1302 Collective Marks Generally
Section 45 of the Trademark Act, 15 U.S.C. §1127, defines "collective mark" as follows:
The term "collective mark" means a trademark or service mark--
- (1) used by the members of a cooperative, an association, or other collective group or organization, or
- (2) which such cooperative, association, or other collective group or organization has a bona fide intention to use in commerce and applies to register on the principal register established by this [Act], and includes marks indicating membership in a union, an association, or other organization.
Under the Trademark Act, a collective mark is owned by a collective entity even though the mark is used by the members of the collective.
There are basically two types of collective marks: (1) collective trademarks or collective service marks; and (2) collective membership marks. The distinction between these types of collective marks is explained in Aloe Creme Labs., Inc. v. Am. Soc'y for Aesthetic Plastic Surgery, Inc., 192 USPQ 170, 173 (TTAB 1976), as follows:
A collective trademark or collective service mark is a mark adopted by a "collective" (i.e., an association, union, cooperative, fraternal organization, or other organized collective group) for use only by its members, who in turn use the mark to identify their goods or services and distinguish them from those of nonmembers. The "collective" itself neither sells goods nor performs services under a collective trademark or collective service mark, but the collective may advertise or otherwise promote the goods or services sold or rendered by its members under the mark. A collective membership mark is a mark adopted for the purpose of indicating membership in an organized collective group, such as a union, an association, or other organization. Neither the collective nor its members uses the collective membership mark to identify and distinguish goods or services; rather, the sole function of such a mark is to indicate that the person displaying the mark is a member of the organized collective group.
See also In re Int'l Inst. of Valuers, 223 USPQ 350 (TTAB 1984) . See TMEP §1303 concerning collective trademarks and service marks; TMEP §1304 concerning collective membership marks; and TMEP §1305 concerning the distinction between collective trademarks or service marks from trademarks and service marks used by collective organizations.
1302.01 Brief History of Collective Marks
Under the Trademark Act of 1905, registration could be based only on a person’s own use of a mark. The Act did not permit for registration of collective and certification marks because such marks are generally used by a member of a collective organization or an authorized user, while the owner of the mark exercises legitimate control over this use by others. However, the June 10, 1938 amendment to the Act of 1905, out of which §4 and the accompanying definitions in §45 grew, changed this limitation on use and provided for registration of a mark by an owner who "exercises legitimate control over the use of a collective mark." "Collective marks," however, were not defined in the federal statute until implementation of Section 45 of the Act of 1946.
Section 4 of the Trademark Act of 1946 provides the authority for the registration of collective and certification marks by persons exercising legitimate control over their use, even in the absence of an industrial or commercial establishment. 15 U.S.C. §1054. Section 45 defines collective marks and certification marks separately, as distinctly different types of marks. 15 U.S.C. §§1054, 1127. Additionally, the definition of collective mark in §45 encompasses collective trademarks and collective service marks, as well as collective membership marks, which indicate membership in a union, association, or other organization. 15 U.S.C. §1054. See TMEP §1306 regarding certification marks.