1304.02    Application Requirements for Collective Membership Marks

Under 37 C.F.R. §2.44, a complete application for a collective membership mark must include the following:

  • (1) the legal name and physical address of the applicant (see TMEP §§803.02, 803.05);
  • (2) the applicant’s legal entity type (see TMEP §803.03);
  • (3) the applicant’s citizenship or the jurisdiction under whose laws the applicant is organized, and if the applicant is a domestic partnership or joint venture, the names and citizenship of the general partners or active members of the joint venture (see TMEP §§803.03(b), 803.04);
  • (4) a description of the mark if the mark is not in standard characters (see TMEP §808);
  • (5) a translation/transliteration of any foreign wording in the mark (see TMEP §809);
  • (6) a drawing of the mark sought to be registered (see TMEP §807);
  • (7) a filing fee (see TMEP §810);
  • (8) a description of the nature of the membership organization such as by type, purpose, or area of activity of the members (see TMEP §1304.02(c));
  • (9) classification in U.S. Class 200 for a §1 or §44 application, or the classification assigned by the IB for a §66(a) application (see TMEP §1304.02(d); and
  • (10) a filing basis (see TMEP §§1304.02(a) - (a)(vi)), including verification of certain statements signed by the applicant or a person properly authorized to sign on behalf of the applicant (see TMEP §§1304.02(b) - b)(ii)).

37 C.F.R. §2.44(a)(1), (a)(2)(ii), (a)(3)(ii), (a)(4).

Requirements that differ in form from those in trademark or service mark applications. Most application requirements for collective membership marks are the same as those for regular trademarks and service marks. However, the filing basis, verification, identification, and classification requirements for collective membership mark applications differ in form from other trademark and service mark applications because of the difference between who owns and uses collective membership marks. See TMEP §§1304.02(a) - (a)(v) for information regarding filing basis requirements, TMEP §§1304.02(b) - (b)(ii) for information regarding the verification of certain statements, TMEP § 1304.02(c) for identification requirements, and TMEP § 1304.02(d) for classification requirements in collective membership mark applications.

See TMEP Chapter 1600 for post-registration requirements.

1304.02(a)    Filing Basis

See TMEP § 1303.01(a) for information regarding an application filing basis for a collective trademark or collective service mark. These requirements apply similarly to collective membership marks.

For a list of the requirements pertaining to each filing basis, see 37 C.F.R. §2.44(a)(4)  and TMEP §§1304.02(a)(i) - (v).

1304.02(a)(i)    Use in Commerce – §1(a)

Registration of a collective membership mark under §1(a) is based on actual use of the mark by the members of a collective organization. The owner of the mark exercises control over the use of the mark; however, because the sole purpose of a membership mark is to indicate membership, use of the mark is by its members. See In re Triangle Club of Princeton Univ., 138 USPQ 332 (TTAB 1963) (collective membership mark registration denied because specimen did not show use of mark by members).

Under 15 U.S.C. §§1051(a),  1054, and 37 C.F.R. §2.44(a)(4)(i), to establish a basis under §1(a) of the Trademark Act, the applicant must:

  • (1) Submit a statement specifying the nature of the applicant’s control over the use of the mark by the members (37 C.F.R. §2.44(a)(4)(i)(A) );
  • (2) Specify the date of the applicant’s members’ first use of the mark anywhere to indicate membership in the collective organization (37 C.F.R. §2.44(a)(4)(i)(B) );
  • (3) Specify the date of the applicant’s members’ first use of the mark in commerce (37 C.F.R. §2.44(a)(4)(i)(B) );
  • (4) Submit one specimen for each class, showing how a member uses the mark in commerce (37 C.F.R. §§2.44(a)(4)(i)(C), 2.56(b)(3) ); and
  • (5) Submit a verified statement that the applicant believes the applicant is the owner of the mark; that the mark is in use in commerce; that the applicant is exercising legitimate control over the use of the mark in commerce; that to the best of the signatory’s knowledge and belief, no other persons except members have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the collective membership organization of such other persons, to cause confusion or mistake, or to deceive; that the specimen shows the mark as used in commerce by the applicant’s members; and that the facts set forth in the application are true (15 U.S.C. §§1051(a)(3)(C),  1054; 37 C.F.R. §2.44(a)(4)(i)(D)). See TMEP § 1304.02(b)(i) for additional information regarding the requirements for the verified statement in applications under §1(a) of the Trademark Act.

