebook.com, an Internet website, from which the services are provided to users" and appears to show the mark used in rendering the services.
  • Mark is prominently shown in large font near the top of the webpage.
  • Services are referenced in the following statements and indicated by the following:
    • The mark appears near video game information "Get Star Gems," "Leaderboard," and "loading Outernauts."
    • The mark appears near the word "Games," generally referencing the services.
  • Mark-services association is present because it is customary to display service marks near the top of the webpage on which the services are advertised or through which they are accessed, rendered, and experienced. Here, the mark is near indicia implying the services and other marks appear to cloud the mark-services connection. While the specimen shows the webpage is from a third-party website, i.e., Facebook®, this does not diminish the requisite association due to the proximity of the applied-for mark to the matter indicating the online services, which appear to be directly launched from the website. The screenshot also appears to be of the title or launch screen of the online video game, where it is common practice in such industry to place the mark under which the services are promoted and where such placement is recognized as the introduction of the online services. The screenshot here implies, and it is generally known, that access to and performance of the services begins with this screen. The specimen description combined with the wording "loading Outernauts" further supports the mark-services connection. The specimen is also acceptable as an advertisement since the word "Games" appears on the lower left corner as part of a third-party mark "Insomniac Games." It may be inferred that the combination of the applied-for mark OUTERNAUTS with the reference to "Games" and to "EA" sufficiently and textually references the online video game services.

EXAMPLE 15

Screenshot of iTues webpage displaying two screenshots of an iPhone, one being the home screen of a computer application and the other being a street map showing available parking spots for the on-line matching services.

Mark: KURBKARMA

Services: On-line matching services for connecting automobile drivers with other drivers who are, respectively, searching for or departing from parking spaces accessible via a mobile application, in Class 35.

Analysis:

  • Specimen is described as "screenshot of the ITunes store which features Applicant's mark and describes Applicant's services."
  • Mark is displayed in bold font in the middle left of the webpage.
  • Services are indicated by the following:
    • The iPhone® screen images clearly and legibly show the wording "Have a Spot," "Need a Spot," and "Available Spots," indicating the services being performed by the applicant via the app.
  • Mark-services association is present because the mark is placed in sufficiently close proximity to the iPhone® screenshots, which show the services as they are accessed and rendered via the device.

EXAMPLE 16

Above: Screenshot of Vtech Direct webpage containing sign-in fields for logging in and accessing the online business-to-business store services. Below: Screenshot of Vtech Direct webpage advertising the online business-to-business store services.

Mark: VTECH DIRECT

Services: Providing a web site for online business-to-business store services featuring wireline telephony products and wireless fidelity streaming music devices; online business-to-business store featuring wireline telephony products and wireless fidelity streaming music devices, in Class 35.

Analysis:

  • Specimen is described as "pages from website" and appears to show the mark being used in both the advertising and rendering of the services.
  • Mark is displayed prominently in bold font on the top left of each webpage.
  • Services are referenced and indicated by the following:
    • "Sign In" fields are provided for accessing the online business-to-business store services, indicating that one may access the services by logging in.
    • "Tune in over 11,000 stations around the globe using wireless Internet access. Listen to music, sports, talk radio and more."
    • Image of an electronic streaming music device described as "IS9181 – (80-6569-02) Stream internet radio stations Stream digital music files stored on your PC or Mac Connect to your MP3 or CD player."
  • Mark-services association is present because it is customary to display service marks near the top of the webpage on which the services are advertised or through which they are accessed, rendered, and experienced. Here, the mark is near explicit textual references to the services, thus conveying the mark-services connection. The webpage showing the sign-in fields is an acceptable specimen since signing-in is a generally known means of accessing online services. Thus, the specimen is acceptable both as an advertisement and as showing the mark in rendering the services.

EXAMPLE 17

Left: Screenshot of McGowan Group webpage showing applicant's mark CashFlow Units for financial sevices offered by McGowan Group Asset Management company. Right: Screenshot of McGowanGroup webpage displaying applicant's mark CashFlow Units immediately above links to two documents, one for MGAM Wrap Program Assets Discretionary Advisory Agreement and the other for MGAM RIA Disclosure.

Mark: CASHFLOW UNITS

Services: Investment products, namely, wealth management and performance tracking, and providing financial advisory and financial portfolio management services, in Class 36.

