T.M.E.P. § 1303.02
Examination of Collective Trademark and Collective Service Mark Applications
Executive summary:
This document contains one section of the Trademark Manual of Examining Procedure (the "TMEP"), Fourth Edition (April 2005). This page was last updated in June 2007. You may return to one either the section index, or to the key word index. If you wish to search the TMEP, simply use the search box that appears on the bottom of every page of BitLaw--be sure to restrict your search to the TMEP in the pop-up list.
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1303.02 Examination of Collective Trademark and Collective Service Mark Applications
The examination of applications to register collective trademarks and collective service marks is conducted in a manner similar to the examination of applications to register regular trademarks and service marks, using most of the same criteria of registrability. Thus, the same standards generally applicable to trademarks and service marks are used in considering issues such as descriptiveness or disclaimers. However, use and ownership requirements are slightly different due to the nature of collective marks. See TMEP §§1303.02(c) et seq. See TMEP §§1304 et seq. regarding examination of applications to register collective membership marks.
1303.02(a) Classification of Goods and Services in Collective Trademark and Collective Service Mark Applications
The goods and services recited in collective trademark and collective service mark applications are assigned to the same classes that are appropriate for those goods and services in general, according to the classification schedules set forth in 37 C.F.R. §§6.1 and 6.2. See TMEP §§1401 et seq. regarding classification.
1303.02(b) Specimens of Use for Collective Trademark and Collective Service Mark Applications
A specimen of use of a collective trademark or service mark should show use of the mark by a member on the member's goods or in the sale or advertising of the member's services. 37 C.F.R. 2.56(b)(3). The specimen should show use of the mark to indicate that the party providing the goods or services is a member of a certain group and meets its standards for admission.
1303.02(c) Special Elements of Collective Trademark and Collective Service Mark Applications
1303.02(c)(i) Manner of Control
In addition to specifying and containing all elements that are applicable for trademarks, an application for registration of a collective mark under §1(a) of the Act must specify the class of persons entitled to use the mark, indicating their relationship to the applicant and the nature of the applicant's control over the use of the mark. 37 C.F.R. 2.44(a).
In addition to specifying and containing all elements that are applicable for trademarks, an application for registration of a collective mark under §1(b), §44, or §66(a) of the Act must specify the class of persons intended to be entitled to use the mark, indicating what their relationship to the applicant will be, and the nature of the control the applicant intends to exercise over the use of the mark. See 37 C.F.R. 2.44(b).
The following language may be used for the above purpose:
Applicant controls (or, if the application is being filed under §1(b), §44, or §66(a), applicant intends to control) the use of the mark by the members in the following manner: [specify].
If the applicant's bylaws or other written provisions specify the manner of control, or intended manner of control, it will be sufficient to so state.
1303.02(c)(ii) Use by Members Indicated in Dates-of-Use Clause
When setting out dates of use of a collective mark on goods or in connection with services, in either a §1(a) application or an allegation of use filed in connection with a §1(b) application, the applicant must state that the mark was first used by members (or a member) of the applicant.