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.