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
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
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
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
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
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
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
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
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
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.