The Trademark Act defines "commerce" as commerce that may lawfully be regulated by Congress, and "use in commerce" as the bona fide use of a mark in the ordinary course of trade. 15 U.S.C.  §1127; see TMEP §§901–901.04.

An applicant may not assert both §1(a) and §1(b) for the same collective membership organization in the same application. 37 C.F.R. §2.44(c); see TMEP §806.02(b).

Nothing in the Trademark Act prohibits the use of the same mark as a collective membership mark by members and, also, as a trademark or service mark by the parent organization ( see TMEP §1303.01), but the same mark may not be used both as a collective membership mark and as a certification mark. 37 C.F.R. §2.45(f); TMEP § 1306.04(f).

1304.02(a)(i)(A)    Manner/Method of Control

See TMEP § 1303.01(a)(i)(A) for information regarding the requirement for a Manner/Method of Control statement for a collective trademark or collective service mark. This requirement applies similarly to collective membership marks.

1304.02(a)(i)(B)    Dates of Use

When setting out dates of use of a collective membership mark, the applicant must state that the mark was first used by a member of the applicant rather than by the applicant, and that the mark was first used on a specified date to indicate membership rather than first used on goods or in connection with services.

The date of first use anywhere is the date when an applicant’s member first indicates membership in the collective organization under the mark, if such use is bona fide and in the ordinary course of trade. See 15 U.S.C. §1127   (definition of "use" within the definition of "abandonment of mark"). For every applicant, whether foreign or domestic, the date of first use of a mark is the date of the first use anywhere, in the United States or elsewhere, regardless of whether the nature of the use was local or national, intrastate or interstate, or of another type.

The date of first use in commerce is the date when an applicant’s member first indicates membership in the collective organization under the mark in a type of commerce that may be lawfully regulated by the U.S. Congress, if such use is bona fide and in the ordinary course of trade. See 15 U.S.C. §1127   (definition of "use" within the definition of "abandonment of mark"). See TMEP §901.01 for definitions of "commerce" and "use in commerce," and TMEP §901.03 regarding types of commerce.

In a §1(a) application, the applicant may not specify a date of use that is later than the filing date of the application. If an applicant who filed under §1(a) cannot show that a member used the mark in commerce on or before the application filing date, the applicant may amend the basis to §1(b). See 37 C.F.R. §2.35(b)(1). See TMEP §806.03 regarding amendments to the basis.

Neither a date of first use nor a date of first use in commerce is required to receive a filing date in an application based on use in commerce under §1(a) of the Act. If the application does not include a date of first use and/or a date of first use in commerce, the examining attorney must require that the applicant specify the date of first use and/or date of first use in commerce. See 37 C.F.R. §2.44(a)(4)(i)(B). The dates must be supported by an affidavit or declaration under 37 C.F.R. §2.20. See 37 C.F.R. §§2.44(a)(4)(i)(B), 2.71(c).

An applicant may not file an application on the basis of use of a mark in commerce if such use has been discontinued.

1304.02(a)(i)(C)    Specimens

The owner of a collective membership mark exercises control over the use of the mark but does not itself use the mark to indicate membership. Therefore, a proper specimen of use of a collective membership mark must show use by members to indicate membership in the collective organization. 37 C.F.R. §2.56(b)(4); In re Int’l Ass’n for Enterostomal Therapy, Inc., 218 USPQ 343 (TTAB 1983) ; In re Triangle Club of Princeton Univ., 138 USPQ 332 (TTAB 1963).

The most common types of specimens are membership cards and certificates. The applicant may submit as a specimen a blank or voided membership card or certificate.

For trade or professional associations, decals bearing the mark for use by members on doors or windows in their establishments, wall plaques bearing the mark, or decals or plates for use, e.g., on members’ vehicles, are satisfactory specimens. If the members are in business and place the mark on their business stationery to show their membership, pieces of such stationery are acceptable. Flags, pennants, and banners of various types used in connection with political parties, club groups, or the like could be satisfactory specimens.

Many associations, particularly fraternal societies, use jewelry such as pins, rings, or charms to indicate membership. See In re Triangle Club of Princeton Univ., supra. However, not every ornamental design on jewelry is necessarily an indication of membership. The record must show that the design on a piece of jewelry is actually an indication of membership before the jewelry can be accepted as a specimen of use. See In re Inst. for Certification of Computer Prof’ls, 219 USPQ 372 (TTAB 1983) (in view of contradictory evidence in record, specimen with nothing more than CCP thereon was not considered evidence of membership); In re Mountain Fuel Supply Co., 154 USPQ 384 (TTAB 1967) (design on specimen did not indicate membership in organization, but merely showed length of service).