Analysis:

  • Specimens are described as "webpages."
  • Mark is placed below "the McGowanGroup Asset Management banner."
  • The Board held the specimen acceptable as showing use of the mark in rendering the services based on the following findings:
    • "The disclosures at the bottom of one webpage inform the viewer that applicant is a ‘Federally Registered Investment Advisory Firm.’"
    • The mark "appears under the McGowanGroup Asset Management banner, thus informing the viewer that CASHFLOW UNITS are part of an asset management service."
    • Directly below the mark are links to two documents: (1) the "MGAM Wrap Program Assets Discretionary Advisory Agreement"; and (2) the "MGAM RIA Disclosure". The Board noted that the first document is the applicant’s contract and an offer to enter into an agreement for advisory services, and the second document is the applicant’s notice of compliance with the conflict of interest rules.
    • The mark on the webpage is placed "in close proximity to links for documents used by applicant in rendering those services" and "the links to these documents create an association between the mark and the offered service activity."

EXAMPLE 18

Screenshot of Ride411 webpage displaying search options for obtaining inforamtion about providers of car parts and car services.

Mark: RIDE 411

Relevant Services: Providing an online search engine service for new and used automobile listings and automobile related information; Providing specific information as requested by customers via the Internet; Provision of Internet search engines; Provision of search engines for the Internet, in Class 42.

Analysis:

  • Specimen is described as "screen shot of our website" and appears to be a webpage advertising some of the identified services and rendering other identified services.
  • Mark is displayed in large, color font on the top of the webpage.
  • Services are referenced in the following statements and indicated by the context in which they are rendered, as follows:
    • "Simply type any keyword(s) into our search engine to find a group of suppliers for exactly what you are looking for, or select from a category and drill down from there."
    • The wording "Your destination for hard to find classic car parts, services, events & more" and "FIND ... How can I find hard to locate parts for my classic car?" indicates the nature of the services provided.
    • Hyperlinks appear under "Locate Parts," "Locate Services," and "Search By Category."
  • Services are provided primarily for the benefit of others, i.e., the users are able to view the search results from a variety of sources from the Internet in one list.
  • Mark-services association is present because it is customary to display service marks near the top of the webpage on which the services are advertised or through which they are accessed, rendered, and experienced. Here, the mark is near textual references to the services, thus indicating the mark-services connection. The mark is also near indicia of the services, i.e., searchable links and categories for locating automobile parts and services, which is also sufficient to show a mark-services association. Thus, the specimen is acceptable both as an advertisement and as showing the mark in rendering the services.

EXAMPLE 19

Screenshot of an Apple electronic device displaying specific social networking activity with people and on topics the user follows.

Mark: (stylized speech bubbles)

Stylized Speech Bubble mark image

Services: Online social networking services, in Class 45.

Analysis:

  • Specimen is described as "screenshot of applicant’s software" and appears to show the mark used in rendering the services.
  • Mark is displayed in the color blue at the bottom of the screen of an electronic device.
  • Services are indicated by the following:
    • A highlighted "People" tab appears at the top of the screen, as does a search bar containing the wording "Search for people."
    • The wording "People I Follow (41)" indicates that the user follows 41 people and the screen shows a list of people being followed, each specifying the number of "people in common."
  • Applicant explained that the specimen is a screenshot from an Apple® handheld mobile device showing the mark used in rendering the services.
  • Mark-services association is present because the mark appears on the screen of an electronic device via which the online services are accessed, rendered, and experienced. Additionally, the mark is displayed on the screen below indicia implying the services as well as showing the services as they are accessed and rendered via the device. The context in which the mark is used, i.e., while the services are being performed and experienced, creates the association with the services. The presence of a third-party mark (AT&T®) displayed on the top left of the screenshot does not detract from the applicant’s mark being associated with the services. The AT&T® mark denotes the telecommunication company that provides the connection to the Internet, but it appears that the applicant’s services enable online social networking.

1301.04(ii)   Examples of Unacceptable Service-Mark Specimens

EXAMPLE 20

Screenshot of I0Bit webpage displaying information about distributing applicant's products, and about what applicant does.

Mark: IObit

Services: Computer programming; Computer software design; Conversion of data or documents from physical to electronic media; Data conversion of computer programs and data, not physical conversion; Duplication of computer programs; Hosting of web sites; Installation of computer software; Maintenance of computer software; Research and development for new products for others; Research and development of computer software; Updating and maintenance of computer software, in Class 42.

