T.M.E.P. § 1303.01
Use of Collective Trademark and Collective Service Mark Is By Members

Executive summary:

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1303.01 Use of Collective Trademark and Collective Service Mark Is By Members

Applications for registration of collective trademarks and collective service marks are different in form from applications for registration of other trademarks and service marks because of the difference in ownership and use of collective marks.

Under the definition of "collective mark" in §45 of the Trademark Act, 15 U.S.C. 1127, a collective mark must be owned by a collective entity. The use of a collective trademark or collective service mark is by members of the collective. Therefore, in an application based on use in commerce under §1(a) of the Trademark Act, 15 U.S.C. 1051(a), the applicant must assert that the applicant is exercising legitimate control over the use of the mark in commerce by its members.

In an application based on §1(b), §44 or §66(a) of the Act, 15 U.S.C. 1051(b), 15 U.S.C. 1126 or 15 U.S.C. 1141f(a), the applicant must assert that the applicant has a bona fide intention to exercise legitimate control over the use of the mark in commerce by its members. In a §1(b) application, before the mark can register, the applicant must file an amendment to allege use under 15 U.S.C. 1051(c) or a statement of use under 15 U.S.C. 1051(d) alleging that the applicant is exercising legitimate control over the use of the mark in commerce by its members.

In certain situations, notwithstanding the use of a collective trademark or collective service mark by the members of the collective, the collective itself may also use the same mark as a trademark for the goods covered by the collective trademark or service mark registration. See TMEP §1305. The "anti-use-by-owner rule" of §4 of the Trademark Act, 15 U.S.C. 1054 does not apply to collective marks. See Roush Bakery Products Co. v. F.R. Lepage Bakery Inc., 4 USPQ2d 1401 (TTAB 1987), aff'd, 851 F.2d 351, 7 USPQ2d 1395 (Fed. Cir. 1988), withdrawn, vacated and remanded, 863 F.2d 43, 9 USPQ2d 1335 (Fed. Cir. 1988), vacated and modified, 13 USPQ2d 1045 (TTAB 1989). The Trademark Law Revision Act of 1988, which became effective on November 16, 1989, amended §4 to indicate that the "anti-use-by-owner rule" in that section applies specifically to certification marks.