Shoulder, sleeve, pocket, or similar patches, or lapel pins, whose design constitutes a membership mark and which are authorized by the parent organization for use by members on garments to indicate membership, are normally acceptable as specimens. Clothing authorized by the parent organization to be worn by members may also be an acceptable specimen.

A specimen that shows use of the mark by the collective organization itself, rather than by a member, is not acceptable. Collective organizations often publish various kinds of printed material, such as catalogs, directories, bulletins, newsletters, magazines, programs, and the like. Placement of the mark on these items by the collective organization represents use of the mark as a trademark or service mark to indicate that the collective organization is the source of the material. The mark is not placed on these items by the parent organization to indicate membership of a person in the organization.

See TMEP §904.07(a) regarding whether a trademark or service mark specimen shows the mark used in commerce.

See TMEP §1304.03(b) regarding specimen refusals specific to collective membership marks.

1304.02(a)(ii)    Intent to Use – §1(b)

See TMEP § 1303.01(a)(ii) for information regarding an intent-to-use filing basis for a collective trademark or collective service mark. These requirements apply similarly to collective membership marks, with the only difference being that the verified statement refers to a collective membership organization rather than goods or services.

1304.02(a)(iii)    Foreign Priority – §44(d)

See TMEP § 1303.01(a)(iii) for information regarding a §44(d) filing basis for a collective trademark or collective service mark. These requirements apply similarly to collective membership marks, with the only difference being that the verified statement refers to a collective membership organization rather than goods or services.

1304.02(a)(iv)    Foreign Registration – §44(e)

See TMEP §1303.01(a)(iv) for information regarding a §44(e) filing basis for a collective trademark or collective service mark. These requirements apply similarly to collective membership marks, with only two differences. First, the verified statement refers to a collective membership organization rather than goods or services. Second, the scope of the nature of the collective membership organization covered by the §44 basis in the U.S. application may not exceed the scope of the nature of the collective membership organization identified in the foreign application or registration. 37 C.F.R. §2.44(a)(2)(iii); TMEP §1402.01(b).

1304.02(a)(iv)(A)    Scope of Foreign Registration

See TMEP §1303.01(a)(iv)(A) for information regarding the scope of a foreign registration for a collective trademark or collective service mark. This information applies similarly to collective membership marks.

1304.02(a)(v)    Extension of Protection of International Registration – §66(a)

See TMEP §1303.01(a)(v) for information regarding a §66(a) filing basis for a collective trademark or collective service mark. These requirements apply similarly to collective membership marks, with the only difference being that the verified statement refers to a collective membership organization rather than goods or services.

1304.02(a)(vi)    Multiple Bases, Amending/Deleting the Basis, Review of Basis Prior to Publication/Issue

The procedures for examining an application with multiple bases, amending or deleting a basis, and reviewing the basis information prior to publication or issuance of a registration are the same as for trademark and service mark applications. See TMEP §806.02 for information about multiple bases, TMEP §806.03 regarding amending the basis, TMEP §806.04 regarding deleting a basis, and TMEP §806.05 regarding review of a basis prior to publication or issue.

1304.02(b)    Verification of Certain Statements

See TMEP §1303.01(b) for information about the verification of certain statements for a collective trademark or collective service mark. These requirements apply similarly to collective membership marks, except for the statement regarding the applicant’s bona fide intent and entitlement to exercise legitimate control and the applicant’s ownership statement.

1304.02(b)(i)    Statements Required in Verification of Application for Registration - §1 or §44 Application

See TMEP §1303.01(b)(i) for information about the requirements for the verified statement in applications under §1 or §44 for a collective trademark or collective service mark. These requirements apply similarly to collective membership marks. The two exceptions are the following requirements, which differ only in form.

Bona Fide Intention and Entitlement to Exercise Legitimate Control. If the filing basis is §1(b), §44(d), or §44(e), the applicant must submit a verified statement that the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce, and that to the best of the signatory’s knowledge and belief, no other persons, except members, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used in connection with the collective membership organization of such other persons, to cause confusion or mistake, or to deceive. 37 C.F.R. §2.44(a)(4)(ii), (a)(4)(iii)(B), (a)(4)(iv)(B). If this verified statement is not filed with the original application, it must also allege that, as of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce. 37 C.F.R. §2.44(b)(2).