Analysis:

  • Specimen is a "screenshot from applicant’s website."
  • The Board found the following statements were vague and did not sufficiently reference the services:
    • "Our sincere commitment to all our customers is that we will continue delivering innovative system utilities that are as simple to use as they are powerful and reliable. We also promise that we will keep providing the first-class free software and online service, for personal or non-commercial use."
    • "We pursue the genuine ambition of becoming one of the world's top utility producers and Windows system service providers on the Internet."
  • It is unclear whether the reference to "online service" is to a separate service or part of the free software goods. The textual reference to becoming a top utility producer and Windows system service provider is not sufficient to indicate being a provider of the identified services.

EXAMPLE 21

Screenshot of Leading Edge Toners webpage for ordering ink and toner printer supplies.

Mark: LEADING EDGE TONERS

Goods: Numerous goods including toner; toner cartridges, in Class 2; components for laser toner cartridges; and printer parts, in Class 9; and Ink sticks, in Class 16.

Analysis:

  • Specimen is described as a "web page."
  • Mark is displayed in several places, including at the bottom right corner next to the copyright notice.
  • The Board noted that "where the mark is used with the copyright notice . . ., applicant assumed ‘without admitting’ that the use was solely as a trade name."
  • While the specimen is not acceptable for the identified goods, had the mark been used in connection with retail store or distributorship services, the specimen would likely have been acceptable due to the placement of the mark on the upper left corner of the webpage where service marks normally appear.

1301.05   Identification and Classification of Services

See TMEP §§1402.11 et seq. regarding identification of services, and TMEP §§1401 et seq. regarding classification.

1302    Collective Marks Generally

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--

  • (1) used by the members of a cooperative, an association, or other collective group or organization, or
  • (2) which such cooperative, association, or other collective group or organization has a bona fide intention to use in commerce and applies to register on the principal register established by this [Act], and includes marks indicating membership in a union, an association or other organization.

Under the Trademark Act, a collective mark must be 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 Laboratories, Inc. v. American Society 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 International Institute of Valuers, 223 USPQ 350 (TTAB 1984).  See TMEP §1303 concerning collective trademarks and service marks; TMEP §1304 concerning collective membership marks; and TMEP §1305, which distinguishes collective trademarks or service marks from trademarks and service marks used by collective organizations.

1302.01   History of Collective Marks

Section 4 of the Trademark Act of 1946, 15 U.S.C. §1054, provides for registration of both collective marks and certification marks, without distinguishing between them, but §45 of the Act, 15 U.S.C. §1127, defines collective marks and certification marks separately, as distinctly different types of marks.  (See TMEP §§1306 et seq. regarding certification marks.)

A brief history will serve to put these sections in perspective.  The earlier statutory provision, out of which §4 and the accompanying definitions in §45 grew, was the June 10, 1938 amendment of the Trademark Act of 1905.  Under the Act of 1905, registration could be based only on a person’s own use of a mark.  The purpose of the 1938 amendment was to provide 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 under the Act of 1905, as amended.  Section 45 of the Act of 1946 defined the separate types of marks.

See TMEP §1304.01 for additional history relating to collective membership marks.

1303    Collective Trademarks and Collective Service Marks

Collective trademarks and collective service marks indicate commercial origin of goods or services, but as collective marks they indicate that the party providing the goods or services is a member of a certain group and meets its standards for admission.  The mark is used by all members of the 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.

The collective organization itself neither sells goods nor performs services under the mark, but may advertise to publicize the mark and promote the goods or services sold by its members under the mark.  For example, an agricultural cooperative of produce sellers does not sell its own goods or render services, but promotes the goods and services of its members.

A specimen of use of a collective trademark or service mark must show use of the mark by a member on the member’s goods or in the sale or advertising of the member’s services.  37 C.F.R. §2.56(b)(3); TMEP §1303.02(b).

1303.01   Use of Collective Trademark and Collective Service Mark Is By Members

Applications for registration of collective trademarks and collective service marks are different in form from applications for registration of other trademarks and service marks, because of the difference in ownership and use of collective marks.

Under the definition of "collective mark" in §45 of the Trademark Act, 15 U.S.C. §1127, a collective mark must be owned by a collective entity.  The use of a collective trademark or collective service mark is by members of the collective.  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 by its members.

