1304.03(b) Specimen Refusals Specific to Collective Membership Marks
1304.03(b)(i) Matter that Does Not Function as a Membership Mark
Whether matter functions as a collective membership mark is determined by the specimen and evidence of record. It is the use of the mark to indicate membership, rather than the character of the matter composing the mark, that determines whether a term or other designation is a collective membership mark. See Ex parte Grand Chapter of Phi Sigma Kappa, 118 USPQ 467 (Comm’r Pats. 1958) (holding that use of Greek letter abbreviations on athletic jerseys did not function as collective membership marks indicating membership in Greek letter societies); In re Mountain Fuel Supply Co., 154 USPQ 384 (TTAB 1967) (holding that the design on a jewelry pin merely indicated longevity of service rather than membership in a collective organization). If a proposed mark does not function as a mark indicating membership, the examining attorney must refuse registration under §§1, 2, 4, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, 1054, 1127. See TMEP § 1304.03(b)(ii) regarding specimens showing use as degrees or titles. See TMEP § 904.07(b) for information about matter that fails to function as a trademark or service mark.
1304.03(b)(ii) Degree or Title Designations
Professional, technical, educational, and similar organizations often adopt letters or similar designations to be used by persons to indicate that the persons have passed certain tests or completed certain courses of instruction that are specified by the organization, or have demonstrated a degree of proficiency to the satisfaction of the organization. When such a symbol is used solely as a personal title or degree for an individual (i.e., it is used in a manner that identifies only a title or degree conferred on this individual), then it does not serve to indicate membership in an organization, and registration as a membership mark must be refused. In re Int’l Inst. of Valuers, 223 USPQ 350 (TTAB 1984) (registration properly refused where use of the mark on specimen indicated award of a degree or title, and not membership in collective organization); see also In re Nat’l Soc’y of Cardiopulmonary Technologists, Inc., 173 USPQ 511 (TTAB 1972) ; cf. In re Thacker, 228 USPQ 961 (TTAB 1986); In re Nat’l Ass’n of Purchasing Mgmt., 228 USPQ 768 (TTAB 1986) ; In re Mortg. Bankers Ass’n of Am., 226 USPQ 954 (TTAB 1985) .
If the proposed mark functions merely as a degree or title, the examining attorney must refuse registration under §§1, 2, 4, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, 1054, 1127, on the ground that the matter does not function as a collective membership mark. See TMEP §1304.03(b)(i).