1306.04(b) Ownership
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 Elec. Cord Comm., 125 USPQ 310 (TTAB 1960) .
Certification is often the sole purpose 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 the same goods or services. See 37 C.F.R. §2.45(f); TMEP §1306.04(f).
Examples of organizations that 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.
A magazine publisher may also 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 created by 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 §1306.03(b) 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(b)).
See TMEP §1306.04(d)(i) regarding appearance of a trademark or service mark in a certification mark or on a specimen, and §1306.05(b)(ii) regarding the authority to control a geographic certification mark.
1306.04(b)(i) Exercise of Control
As stated in the application requirements, an application based on use in commerce under §1(a) of the Trademark Act, and an allegation of use under 15 U.S.C. §1051(c) or 15 U.S.C. §1051(d) filed in connection with a §1(b) application, must include a verified statement that the applicant is exercising legitimate control over the use of the certification mark in commerce. 37 C.F.R. §§2.45(a)(4)(i)(F), 2.76(b)(1)(v), 2.88(b)(1)(v). For an application based on §1(b), §44, or §66(a) of the Act, the verified statement must specify that the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the certification mark in commerce. 37 C.F.R. §§2.45(a)(4)(ii)(C), (a)(4)(iii)(C), (a)(4)(iv)(C), (a)(4)(v)(B).
If there is any evidence of record that casts doubt as to the existence or nature of such control by the applicant, the examining attorney must 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).
1306.04(b)(ii) 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 Am., 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. In re Monsanto Co., 201 USPQ at 870.
1306.04(b)(iii) 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. Typically, these marks have been registered as trademarks, on the basis of related-company use, rather than as certification marks. 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.