In an application based on §1(b), §44, or §66(a) of the Act, 15 U.S.C. §1051(b), 15 U.S.C. §1126, or 15 U.S.C. §1141f(a), the applicant must assert that the applicant has a bona fide intention, and is entitled, 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 (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)), alleging that the applicant is exercising legitimate control over the use of the mark in commerce by its members.

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 for the goods or services covered by the collective trademark or service mark registration.  See TMEP §1305.  The "anti-use-by-owner rule" of §4 of the Trademark Act, 15 U.S.C. §1054, does not apply to collective marks.  See Roush Bakery Products 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).  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 specifically to certification marks.

The same mark may not be used both as a collective mark and as a certification mark.  TMEP §1306.05(a).

1303.02   Examination of Collective Trademark and Collective Service Mark Applications

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.  Thus, the same standards generally applicable to trademarks and service marks are used in considering issues such as descriptiveness or disclaimers.  However, use and ownership requirements are slightly different due to the nature of collective marks.  See TMEP §§1303.02(c) et seq.  See TMEP §§1304 et seq. regarding examination of applications to register collective membership marks.

1303.02(a)   Classification of Goods and Services in Collective Trademark and Collective Service Mark Applications

The goods and services recited in collective trademark and collective service mark applications are assigned to the same classes that are appropriate for those goods and services in general, according to the classification schedules set forth in 37 C.F.R. §§6.1 and 6.2.  See TMEP §§1401 et seq. regarding classification.

1303.02(b)   Specimens of Use for Collective Trademark and Collective Service Mark Applications

A specimen of use of a collective trademark or service mark should show use of the mark by a member 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 should show use of the mark to indicate that the party providing the goods or services is a member of a certain group.  The manner of use required is similar to trademark or service mark use.  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 advertising for the services or in the rendering of the services.

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.

1303.02(c)   Special Elements of Collective Trademark and Collective Service Mark Applications

1303.02(c)(i)   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.  See 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.

1303.02(c)(ii)   Use by Members Indicated in Dates-of-Use Clause

When setting out dates of use of a collective mark on goods or in connection with services, in either a §1(a) application or an allegation of use filed in connection with a §1(b) application, the applicant must state that the mark was first used by members (or a member) of the applicant.

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, and is entitled, 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.

1305    Trademarks and Service Marks Used by Collective Organizations

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. National Cooperatives, 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.

1306    Certification Marks

1306.01   Definition of Certification Mark

Section 4 of the Trademark Act, 15 U.S.C. §1054, provides for the registration of "certification marks, including indications of regional origin."  Section 45 of the Trademark Act, 15 U.S.C. §1127, defines "certification mark" as follows:

The term "certification mark" means any word, name, symbol, or device, or any combination thereof--

  • (1) used by a person other than its owner, or
  • (2) which its owner has a bona fide intention to permit a person other than the owner to use in commerce and files an application to register on the principal register established by this [Act],

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.

A certification mark "is a special creature created for a purpose uniquely different from that of an ordinary service mark or trademark...."  In re Florida Citrus Commission, 160 USPQ 495, 499 (TTAB 1968).

There are generally three types of certification marks.  First, there are certification marks that certify that goods or services originate in a specific geographic region (e.g., ROQUEFORT for cheese).  See Community of Roquefort v. William Faehndrich, Inc., 303 F.2d 494, 133 USPQ 633 (2d Cir. 1962); State of Florida, Department of Citrus v. Real Juices, Inc., 330 F. Supp. 428, 171 USPQ 66 (M.D. Fla. 1971) (SUNSHINE TREE for citrus from Florida); Bureau Nat’l Interprofessionnel Du Cognac v. International Better Drinks Corp., 6 USPQ2d 1610 (TTAB 1988) (COGNAC for distilled brandy from a region in France).  See TMEP §§1306.02 et seq.

Second, there are certification marks that certify that the goods or services meet certain standards in relation to quality, materials, or mode of manufacture (e.g., approval by Underwriters Laboratories).  See Midwest Plastic Fabricators Inc. v. Underwriters Laboratories Inc., 906 F.2d 1568, 15 USPQ2d 1359 (Fed. Cir. 1990) (UL certifies, among other things, representative samplings of electrical equipment meeting certain safety standards); In re Celanese Corp. of America, 136 USPQ 86 (TTAB 1962) (CELANESE certifies plastic toys meeting certifier’s safety standards).

