1304.03    Examination of Collective Membership Mark Applications

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 Indus. Inc. v. Bane-Clene Corp., 35 USPQ2d 1832, 1837 (TTAB 1994); In re Ass’n of Energy Eng’rs, Inc., 227 USPQ 76, 77 (TTAB 1985); In re Int’l Ass’n for Enterostomal Therapy, Inc., 218 USPQ 343 (TTAB 1983). However, use (specimens) and ownership requirements are slightly different due to the nature of collective membership marks indicating membership rather than commercial origin.

See TMEP §1207.04 for information regarding seeking a concurrent use registration.

1304.03(a)    Ownership Considerations

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."

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 Eng’g Corp., 170 USPQ 292 (TTAB 1971).

To apply to register a collective membership mark, the collective organization which owns the mark must be a person capable of suing and being sued in a court of law. See 15 U.S.C. §1127; TMEP §803.01. The persons who compose a collective group may be either natural or juristic persons.

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 by the members and, therefore, owns or is entitled to use the mark. See 15 U.S.C. §1054; In re Stencel Aero Eng’g Corp., 170 USPQ 292 (TTAB 1971). Application may not be made by a mere member.

1304.03(b)    Specimen Refusals Specific to Collective Membership Marks

1304.03(b)(i)    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) (holding that use of Greek letter abbreviations on athletic jerseys did not function as collective membership marks indicating membership in Greek letter societies); In re Mountain Fuel Supply Co., 154 USPQ 384 (TTAB 1967) (holding that the design on a jewelry pin merely indicated longevity of service rather than membership in a collective organization). If a proposed mark does not function as a mark indicating membership, the examining attorney must refuse registration under §§1, 2, 4, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, 1054, 1127. See TMEP § 1304.03(b)(ii) regarding specimens showing use as degrees or titles. See TMEP § 904.07(b) for information about matter that fails to function as a trademark or service mark.

1304.03(b)(ii)    Degree or Title Designations

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 Int’l Inst. 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 organization); see also In re Nat’l Soc’y of Cardiopulmonary Technologists, Inc., 173 USPQ 511 (TTAB 1972); cf. In re Thacker, 228 USPQ 961 (TTAB 1986); In re Nat’l Ass’n of Purchasing Mgmt., 228 USPQ 768 (TTAB 1986); In re Mortg. Bankers Ass’n of Am., 226 USPQ 954 (TTAB 1985).

If the proposed mark functions merely as a degree or title, the examining attorney must refuse registration under §§1, 2, 4, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, 1054, 1127, on the ground that the matter does not function as a collective membership mark. See TMEP §1304.03(b)(i).

1304.03(c)    Likelihood of Confusion

Likelihood of confusion may arise from the contemporaneous use, by one party, 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 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).

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 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).