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T.M.E.P. § 1306.01
Definition of Certification Mark

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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1306.01 Definition of Certification Mark

Section 4 of the Trademark Act, 15 U.S.C. 1054, provides for the registration of "certification marks, including indications of regional origin." Section 45 of the Trademark Act, 15 U.S.C. 1127, defines "certification mark" as follows:

The term "certification mark" means any word, name, symbol, or device, or any combination thereof--

(1) used by a person other than its owner, or
(2) which its owner has a bona fide intention to permit a person other than the owner to use in commerce and files an application to register on the principal register established by this Act,
to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person's goods or services or that the work or labor on the goods or services was performed by members of a union or other organization.

A certification mark "is a special creature created for a purpose uniquely different from that of an ordinary service mark or trademark...." In re Florida Citrus Commission, 160 USPQ 495, 499 (TTAB 1968).

There are generally three types of certification marks. First, there are certification marks that certify that goods or services originate in a specific geographic region (e.g., ROQUEFORT for cheese). See Community of Roquefort v. William Faehndrich, Inc., 303 F.2d 494, 133 USPQ 633 (2d Cir. 1962); State of Florida, Department of Citrus v. Real Juices, Inc., 330 F. Supp. 428, 171 USPQ 66 (M.D. Fla. 1971) (SUNSHINE TREE for citrus from Florida); Bureau National Interprofessionnel Du Cognac v. International Better Drinks Corp., 6 USPQ2d 1610 (TTAB 1988) (COGNAC for distilled brandy from a region in France). See TMEP §§1306.02 et seq.

Second, there are certification marks that certify that the goods or services meet certain standards in relation to quality, materials, or mode of manufacture (e.g., approval by Underwriters Laboratories). See Midwest Plastic Fabricators Inc. v. Underwriters Laboratories Inc., 906 F.2d 1568, 15 USPQ2d 1359 (Fed. Cir. 1990) (UL certifies, among other things, representative samplings of electrical equipment meeting certain safety standards); In re Celanese Corporation of America, 136 USPQ 86 (TTAB 1962) (CELANESE certifies plastic toys meeting certifier's safety standards).

Third, certification marks may certify that the work or labor on the products or services was performed by a member of a union or other organization, or that the performer meets certain standards. See TMEP §1306.03 and cases cited therein for further information.

The statutory definition differentiates certification marks from trademarks or service marks by two characteristics. First, a certification mark is not used by its owner and, second, a certification mark does not indicate commercial source nor distinguish the goods or services of one person from those of another person. See TMEP §1306.09(a) for a discussion of the distinction between a certification mark and a collective trademark, collective service mark or collective membership mark.

See Holtzman, Certification Marks: An Overview, 81 Trademark Rep. 180 (1991).

1306.01(a) Use Is by Person Other than Owner

A certification mark may not be used, in the trademark sense of "used," by the owner of the mark; it may be used only by a person or persons other than the owner of the mark. That is, the owner of a certification mark does not apply the mark to his or her goods or services and, in fact, usually does not attach or apply the mark at all. The mark is generally applied by other persons to their goods or services, with authorization from the owner of the mark.

The owner of a certification mark does not produce the goods or perform the services in connection with which the mark is used, and thus does not control their nature and quality. Therefore, it is not appropriate to inquire about control over the nature and quality of the goods or services. What the owner of the certification mark does control is use of the mark by others on their goods or services. This control consists of taking steps to ensure that the mark is applied only to goods or services that contain the characteristics or meet the requirements that the certifier/owner has established or adopted for the certification. See TMEP §1306.06(g)(ii) regarding submission of the standards established by the certifier to determine whether the certification mark may be used in relation to the goods and/or services of others.

1306.01(b) Purpose Is to Certify, Not to Indicate Source

The purpose of a certification mark is to inform purchasers that the goods or services of a person possess certain characteristics or meet certain qualifications or standards established by another person. A certification mark does not indicate origin in a single commercial or proprietary source. In certifying, the same mark is used on the goods or services of many different producers.

The message conveyed by a certification mark is that the goods or services have been examined, tested, inspected, or in some way checked by a person who is not their producer, by methods determined by the certifier/owner. The placing of the mark on goods or its use in connection with services thus constitutes a certification by someone other than the producer that the prescribed characteristics or qualifications of the certifier for those goods or services have been met.