1306.04 Examination of Certification Mark Applications
Except where otherwise specified herein, the same procedures are used to determine the registrability of certification marks that are used for other types of marks. Thus, the standards generally applicable to trademarks and service marks are used in considering issues such as descriptiveness, disclaimers, and likelihood of confusion. (But see TMEP §§1306.05–1306.05(j) regarding certification marks indicating regional origin only.)
Regarding the application of §2(e) of the Trademark Act, 15 U.S.C. §1052(e), to certification marks, see Cmty. of Roquefort v. Santo, 443 F.2d 1196, 170 USPQ 205 (C.C.P.A. 1971) ; In re Nat’l Ass’n of Legal Secretaries (Int’l), 221 USPQ 50 (TTAB 1983) .
Regarding the application of §2(d), 15 U.S.C. §1052(d), the test for determining likelihood of confusion is the same for certification marks – the du Pont analysis. In re Accelerate s.a.l., 101 USPQ2d 2047, 2049 (TTAB 2012) (quoting Motion Picture Ass’n of Am., Inc. v. Respect Sportswear, Inc., 83 USPQ2d 1555, 1559-60 (TTAB 2007) ); see In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) ; see also Procter & Gamble Co. v. Cohen, 375 F.2d 494, 153 USPQ 188 (C.C.P.A. 1967) ; Tea Bd. of India v. Republic of Tea, Inc., 80 USPQ2d 1881 (TTAB 2006) ; Stabilisierrungsfonds fur Wein v. Peter Meyer Winery GmbH, 9 USPQ2d 1073 (TTAB 1988) ; E.I. duPont de Nemours & Co. v. Yoshida Int’l, Inc., 393 F. Supp. 502, 185 USPQ 597 (E.D.N.Y. 1975) .
However, because a certification mark owner does not use the mark itself, the likelihood-of-confusion analysis is based on a comparison of the mark as applied to the goods and/or services of the certification mark users, including the channels of trade and classes of purchasers. In re Accelerate s.a.l., 101 USPQ2d at 2049 (quoting Motion Picture Ass’n of Am. Inc. v. Respect Sportswear, Inc., 83 USPQ2d at 1559-60); see also Jos. S. Cohen & Sons Co. v. Hearst Magazines, Inc., 220 F.2d 763, 765, 105 USPQ 269, 271 (C.C.P.A. 1955) .
A refusal to register because the specimen fails to show the applied-for mark functioning as a certification mark is predicated on §§1, 2, 4, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, 1054, 1127. For example, registration should be refused on this basis where the specimen shows use only as an educational or other degree or title awarded to individuals, and not use as a certification mark. Titles and degrees indicate qualifications or attainments of a person; they do not pertain to or certify services that have been performed by the person. See TMEP §1306.04(d)(ii).
See TMEP §1207.04 for information regarding seeking a concurrent use registration.
See TMEP §§1306.05─1306.05(j) regarding the examination of geographic certification mark applications.
1306.04(a) Compare the Mark on the Drawing to the Specimen for §1(a)
In evaluating the drawing, the same standards used in relation to trademark and service mark drawings apply to certification marks ( see TMEP §§807–807.18). For §1(a) applications, the examining attorney must refer to the specimen to determine what constitutes the mark. See In re Nat’l Inst. for Auto. Serv. Excellence, 218 USPQ 744 (TTAB 1983) . The drawing in the application must include the entire certification mark, but it should not include matter that is not part of the mark.
1306.04(b) Ownership
The owner of a certification mark is the party responsible for the certification that is conveyed by the mark. The party who affixes the mark, with authorization of the certifier, does not own the mark; nor is the mark owned by someone who merely acts as an agent for the certifier, for example, an inspector hired by the certifier. The certifier, as owner, is the only person who may file an application for registration of a certification mark. See In re Safe Elec. Cord Comm., 125 USPQ 310 (TTAB 1960) .
Certification is often the sole purpose for the owner of a certification mark. However, a person is not necessarily precluded from owning a certification mark because he or she also engages in other activities, including the sale of goods or the performance of services. However, the certification mark may not be the same mark that the person uses as a trademark or service mark on the same goods or services. See 37 C.F.R. §2.45(f); TMEP §1306.04(f).
Examples of organizations that conduct both types of activities are trade associations and other membership or "club" types of businesses, such as automobile associations. These organizations may perform services for their members, and sell various goods to their members and others, as well as conduct programs in which they certify characteristics or other aspects of goods or services, especially of kinds which relate to the main purpose of the association.