Third, certification marks may certify that the work or labor on the products or services was performed by a member of a union or other organization, or that the performer meets certain standards.  See TMEP §1306.03 and cases cited therein for further information.

There are two characteristics that differentiate certification marks from trademarks or service marks.  First, a certification mark is not used by its owner and, second, a certification mark does not indicate commercial source or distinguish the goods or services of one person from those of another person.  See TMEP §1306.09(a) for a discussion of the distinction between a certification mark and a collective trademark, collective service mark, or collective membership mark.

See Holtzman, Certification Marks: An Overview, 81 Trademark Rep. 180 (1991).

1306.01(a)   Use Is by Person Other than Owner

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 §1306.06(f)(ii) 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.

1306.01(b)   Purpose Is to Certify, Not to Indicate Source

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.  In certifying, the same 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.

1306.02   Geographic Certification Marks that Are Indications of Regional Origin

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; TMEP §1306.02(b)(i)(A).  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 §1306.02(k) for additional examples of geographic certification marks.

As with any type of 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.

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 §1306.02(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 §1306.02(f). But, as explained in TMEP §1306.02(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 §1306.02(g).

Applications for geographic certification marks must include all of the standard elements of a certification-mark application. See TMEP §1306.06(f). As discussed in TMEP §1306.02(b), additional considerations apply to some of the elements.

1306.02(a)   Identifying Geographic Certification Mark Applications

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), 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 geographic certification mark based on a review of the information in the application, which should include a certification statement indicating the mark’s use, or intended use, in certifying regional origin. 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 e-mail communication. See 37 C.F.R. §2.61(b); TMEP §§1306.09-1306.09(b). Any clarification regarding the certification statement that is received by informal communication must be recorded in a Note to the File. In addition, certain required elements, such as those discussed in TMEP §1306.02(b), may be missing or unacceptable, and the applicant will be required to provide or amend them.

1306.02(b)   Elements of Geographic Certification Mark Applications

1306.02(b)(i)   Certification Statement

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. Thus, the mark is geographically deceptive as to those goods or services and must be refused accordingly. See TMEP §1306.02(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 §1306.06(f)(i). 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 authorized persons, certifies (or is intended to certify) . . . ." See TMEP §1306.06(f)(i). The following are examples of acceptable certification statements for geographic certification marks:

The certification mark, as used by authorized persons, 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.

The certification mark, as used by authorized persons, certifies 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.

1306.02(b)(ii)   Certification Standards

A copy of the relevant certification standards must be submitted when the mark owner claims use of the mark. 37 C.F.R §2.45. The certification standards need not have been created by the mark owner, and may instead be standards established by another party, such as those promulgated by a government agency or developed by a private research organization.

The certification standards must, however, encompass the full scope of the goods or services identified in the application. So, if the application identifies the goods as "olive oil," but the submitted certification standards apply only to extra virgin olive oil, the applicant must amend the identification to limit it to "extra virgin olive oil" or, if possible, submit standards that cover various types of olive oil.

1306.02(b)(iii)   Identification of Goods and Services

If the certification program, as described in the certification standards, is not limited to particular types of goods or services, the identification of goods and services need only indicate the general category of goods or services to which the mark will apply (e.g., "clothing," "electrical products," "restaurants," or "insurance services"). Thus, the usual level of specificity that is required for identifications in trademark and service mark applications is not required for certification mark identifications.

Furthermore, the identification in an application for a geographic certification mark need not refer to the relevant geographic origin of the goods or services. For example, the identification of goods for the geographic certification mark WISCONSIN REAL CHEESE is simply "dairy products, namely, cheese."

1306.02(b)(iv)   Classification of Goods and Services

Section 1 and §44 Applications

Certification mark applications based on Trademark Act §1 or §44 classify goods in Class A and services in Class B. 37 C.F.R. §6.3.

Section 66(a) Applications

In a §66(a) certification mark application, the goods or services will be classified in the relevant international class by the International Bureau; the USPTO will not reclassify the goods and services into U.S. Classes A and B. See TMEP §1401.03(d). However, a §2(d) search conducted in accordance with appropriate USPTO search procedures will return all relevant marks, whether the goods and services are classified in U.S. classes or international classes.

1306.02(b)(v)   Authority to Control a Geographic Certification Mark

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. When, however, circumstances make it desirable or necessary for many or all persons in a region to use the name of the region to indicate the origin of their goods, there would be no opportunity for the name to become distinctive for only one person. The term would be used by all persons in the region, not as a trademark indicating commercial origin, but as a certification mark indicating regional origin. Thus, the entity that has authority to exercise control over the use of a geographic certification mark will generally be a governmental body or a body operating with governmental authorization.