Ownership. In an application based on §1(a), the verified statement must allege that the applicant believes the applicant is the owner of the mark, and that to the best of the signatory’s knowledge and belief, no other persons, except members, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used in connection with the collective membership organization of such other persons, to cause confusion or mistake, or to deceive. 37 C.F.R. §2.44(a)(4)(i)(D); see 15 U.S.C. §§1051(a)(3)(A),  1051(a)(3)(D).

See TMEP §§1304.02(a) - (a)(iv) for further information regarding filing-basis requirements, including the verified statement.

1304.02(b)(ii)    Statements Required in Verification of Application for Registration - §66(a) Application

For a collective membership mark in a §66(a) application, the verified statement is not part of the international registration on file at the IB; therefore, the examining attorney must require the verified statement during examination. See 37 C.F.R. §2.44(b)(2).

In applications under §66(a) of the Act, the applicant must supplement the request for extension of protection to the United States to include a declaration that the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce that the U.S. Congress can regulate to indicate membership in the collective organization. 37 C.F.R. §2.44(a)(4)(v). The declaration must include a statement that the signatory is properly authorized to execute the declaration on behalf of the applicant and that to the best of his/her knowledge and belief, no other person, firm, corporation, association, or other legal entity, except members, has the right to use the mark in commerce that the U.S. Congress can regulate either in the identical form thereof or in such near resemblance thereto as to be likely, when used in connection with the collective membership organization of such other person, firm, association, or other legal entity, to cause confusion, or to cause mistake, or to deceive. 37 C.F.R. 2. 44(a)(4)(v); see 15 U.S.C.  §1141(f)(a).

Additionally, because the verified statement is not included with the initial application, the verified statement must also allege that, as of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce. 37 C.F.R. §2.44(b)(2).

See TMEP § 1303.01(a)(v) for further information regarding filing-basis requirements, including the verified statement.

1304.02(c)    Identification of Nature of Collective Membership Organization

The purpose of a collective membership mark is to indicate membership in an organization; therefore, an identification of goods or services would not be appropriate in connection with a collective membership mark. More accurate identification language would be "indicating membership in an organization (association, club, or the like) . . .," followed by a phrase indicating the nature of the organization or association, for example, "indicating membership in an organization of computer professionals" or "indicating membership in a motorcycle club."

The nature of an organization can be indicated by specifying the area of activity of its members (e.g., they may sell lumber, cosmetics, or food, or may deal in chemical products or household goods, or provide services as fashion designers, engineers, or accountants). If goods or services are not directly involved, the nature of an organization can be indicated by specifying the organization’s type or purpose (such as a service or social club, a political society, a trade association, a beneficial fraternal organization, or the like). Detailed descriptions of an organization’s objectives or activities are not necessary. It is sufficient if the identification indicates broadly either the field of activity as related to the goods or services, or the general type or purpose of the organization.

1304.02(d)    Classification

Section 1 and §44 Applications. In applications under §1 or §44 of the Trademark Act, collective membership marks are classified in U.S. Class 200. 37 C.F.R. §6.4. United States Class 200 was established as a result of the decision in Ex parte Supreme Shrine of the Order of the White Shrine of Jerusalem, 109 USPQ 248 (Comm’r Pats. 1956). Before this decision, there was no registration of membership insignia on the theory that all collective marks were either collective trademarks or collective service marks. Some marks that were actually membership marks were registered under the Trademark Act of 1946 as collective service marks, and a few were registered as collective trademarks. That practice was discontinued upon the clarification of the basis for registration of membership marks and the creation of U.S. Class 200.

Section 66(a) Applications. A §66(a) application may indicate that the mark is a "Collective, Certificate or Guarantee Mark" or the identification may indicate that the mark is intended to indicate membership. In such cases, the examining attorney will require the applicant to clarify for the record the type of mark for which it seeks protection. The examining attorney must also require the applicant to comply with the requirements for the particular type of mark, i.e., collective trademark, collective service mark, collective membership mark, or certification mark. See TMEP §§1303–1303.02(b) regarding collective trademarks and collective service marks, TMEP §§1304–1304.03(c) regarding collective membership marks, and TMEP §§1306–1306.06(c) regarding certification marks.

If a §66(a) applicant indicates that the mark is a collective membership mark, the USPTO will not reclassify it into U.S. Class 200 because the classification of such applications may not be changed from that assigned by the International Bureau of the World Intellectual Property Organization ("IB"). TMEP §§1401.03(d), 1904.02(b). However, the examining attorney must ensure that the applicant complies with all other U.S. requirements for collective membership marks. See TMEP §§1304–1304.03(c).