Manufacturing or service companies that do not certify the goods or services of members may nonetheless engage in certification programs under proper circumstances. For example, a manufacturer of chemical wood preservatives might conduct a program certifying certain characteristics of wood or wood products that are treated and sold by others. Among the characteristics or circumstances certified could be the fact that a preservative produced by this manufacturer under a specified trademark was used in the treatment.
A magazine publisher may also conduct a certification program relating to goods or services that are advertised in or have some relevance to the interest area of the magazine.
The certifier/owner determines the requirements for the certification. The standards do not have to be created by the certifier/owner, but may be standards established by another person, such as specifications promulgated by a government agency or standards developed through research of a private research organization. See TMEP §1306.03(b) regarding the standards for certification. However, if the name of the organization that developed the standards is part of the mark, an issue could arise as to whether the mark is deceptively misdescriptive under 15 U.S.C. §1052(e)(1) ( see TMEP §1209.04) or falsely suggests a connection with persons, institutions, beliefs, or national symbols under 15 U.S.C. §1052(a) ( see TMEP §1203.03(c)).
See TMEP §1306.04(d)(i) regarding appearance of a trademark or service mark in a certification mark or on a specimen, and see TMEP §1306.05(b)(ii) regarding the authority to control a geographic certification mark.
1306.04(b)(i) Exercise of Control
As stated in the application requirements, an application based on use in commerce under §1(a) of the Trademark Act, and an allegation of use under 15 U.S.C. §1051(c) or 15 U.S.C. §1051(d) filed in connection with a §1(b) application, must include a verified statement that the applicant is exercising legitimate control over the use of the certification mark in commerce. 37 C.F.R. §§2.45(a)(4)(i)(F), 2.76(b)(1)(v), 2.88(b)(1)(v). For an application based on §1(b), §44, or §66(a) of the Act, the verified statement must specify that the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the certification mark in commerce. 37 C.F.R. §2.45(a)(4)(ii)(C), (a)(4)(iii)(C), (a)(4)(iv)(C), (a)(4)(v)(B).
If there is any evidence of record that casts doubt as to the existence or nature of such control by the applicant, the examining attorney must require an explanation and sufficient disclosure of facts, or the filing of appropriate documents, to support the applicant’s statement regarding the exercise of control over the use of the mark, pursuant to 37 C.F.R. §2.61(b).
1306.04(b)(ii) Distinguishing Certification Mark Use from Related-Company Use of Trademark or Service Mark
Sometimes, an application requests registration of a certification mark, but there is a contractual relationship in the nature of a franchise or license between the applicant and the user of the mark, whereby the applicant, as the franchisor or licensor, specifies the nature or quality of the goods produced (or of the services performed) under the contract. These situations require care in examination because they usually indicate trademark or service mark use (through related companies) rather than certification mark use, because the applicant, as franchisor or licensor, controls the nature of the goods or services and has the responsibility for their quality.
The key distinction between use of subject matter as a certification mark and use as a trademark or service mark through a related company is the purpose and function of the mark in the market place, and the significance that it would have to the relevant purchasing public. A trademark or service mark serves to indicate the origin of goods or services, whereas a certification mark serves to guarantee certain qualities or characteristics. See In re Monsanto Co., 201 USPQ 864, 870 (TTAB 1978) ; In re Celanese Corp. of Am., 136 USPQ 86 (TTAB 1962) .
Furthermore, the owner of a certification mark must permit use of the mark if the goods or services meet the certifier’s standard, whereas a trademark owner may, but is not obligated to, license use of its mark to third parties. In re Monsanto Co., 201 USPQ at 870.
1306.04(b)(iii) Patent Licenses
Sometimes, the owner of a patent asserts ownership of the mark that is applied to goods that are manufactured under license from the patent owner, in accordance with the terms and specifications of the patent. Typically, these marks have been registered as trademarks, on the basis of related-company use, rather than as certification marks. Generally, the patent owner’s purpose, in arranging for the application of a mark to the goods manufactured under his or her license, would be to identify and distinguish those goods whose nature and quality the patent owner controls through the terms and specifications of the patent. Therefore, registration as a trademark (on the basis of related-company use) rather than registration as a certification mark would be appropriate.
1306.04(c) Characteristics of Certification Marks – Specimen Shows Mark Functions as a Certification Mark
The Trademark Act does not require that a certification mark be in any specific form or include any specific wording. A certification mark may be wording only, design only, or a combination of wording and design. In other words, there is no particular way that a mark must look in order to be a certification mark.