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.

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.

1306.02(b)(vi)   Specimens of Use

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 advertising or rendering 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. 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).

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 §1306.02(k), 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 §1306.02(k), 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.

1306.02(c)   Mark Must Serve to Certify Geographic Origin

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 to refer 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.

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 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, 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 prove by clear evidence that a designation is generic. Relevant evidence may include the following:

  • product information from the applicant or the producers of the relevant goods or services;
  • definitions in dictionaries or other reference materials;
  • trade publications, newspapers, magazines, and other periodicals that use the term generically; and
  • any other competent evidence of generic use of the term in the marketplace by producers and consumers.

Tea Bd. of India, 80 USPQ2d at 1887; In re Cooperativa Produttori Latte E Fontina Valle D'Acosta, 230 USPQ at 133-34.

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 mark is not generic, the applicant’s specimen of use may fail to demonstrate that the mark functions as a certification, in which case the registration should be refused accordingly. See TMEP §1306.02(b)(vi).

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.

1306.02(d)   Section 2(e)(2) Does Not Apply to Geographic Certification Marks

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 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.

1306.02(e)   Geographically Deceptive Marks Not Registrable as Geographic Certification Marks

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.

1306.02(f)   Geographic Designations that Do Not Certify Regional Origin

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.

1306.02(g)   Likelihood-of-Confusion Search and Analysis

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 § 1306.02(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. See Institute 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); Brown-Forman Corp., 47 USPQ2d at 1891; TMEP §1306.06. 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. See TMEP §1306.06.

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.

1306.02(g)(i)   Mark Is a Geographic Certification Mark

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 §1306.06(f)(iii). 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.

1306.02(g)(ii)   Mark Contains a Geographic Designation but Is Not a Geographic Certification Mark

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 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. 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 Institute 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.

1306.02(h)   Same Mark Not Registrable as a Certification Mark and Another Type of Mark

Because a certification mark’s purpose and function differ significantly from those of other types of marks, 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 §1306.05(a). Likewise, if a mark is registered as something other than a certification mark, the same owner may not register the mark as a certification mark for the same goods or services. In these circumstances, 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 §1306.05(a).

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, can create different marks that may coexist on the register. See TMEP §1306.05(a).

1306.02(i)   American Viticultural Areas

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), http://www.ttb.gov/wine/ava.shtml (accessed June 30, 2014). The currently recognized AVA designations can be found at 27 C.F.R. §§9.22-9.233. 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 http://www.ttb.gov/appellation/us_by_ava.pdf.

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 Administrator for Trademark Policy and Procedure before taking any action on the application.

1306.02(j)   Certification Marks Containing §2(b) Matter

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).

1306.02(k)   Examples of Geographic Certification Marks

Example 1

Mark: IDAHO (typed drawing)

Specimen consisting of a box featuring the mark.

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 consisting of a rectangle containing the outline of the state of Idaho and the words GROWN IN IDAHO.

Mark

Specimen consisting of a bag of potatoes featuring the 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 consisting of the word ROQUEFORT in stylized letters

Mark

Specimen consisting of a cheese label featuring the 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 §1306.02(b)(i) regarding the preferred form and content of the certification statement.

Example 4

Mark consisting of a stylized citrus tree and the wording A PRODUCT OF THE FLORIDA SUNSHINE TREE

Mark

A specimen consisting of a orange juice label featuring the 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 §1306.02(b)(i) regarding the preferred form and content of the certification statement.

Example 5

Mark: RECIOTO (standard characters)

Specimen consisting of a wine label featuring the mark

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 consisting of a stylized cow

Mark

Specimen consisting of a cheese label featuring the 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 §1306.02(b)(i) regarding the preferred form and content of the certification statement

Example 7

Mark consisting of the shape of the state of Texas inside an open circle above the words GO TEXAN

Mark

Specimen consisting of a brochure featuring the 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 consisting of the wording DARJEELING and a stylized woman holding tea leaves

Mark

Specimen consisting of tea packaging featuring the 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 §1306.02(b)(i) regarding the preferred form and content of the certification statement.

Example 9

Mark: VIDALIA (typed drawing)

Specimen consisting of the wrapper for a bag of onions bearing the VIDALIA mark

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."

