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. See 15 U.S.C. §1054. Thus, the same standards generally applicable to trademarks and service marks are used in considering issues such as descriptiveness, disclaimers, likelihood of confusion, and deceptiveness. However, use (specimens) and ownership requirements are slightly different due to the nature of collective marks. See TMEP §§ 1303.01(a)(i)-(a)(v). See TMEP § 1303.01(a)(i)(C) regarding specimens for collective marks. See TMEP §1207.04 for information regarding a concurrent use registration.
1303.02(a) Ownership Considerations
Under the definition of "collective mark" in §45 of the Trademark Act, a collective mark must be owned by a collective entity. 15 U.S.C. §1127. The use of a collective trademark or collective service mark is by members of the collective, but no member may own the collective mark. That is, application may not be made by a mere member. 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.
1303.02(b) Likelihood of Confusion
Likelihood of confusion may arise from the contemporaneous use of a collective trademark or collective service 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 marks. See 15 U.S.C. §1052(d); cf. In re Nat’l 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).
TThe finding of likelihood of confusion between a collective trademark or collective service mark and a trademark or service mark is not based on confusion as to the source of any goods or services 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. Cf. In re Code Consultants Inc., 60 USPQ2d 1699, 1701 (TTAB 2001).