A certification mark often includes wording such as "approved by," "inspected," "conforming to," "certified," or similar wording, because certification (or approval) is practically the only significance the mark is to have when it is used on goods or in connection with services. However, this wording is not required, and a mark that lacks this wording can perform the function of certification.
The examining attorney must look to the specimen and any facts disclosed in the record to determine whether the mark is used in certification activity and is in fact a certification mark.
It is not necessary to show that the mark is instantly recognizable as a certification mark, or that the mark has already become well known to the public as a certification mark. However, it should be clear from the record that the circumstances surrounding the use or promotion of the mark will give certification significance to the mark in the marketplace. See Ex parte Van Winkle, 117 USPQ 450 (Comm’r Pats. 1958).
If the specimen shows the proposed mark is not being used by a person other than the applicant or does not function as a certification mark, the examining attorney must refuse registration under §§1, 2, 4, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, 1054, 1127. The applicant may overcome the refusal by submitting an acceptable substitute specimen or amending the filing basis to §1(b), if appropriate. See TMEP §§806.03(c), 904.05. See TMEP §1306.04(d)(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.
See TMEP §1306.05(b)(iii) regarding the specimens of use for geographic certification mark applications.
1306.04(d) Specimen Refusals Specific to Certification Marks
1306.04(d)(i) Whether Certification Mark and Trademark or Service Mark Appear on Specimen Together
It is customary for trademarks or service marks to be placed on goods or used with services in conjunction with certification marks. However, it is also possible for a certification mark to be the only mark used on goods or with services. Some producers market their goods or services without using a trademark or service mark, yet these producers may be authorized to use a certification mark and, as a result, the certification mark would be the only mark on the goods or services. In these situations, the significance of the mark might not be readily apparent and the examining attorney should request an explanation under 37 C.F.R. §2.61(b) of the circumstances to ascertain whether the mark is a certification mark rather than a trademark or service mark. See also TMEP §1306.06.
When a trademark or a service mark appears on the specimen in addition to a certification mark, the certification mark can be on a separate label, or can be included on a single label along with the user’s own trademark or service mark.
A composite certification mark may include a trademark or service mark, provided the composite mark functions to certify, with the trademark or service mark serving only to inform, or to suggest the certification program, rather than to indicate the commercial origin of the goods or services with which the mark is used. These situations usually are created when a company that produces goods or performs services wants to develop a program and a mark to certify characteristics of the goods or services of others that are related to the producer’s own goods or services. See the examples in TMEP §1306.04(b).
Under these circumstances, the trademark or service mark must be owned by the same person who owns the certification mark, and the trademark or service mark may not be identical to the certification mark. See 37 C.F.R. §§2.45(f), 2.86(d).
Further, a party may not include the trademark or service mark of another in a certification mark, even with a disclaimer. If the examining attorney believes that a trademark or service mark included in a certification mark is not owned by the applicant, the examining attorney must refuse registration of the certification mark based on Section 2(d), 15 U.S.C. §1052(d), or false association under Section 2(a), 15 U.S.C. §1052(a), as appropriate.
1306.04(d)(ii) Specimen Shows Use as Title or Degree for Certification Mark Certifying that Labor Was Performed by Specific Group or Individual
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, or by a person who meets certain standards and tests of competency set by the certifier. 15 U.S.C. §1127. The certifier does not certify the quality of the work being performed, but only that the work was performed by a member of the union or group, or by someone who meets certain standards. In re Nat’l Inst. for Auto. Serv. Excellence, 218 USPQ 744, 747 (TTAB 1983) ; see also Am. Speech-Language-Hearing Ass’n v. Nat’l Hearing Aid Soc’y, 224 USPQ 798 (TTAB 1984) . Used in this manner, the mark certifies a characteristic of the goods or services. Whether or not specific matter functions as a certification mark depends on whether the matter is used in connection with the goods or services in such a manner that the purchasing public will recognize it, either consciously or otherwise, as a certification mark.
