1306.06 Uncertainty Regarding Type of Mark
When the facts in the application are insufficient to provide an adequate basis for determining whether the mark is functioning as a trademark or service mark or as a certification mark, the examining attorney should ask, pursuant to 37 C.F.R. §2.61(b), for further explanation as to the activities in which the mark is or will be used and for the disclosure of facts regarding the mark to enable a proper examination to be made. The manner in which the activities associated with a mark are conducted is the main factor that determines the type of mark. The conduct of parties involved with the mark evidences the relationship between the parties, and the responsibilities of each to the goods or services and to the mark.
1306.06(a) Distinction Between Certification Mark and Collective Mark
A collective trademark or collective service mark indicates origin of goods or services in the members of a group. A collective membership mark indicates membership in an organization. A certification mark certifies characteristics or features of goods or services. See Am. Speech-Language-Hearing Ass’n v. Nat'l Hearing Aid Soc'y, 224 USPQ 798, 806-808 (TTAB 1984) , for a discussion of the distinction between collective marks and certification marks.
Both collective marks and certification marks are used by more than one person, but only the users of collective marks are related to each other through membership in a collective group. The collective mark is used by all members and the collective organization holds the title to the collective mark for the benefit of all members.
A certification mark may be used to certify that the work or labor on the goods or services was performed by a member of a union or other organization. See TMEP §1306.04(d)(ii). Used in this manner, the certification mark certifies not that the user is a member of an organization but that the labor on the user’s goods or services was performed by a member of an organization.
An application to register a mark that is used or intended to be used by members of a collective group must be scrutinized carefully to determine the function of the mark. If the mark is used or intended to be used by the members as a trademark on goods they produce or as a service mark for services they perform, then the mark is a collective trademark or collective service mark. If the mark is used or intended to be used by members to indicate membership in an organization, then the mark is a collective membership mark. However, if use of the mark is or will be authorized only under circumstances designated by the organization to certify characteristics or features of the goods or services, the mark is a certification mark.
1306.06(b) Amendment to Different Type of Mark
If a certification mark application is filed but the mark is actually another type of mark, or if an application for another type of mark is filed but it is actually a certification mark, the application may be amended to request registration as the proper type of mark. Also, the application should be re-executed because some essential allegations differ for the different types of marks.
Applications for certification marks, collective marks, and collective membership marks cannot be filed using TEAS Plus. 37 C.F.R. §2.22(d). Therefore, in a TEAS Plus application, an additional TEAS Plus processing fee will be required if the mark is amended to a collective trademark or collective service mark, collective membership mark, or certification mark. See TMEP §819.01(a).
See TMEP §1306.04(d)(i) regarding appearance of a trademark or service mark in a certification mark or on a specimen, TMEP §1306.04(b)(ii) regarding related company use, and TMEP §1306.04(b)(iii) regarding use under a patent license.
1306.06(c) Registration as Correct Type of Mark
The examining attorney should take care to ascertain the correct type of mark during examination, and to require amendment if necessary. If a registration is issued for the wrong type of mark, it may be subject to cancellation. See Am. Speech-Language-Hearing Ass’n v. Nat’l Hearing Aid Soc’y, 224 USPQ 798 (TTAB 1984) ; Nat’l Trailways Bus Sys. v. Trailway Van Lines, Inc., 269 F. Supp. 352, 155 USPQ 507 (E.D.N.Y. 1965) .