1306.03   Certification Marks Certifying that Labor Was Performed by Specific Group or Individual

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 National Institute for Automotive Service Excellence, 218 USPQ 744, 747 (TTAB 1983).  See also American Speech-Language-Hearing Ass’n v. National Hearing Aid Society, 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 National Ass’n of Purchasing Management, 228 USPQ 768 (TTAB 1986) (C.P.M. used merely as title or degree, not as certification mark); In re National 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 National Institute for Automotive Service 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 Institute of Certified Professional Business 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 Professional 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 University of Mississippi, 1 USPQ2d 1909 (TTAB 1987) (use of university seal on diplomas did not represent use as a certification mark).

See TMEP §1306.09(a) regarding the difference between a certification mark and a collective mark.

1306.04   Ownership of Certification Marks

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 Electrical Cord Committee, 125 USPQ 310 (TTAB 1960).

Certification is often the sole activity 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 goods or services.  See TMEP §1306.05(a).

Examples of organizations which 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.

As another example, a magazine publisher may 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 original with 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 §1306.06(f)(ii) 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(e)).

See TMEP §1306.02(b)(v) regarding the authority to control a geographic certification mark.

1306.05   Characteristics of Certification Marks

The Trademark Act does not require that a certification mark be in any specific form or include any specific wording.  A certification mark can 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, which is natural since 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 entirely lacks this wording can perform the function of certification.

The examining attorney must look to the 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).

See TMEP §1306.02─1306.02(a) regarding the characteristics of geographic certification mark applications.

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.

1306.05(b)   Cancellation of Applicant’s Prior Registration Required by Change from Certification Mark Use to Trademark or Service Mark Use, or Vice Versa

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.

1306.06   Examination of Certification Mark Applications

Except where otherwise specified herein, the same standards 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 §§1306.02 et seq. regarding certification marks indicating regional origin only.)

Regarding the application of §2(e) of the Trademark Act, 15 U.S.C. §1052(e), to certification marks, see Community of Roquefort v. Santo, 443 F.2d 1196, 170 USPQ 205 (C.C.P.A. 1971); In re National Ass’n of Legal Secretaries (Int’l), 221 USPQ 50 (TTAB 1983).

Regarding the application of §2(d), 15 U.S.C. §1052(d), the test for determining likelihood of confusion is the same for certification marks – the du Pont analysis. 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); Stabilisierrungsfonds fur Wein v. Peter Meyer Winery GmbH, 9 USPQ2d 1073 (TTAB 1988); E.I. duPont de Nemours & Co. v. Yoshida Int’l, Inc., 393 F. Supp. 502, 185 USPQ 597 (E.D.N.Y. 1975).

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. v. Respect Sportswear, Inc., 83 USPQ2d at 1559-60); see also Jos. S. Cohen & Sons Co. v. Hearst Magazines, Inc., 220 F.2d 763, 765, 105 USPQ 269, 271 (C.C.P.A. 1955).

A refusal to register because the subject matter does not function as a certification mark is predicated on §§1, 2, 4, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, 1054, and 1127.  For example, educational or other degrees or titles awarded to individuals, and used only as personal titles or degrees, are not certification marks.  So used, titles and degrees indicate qualifications or attainments of the person; they do not pertain to or certify services that have been performed by the person.  See TMEP §1306.03.

See TMEP §§1306.02–1306.02(k) regarding the examination of geographic certification mark applications.

1306.06(a)   The Mark on the Drawing

The drawing in the application must include the entire certification mark, but it should not include anything that is not part of the mark.  The examining attorney must refer to the specimen to determine what constitutes the mark.  See In re National Institute for Automotive Service Excellence, 218 USPQ 744 (TTAB 1983).  In evaluating the drawing, the same standards used in relation to trademark and service mark drawings apply to certification marks (see TMEP §§807 et seq.).

1306.06(b)   Specimens of Use for Certification Marks

A certification mark specimen must show how a person other than the owner uses the mark to certify 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, it is used in a manner analogous to that of a trademark or a service mark (i.e., on a label, tag, or container for the goods, a display associated with the goods, or in the performance or advertising of services).  Thus, materials that bear the mark, and are actually attached or applied to the goods or used in relation to the services by the persons authorized to use the mark, constitute proper specimens.