Occasionally, it is not clear whether a term is being used to certify that work or labor relating to the goods or services was performed by someone meeting certain standards or by members of a union or other organization to indicate membership, or whether the term is merely being used as a title or a degree of the performer to indicate professional qualifications. Matter that might appear to be simply a title or a degree may function as a certification mark if used in the proper manner. See In re Council on Certification of Nurse Anesthetists, 85 USPQ2d 1403 (TTAB 2007) (CRNA functions as certification mark used to certify that anesthesia services are being performed by a person who meets certain standards and tests of competency); In re Software Publishers Ass’n, 69 USPQ2d 2009 (TTAB 2003) (CERTIFIED SOFTWARE MANAGER used on certificate merely indicates that holder of the certificate has been awarded a title or degree, and is not likely to be perceived as certification mark); In re Nat’l Ass’n of Purchasing Mgmt., 228 USPQ 768 (TTAB 1986) (C.P.M. used merely as title or degree, not as certification mark); In re Nat’l Ass’n of Legal Secretaries (Int’l), 221 USPQ 50 (TTAB 1983) (PROFESSIONAL LEGAL SECRETARY not used on the specimen in such a way as to indicate certification significance); In re Nat’l Inst. for Auto. Serv. Excellence, supra (design mark not used simply as a degree or title, but to certify that the performer of the services had met certain standards); In re Inst. of Certified Prof’l Bus. Consultants, 216 USPQ 338 (TTAB 1982) (CPBC not used as a certification mark for business consulting services, but only as a title or degree); In re Prof’l Photographers of Ohio, Inc., 149 USPQ 857 (TTAB 1966) (CERTIFIED PROFESSIONAL PHOTOGRAPHER used only as the title of a person, not as a certification mark); cf. In re Univ. of Miss., 1 USPQ2d 1909 (TTAB 1987) (use of university seal on diplomas did not represent use as a certification mark).
See TMEP §1306.06(a) regarding the difference between a certification mark and a collective mark.
1306.04(e) Relationship of §14 (Cancellation)
15 U.S.C. 1064 Cancellation (Extract)
A petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed as follows by any person who believes that he is or will be damaged, including as a result of a likelihood of dilution by blurring or dilution by tarnishment under section 1125(c) of this title, by the registration of a mark on the principal register established by this [Act], or under the Act of March 3, 1881, or the Act of February 20, 1905....
. . .
(5) At any time in the case of a certification mark on the ground that the registrant (A) does not control, or is not able legitimately to exercise control over, the use of such mark, or (B) engages in the production or marketing of any goods or services to which the certification mark is applied, or (C) permits the use of the certification mark for purposes other than to certify, or (D) discriminately refuses to certify or to continue to certify the goods or services of any person who maintains the standards or conditions which such mark certifies....
. . .
Nothing in paragraph (5) shall be deemed to prohibit the registrant from using its certification mark in advertising or promoting recognition of the certification program or of the goods or services meeting the certification standards of the registrant. Such uses of the certification mark shall not be grounds for cancellation under paragraph (5), so long as the registrant does not itself produce, manufacture, or sell any of the certified goods or services to which its identical certification mark is applied.
Section 14 of the Trademark Act, 15 U.S.C. §1064, provides for petitions to cancel registrations. Subsection (5) lists specific circumstances when petitions to cancel certification marks may be filed. The only subsections in (5) applicable to examination would be (A) and (B), as an analysis of (5)(A)-(D) below shows:
Subsection A ("exercising legitimate control"): In an application, the applicant states under oath or declaration that the applicant is exercising, or has a bona fide intention to exercise, legitimate control over the use in commerce of the certification mark. See 37 C.F.R. §2.45(a)(4)(i)(F), (a)(4)(ii)(C), (a)(4)(iii)(C), (a)(4)(iv)(C), (a)(4)(v)(B); TMEP §1306.04(b)(i). Such statement is accepted, unless the examining attorney has knowledge of facts indicating that it should not be accepted.
Subsection B (not engaged in, or will not engage in, the production or marketing of any goods or services to which the certification mark is applied …"): The applicant is required to state, as appropriate, that he or she is not engaged in, or will not engage in, the production or marketing of any goods or services to which the certification mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant. See 37 C.F.R. §2.45(a)(4)(i)(C), (a)(4)(ii)(B), (a)(4)(iii)(B), (a)(4)(iv)(B), (a)(4)(v)(A); TMEP §1306.03(c). Such statement is accepted, unless the record contains facts to the contrary.
Subsection C (used for purposes other than to certify): This subsection concerns whether a party permits use of the certification mark for purposes other than to certify. No statements are required in the application specifically on this point. The existence of unauthorized or illegal uses by others without the applicant’s authorization is not within the examining attorney’s province and cannot be used as a basis for refusal to register, provided that use authorized by the applicant, as supported by the record, is proper certification use.
