1303 Collective Trademarks and Collective Service Marks
Collective trademarks and collective service marks indicate commercial origin of goods or services, but as collective marks they indicate that the party providing the goods or services is a member of a certain group and meets its standards for admission. The mark is used by all members of the group; therefore, no one member can own the mark, and the collective organization holds the title to the collectively used mark for the benefit of all members of the group.
The collective organization itself neither sells goods nor performs services under the mark, but may advertise to publicize the mark and promote the goods or services sold by its members under the mark. For example, an agricultural cooperative of produce sellers does not sell its own goods or render services, but promotes the goods and services of its members.
A specimen of use of a collective trademark or service mark must show use of the mark by a member on the member’s goods or in the sale or advertising of the member’s services. 37 C.F.R. §2.56(b)(3); TMEP §1303.02(b).
1303.01 Use of Collective Trademark and Collective Service Mark Is By Members
Applications for registration of collective trademarks and collective service marks are different in form from applications for registration of other trademarks and service marks, because of the difference in ownership and use of collective marks.
Under the definition of "collective mark" in §45 of the Trademark Act, 15 U.S.C. §1127, a collective mark must be owned by a collective entity. The use of a collective trademark or collective service mark is by members of the collective. 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 by its members.
In an application based on §1(b), §44, or §66(a) of the Act, 15 U.S.C. §1051(b), 15 U.S.C. §1126, or 15 U.S.C. §1141f(a), the applicant must assert that the applicant has a bona fide intention to exercise legitimate control over the use of the mark in commerce by its members. In a §1(b) application, before the mark can register, the applicant must file an allegation of use (i.e., either an amendment to allege use under 15 U.S.C. §1051(c), or a statement of use under 15 U.S.C. §1051(d)), alleging that the applicant is exercising legitimate control over the use of the mark in commerce by its members.
In certain situations, notwithstanding the use of a collective trademark or collective service mark by the members of the collective, the collective itself may also use the same mark as a trademark for the goods or services covered by the collective trademark or service mark registration. See TMEP §1305. The "anti-use-by-owner rule" of §4 of the Trademark Act, 15 U.S.C. §1054, does not apply to collective marks. See Roush Bakery Products Co. v. F.R. Lepage Bakery Inc., 4 USPQ2d 1401 (TTAB 1987), aff’d, 851 F.2d 351, 7 USPQ2d 1395 (Fed. Cir. 1988), withdrawn, vacated and remanded, 863 F.2d 43, 9 USPQ2d 1335 (Fed. Cir. 1988), vacated and modified, 13 USPQ2d 1045 (TTAB 1989). The Trademark Law Revision Act of 1988, which became effective on November 16, 1989, amended §4 to indicate that the "anti-use-by-owner rule" in that section applies specifically to certification marks.
The same mark may not be used both as a collective mark and as a certification mark. TMEP §1306.05(a).
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. Thus, the same standards generally applicable to trademarks and service marks are used in considering issues such as descriptiveness or disclaimers. However, use and ownership requirements are slightly different due to the nature of collective marks. See TMEP §§1303.02(c) et seq. See TMEP §§1304 et seq. regarding examination of applications to register collective membership marks.
1303.02(a) Classification of Goods and Services in Collective Trademark and Collective Service Mark Applications
The goods and services recited in collective trademark and collective service mark applications are assigned to the same classes that are appropriate for those goods and services in general, according to the classification schedules set forth in 37 C.F.R. §§6.1 and 6.2. See TMEP §§1401 et seq. regarding classification.
1303.02(b) Specimens of Use for Collective Trademark and Collective Service Mark Applications
A specimen of use of a collective trademark or service mark should show use of the mark by a member on the member’s goods or in the sale or advertising of the member’s services. 37 C.F.R. §2.56(b)(3).
The specimen should show use of the mark to indicate that the party providing the goods or services is a member of a certain group. The manner of use required is similar to trademark or service mark use. For example, collective trademark specimens should show the mark used on the goods or packaging for the goods; collective service mark specimens should show the mark used in advertising for the services or in the rendering of the services.
The purpose of the mark must be to indicate that the product or service is provided by a member of a collective group. However, the specimen itself does not have to state that purpose explicitly. The examining attorney should accept the specimen if the mark is used on the specimen to indicate the source of the product or service, and there is no information in the record that is inconsistent with the applicant's averments that the mark is a collective mark owned by a collective group and used by members of the group.
1303.02(c) Special Elements of Collective Trademark and Collective Service Mark Applications
1303.02(c)(i) Manner of Control
In addition to specifying and containing all elements that are applicable for trademarks, an application for registration of a collective mark under §1(a) of the Act must specify the class of persons entitled to use the mark, indicating their relationship to the applicant, and the nature of the applicant’s control over the use of the mark. 37 C.F.R. §2.44(a).
In addition to specifying and containing all elements that are applicable for trademarks, an application for registration of a collective mark under §1(b), §44, or §66(a) of the Act must specify the class of persons intended to be entitled to use the mark, indicating what their relationship to the applicant will be, and the nature of the control the applicant intends to exercise over the use of the mark. See 37 C.F.R. §2.44(b).
The following language may be used for the above purpose:
Applicant controls (or, if the application is being filed under §1(b), §44, or §66(a), applicant intends to control) the use of the mark by the members in the following manner: [specify].
A statement that the applicant’s bylaws or other written provisions specify the manner of control, or intended manner of control, will be sufficient.
1303.02(c)(ii) Use by Members Indicated in Dates-of-Use Clause
When setting out dates of use of a collective mark on goods or in connection with services, in either a §1(a) application or an allegation of use filed in connection with a §1(b) application, the applicant must state that the mark was first used by members (or a member) of the applicant.