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 Institute, Inc., 110 USPQ 258 (Comm’r Pats. 1956).  These tags or labels are acceptable specimens.

The same standards used to evaluate the acceptability of trademark and service mark specimens also apply to certification marks.  See TMEP §§904 et seq.

1306.06(c)   Relation Between Certification Mark and Trademark or Service Mark on Specimens

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 of the circumstances to ascertain whether the mark is a certification mark rather than a trademark or service mark.  See also TMEP §1306.09.

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 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.

The trademark or service mark must be owned by the same person who owns the certification mark.  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 owned by another, the examining attorney should refuse registration of the certification mark.

1306.06(d)   Classification of Goods and Services in Certification Mark Applications

Section 1 and §44 Applications

In applications to register certification marks, all goods are classified in Class A and all services are classified in Class B.  37 C.F.R. §6.3.  Both Classes A and B (but not any other classes) may be included in one application.  See TMEP §§1403 et seq. 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 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 Classes A and B for certification marks was made by amendment of the Trademark Rules on August 15, 1955.

Section 66(a) Applications

In a §66(a) application, classification is determined by the 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 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 certification mark, or appears to be a certification mark, the USPTO will not reclassify it into Class A or B.  However, the examining attorney must ensure that the applicant complies with all other United States requirements for certification marks, regardless of the classification chosen by the IB.

1306.06(e)   Identification of Goods and Services in Certification Mark Applications

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.  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 §1306.06(f)(i).

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 general kinds of goods and services, such as food, agricultural commodities, electrical products, textile materials, printed material, insurance agency 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 goods or services, for example, wine, wood doors, or bakery machinery, then the identification in the application must also reflect this limitation.

The terms "certification," "certify," or "certifies" should not be included in the identification, which should be limited to the goods or services, as in the following examples:

Building, construction, and safety materials and products, in International Class A

Medical services in the field of addiction medicine and treatment, in International Class B

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(d).  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).

1306.07   Relationship of §14 (Cancellation) to Examination of Certification Mark Applications

15 U.S.C. §1064  (Extract) Cancellation.

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 provisions of §14(5) are applicable in ex parte examination as follows:

Subsection A:  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 of the certification mark.  TMEP §1306.06(f)(iii).  Such statement is accepted, unless the examining attorney has knowledge of facts indicating that it should not be accepted.

Subsection B:  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.  TMEP §1306.06(f)(v).  Such statement is accepted, unless the examining attorney has knowledge of facts indicating the contrary.

Subsection C:  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:  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 Office has never undertaken to 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.

1306.08   Registration of Certification Mark on Basis of Foreign Registration

A certification mark may be registered in the United States under §44 of the Trademark Act, on the basis of a foreign registration.  However, whether a particular foreign registration is acceptable as the basis for a United States registration depends on the scope of the foreign registration.

A person may not obtain a registration in the United States that is broader in scope than the foreign registration on which the United States application is based.  See In re Löwenbräu München, 175 USPQ 178 (TTAB 1972); TMEP §1402.01(b).  Therefore, 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.  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 right is not always immediately apparent from a foreign registration certificate.  Foreign registration certificates are not always labeled as pertaining to a trademark, service mark, collective mark, or certification mark and, when they are labeled, the significance of the term 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.

Since certification is an exception in the larger world of trademarks, an indication of certification in the registration certificate would normally represent a conscious decision that a certification situation exists.  Therefore, 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).

1306.09   Uncertainty Regarding Type of Mark

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 for further explanation as to the activities in which the mark is used and should require a sufficient disclosure of the facts to enable a proper examination to be made, pursuant to 37 C.F.R. §2.61(b).  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.

1306.09(a)   Distinction Between Certification Mark and Collective 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 American Speech-Language-Hearing Ass’n v. National Hearing Aid Society, 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 §1306.03.  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.

1306.09(b)   Distinguishing Certification Mark Use from Related-Company Use of Trademark or Service Mark

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 America, 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.  Monsanto, 201 USPQ at 870.

1306.09(c)   Patent Licenses

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.  In most cases, these marks have been registered as trademarks, on the basis of related-company use.  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.

1307    Registration as Correct Type of Mark

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 National Trailways Bus System v. Trailway Van Lines, Inc., 269 F. Supp. 352, 155 USPQ 507 (E.D.N.Y. 1965); American Speech-Language-Hearing Ass’n v. National Hearing Aid Society, 224 USPQ 798 (TTAB 1984).