Subsection D (discriminately refusing to certify): This subsection relates to the obligation of the owner not to discriminately refuse to certify. This subject is not mentioned in §4 or §45, 15 U.S.C. §1054 or §1127. The USPTO does not evaluate, in ex parte examination, whether the standards or characteristics which the mark certifies, as set out by the applicant, are discriminatory per se; nor is it in the province of ex parte procedure to investigate or police how the certification is practiced.
1306.04(f) Same Mark Not Registrable as Certification Mark and as Any Other Type of Mark
A trademark or service mark is used by the owner of the mark on his or her goods or services, whereas a certification mark is used by persons other than the owner of the mark. A certification mark does not distinguish between producers, but represents a certification regarding some characteristic that is common to the goods or services of many persons. Using the same mark for two contradictory purposes would result in confusion and uncertainty about the meaning of the mark and would invalidate the mark for either purpose. Thus, registration as a certification mark precludes the same owner from registering the same mark as any other type of mark (e.g., a trademark or a service mark) for the same goods or services.) See15 U.S.C. §1064(5)(B) (providing for cancellation of a registered certification mark if the registrant engages in the production or marketing of any goods or services to which the certification mark is applied); In re Monsanto Co., 201 USPQ 864, 868-69 (TTAB 1978) ; TMEP §1306.04(f).
Section 4 of the Trademark Act, 15 U.S.C. §1054, prohibits the registration of a certification mark "when used so as to represent falsely that the owner or a user thereof makes or sells the goods or performs the services on or in connection with which such mark is used;" and §14(5)(B) of the Act, 15 U.S.C. §1064(5)(B), provides for the cancellation of a registered certification mark where the registrant engages in the production or marketing of any goods or services to which the certification mark is applied. SeeTMEP §1306.04(e) regarding §14(5) of the Act. Thus, if a party attempts to register the same mark as a trademark or service mark for particular goods or services and as a certification mark for those goods or services, the applied-for mark must be refused under Trademark Act §§4 and 14(5)(B). 15 U.S.C. §§1054, 1064(5)(B); see also 37 C.F.R. §2.45; TMEP §1306.04(f).
The prohibition against registration both as a trademark or service mark and as a certification mark applies to marks that are identical or so similar as to constitute essentially the same mark. For these purposes, two marks need not be identical, but any differences must be so insignificant that the marks would still be viewed as essentially the same. Even small variations in wording or design, if meaningful, could create different marks that may coexist on the register. On the other hand, inconsequential differences, such as the style of lettering or the addition of wording of little importance, normally would not prevent marks from being regarded as the same. See In re 88Open Consortium Ltd., 28 USPQ2d 1314 (TTAB 1993) (finding the mark 88OPEN COMPATIBILITY CERTIFIED and design registrable as a certification mark even though applicant owned six registrations for the marks 88OPEN in typed and stylized form as trademarks, service marks, and collective membership marks. The Board noted that the words COMPATIBILITY CERTIFIED served to inform those seeing the mark that it is functioning as a certification mark, and that the certification mark included a design feature not found in the previously registered marks.). See also TMEP §§1306.04(b), 1306.04(d)(i), 1306.06.
The owner of a certification mark may seek registration of the same mark as a trademark or service mark for goods or services other than those to which the certification mark is applied. However, the application for a certification mark must be filed separately from the application for a trademark or service mark, because the purpose and use of a trademark or service mark differ from those of a certification mark as do the allegations and claims made in support of a certification mark.
1306.04(f)(i) Cancellation of Applicant’s Prior Registration Required by Change from Certification Mark Use to Trademark or Service Mark Use, or Vice Versa
The nature of the activity in which the mark is used or intended to be used may change from use to certify characteristics of goods or services to use on the party’s own goods or services, or on goods or services produced for the party by related companies. The change might also be the other way around, from trademark or service mark use to certification mark use.
If there is already a registration as one type of mark and the registrant files an application for registration of the mark as the other type, the applicant must surrender the previous registration under §7(e) of the Trademark Act, 15 U.S.C. §1057(e), before the examining attorney approves the new application for publication for opposition or issuance of a registration on the Supplemental Register. See 37 C.F.R. §2.172 and TMEP §1608 regarding surrender. The registration certificate for the new application should not issue until the prior registration actually has been cancelled.
In examining the new application, the examining attorney must carefully review the application to ensure that the facts of record support the new application.