1306.03    Special Elements of Certification Mark Applications

1306.03(a)    Certification Statement

The application must contain a statement of the characteristic, standard, or other feature that is certified or intended to be certified by the mark, also known as the certification statement. The certification statement should begin with wording, "The certification mark, as used or intended to be used by persons authorized by the certifier, certifies or is intended to certify that the goods/services provided have . . . ." See 37 C.F.R. §2.45(a)(4)(i)(A), (a)(4)(ii)(A), (a)(4)(iii)(B), (a)(4)(iv)(B), (a)(4)(v)(A).

The certification statement must be sufficiently detailed to give proper notice of what is being certified. All of the characteristics or features that the mark certifies should be included. A certification mark application is not limited to certifying a single characteristic or feature.

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, indicating that "quality" is being certified does not inform the public of what is being certified where the characteristic being certified is limited, for example, to the strength of a material, or the purity of a strain of seed.

The certification statement 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.

Amendments that would materially alter the certification statement must not be permitted. 37 C.F.R. §2.71(e).

The statement of what the mark certifies is a separate requirement from that of the identification of goods and/or services.

See TMEP §1306.05(b)(i) for information regarding the certification statement for geographic certification marks.

1306.03(b)    Certification Standards – Required for §1(a) Applications and Allegations of Use Only

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(a)(4)(i)(B). 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. §§2.76(b)(5), 2.88(b)(5).

The standards do not have to be originally created by 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."

1306.03(c)    Statement that Applicant Is Not Engaged in (or Will not Engage in) Production or Marketing of the Goods/Services

For applications based on §1(a) of the Act, the application must contain a statement that the applicant is not engaged in the production or marketing of the goods or services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant. 37 C.F.R. §2.45(a)(4)(i)(C). For applications based on §1(b), §44, or §66(a) of the Act, the application must contain a statement that the applicant will not engage in the production or marketing of the goods or services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant. 37 C.F.R. §2.45(a)(4)(ii)(B), (a)(4)(iii)(B), (a)(4)(iv)(B), (a)(4)(v)(A). This statement does not have to be verified and, therefore, may be entered by examiner’s amendment.