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.