T.M.E.P. § 1306.06
Examination of Certification Mark Applications
Executive summary:
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1306.06 Examination of Certification Mark Applications
1306.06(a) Refusal to Register Certification Mark
The same standards 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 §§1306.02 et seq. 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 Community of Roquefort v. Santo, 443 F.2d 1196, 170 USPQ 205 (C.C.P.A. 1971); In re National Association of Legal Secretaries (International), 221 USPQ 50 (TTAB 1983). Regarding the application of §2(d), 15 U.S.C. 1052(d), to certification marks, see Procter & Gamble Co. v. Cohen, 375 F.2d 494, 153 USPQ 188 (C.C.P.A. 1967); Stabilisierrungsfonds fur Wein v. Peter Meyer Winery GmbH, 9 USPQ2d 1073 (TTAB 1988). See also E.I. duPont de Nemours & Co. v. Yoshida International, Inc., 393 F. Supp. 502, 185 USPQ 597 (E.D.N.Y. 1975).
A refusal to register because the subject matter does not function as a certification mark is predicated on §§1, 2, 4, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, 1054, and 1127. Educational or other degrees or titles awarded to individuals, and used only as personal titles or degrees, are not certification marks. So used, titles and degrees indicate qualifications or attainments of the person; they do not pertain to or certify services that have been performed by the person. See TMEP §1306.03.
1306.06(b) The Mark on the Drawing
The drawing in the application must include the entire certification mark, but it should not include anything that is not part of the mark. The examining attorney must refer to the specimens to determine what constitutes the mark. See In re National Institute for Automotive Service Excellence, 218 USPQ 744 (TTAB 1983). In evaluating the drawing, the same standards used in relation to trademark and service mark drawings apply to certification marks (see TMEP §§807 et seq.).
1306.06(c) Specimens of Use for Certification Marks
Certification mark specimens must show use to certify. Although a certification mark performs a different function from a trademark or a service mark, it is used in a manner analogous to that of a trademark or a service mark (i.e., on a label, tag, or container for the goods, a display associated with the goods, or in the sale or advertising of services rendered).
A certification mark specimen must show how a person other than the owner uses the mark to certify regional or other origin, quality, or other characteristics of that person's goods or services; or that members of a union or other organization performed the work or labor on the goods or services. 37 C.F.R. 2.56(b)(5).
Materials that bear the mark and are actually attached or applied to the goods or used in relation to the services by the persons authorized to use the mark constitute proper specimens.
The same standards used to evaluate trademark and service mark specimens also apply to certification marks. See TMEP §§904 et seq.
Sometimes the owner/certifier prepares tags or labels that bear the certification mark that are supplied to the authorized users to attach to their goods or for use in relation to their services. See Ex parte Porcelain Enamel Institute, Inc., 110 USPQ 258 (Comm'r Pats. 1956). These tags or labels are acceptable specimens.
1306.06(d) Relation Between Certification Mark and Trademark or Service Mark on Specimens
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 of the circumstances to ascertain whether the mark is a certification mark rather than a trademark or service mark. See also TMEP §1306.09.
When a trademark or a service mark appears on the specimens 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 trade or service mark serving only to inform, or to suggest the certification program, rather than to indicate 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.
The trademark or service mark must be owned by the same person who owns the certification mark. 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 owned by another, the examining attorney should refuse registration of the certification mark.
1306.06(e) Classification of Goods and Services in Certification Mark Applications
Section 1 and 44 Applications
In applications to register certification marks, all goods are classified in Class A and all services are classified in Class B. 37 C.F.R. 6.3. Both Classes A and B (but not any other classes) may be included in one application. See TMEP §§1403 et seq. regarding multiple class applications.
NOTE: When the Trademark Act of 1946 went into effect, the goods and services for which certification marks were registered were classified in the regular classes for goods and services. It was later concluded that this was not reasonable, because a certification mark is commonly used on a great variety of goods and services, and the specialized purpose of these marks makes it unrealistic to divide the goods and services into the competitive groups that the regular classes represent. The change to classification in Classes A and B for certification marks was made by amendment of the Trademark Rules on August 15, 1955.
Section 66(a) Applications
In a §66(a) application, classification is determined by the IB, in accordance with the Nice Agreement. Classes A and B come from the old U.S. classification system (see TMEP §1401.02) and are not included in the international classification system. In a §66(a) application, the international classification of goods/services cannot be changed from the classification given to the goods/services by the IB. See TMEP §1401.03(d). Accordingly, if the mark in a §66(a) application appears to be a certification mark, the USPTO will not reclassify it into Classes A and B. However, the applicant must comply with all other U.S. requirements for certification marks, regardless of the classification chosen by the IB.
1306.06(f) Identification of Goods and Services in Certification Mark Applications
In a certification mark application, the goods or services that are certified may be identified less specifically than in an application for a trademark or service mark.
Ordinarily it is only necessary to indicate general kinds of goods and services, such as food, agricultural commodities, electrical products, textile materials, printed material, or insurance agency services, machinery repair, restaurant services. However, if the certification program itself is limited to specific goods or services, for example, wine, wood doors, bakery machinery, then the identification in the application should be more specific.
1306.06(g) Special Elements of Certification Mark Applications
1306.06(g)(i) Statement of What the Mark Certifies
The application must contain a statement of the characteristic, standard, or other feature that is certified or intended to be certified by the mark. The statement may begin with the wording, "The certification mark, as used (or intended to be used) by authorized persons, certifies (or is intended to certify) . . . ." See 37 C.F.R. 2.45.
All of the characteristics or features that the mark certifies should be included. A mark does not have to be limited to certifying a single characteristic or feature.
The characteristics or features that the mark certifies should be explained in reasonable detail, so that they are clear. The broad suggestive terms of the statute, such as quality, material, mode of manufacture, are generally not satisfactory by themselves because they do not accurately reveal the nature of the certification. How specific the statement should be depends in part on the narrowness or breadth of the certification. For example, "quality" would not inform the public of the meaning of the certification where the characteristic being certified is limited, for example, to the strength of material, or the purity of a strain of seed.
The statement of certification in the application is printed on the registration certificate. For that reason it should be reasonably specific but does not have to include the details of the specifications of the characteristic being certified. If practicable, however, more detailed specifications should be made of record in the application file.
Although the information as to what the mark certifies may appear in the same statement as the identification of goods and/or services, it is preferable that these elements be recited separately in the application.
1306.06(g)(ii) Standards
The applicant (certifier) must submit a copy of the standards established to determine whether others may use the certification mark on their goods and/or in connection with their services. 37 C.F.R. 2.45. For an intent-to-use application, under §1(b) of the Act, 15 U.S.C. 1051(b), the standards are submitted with the amendment to allege use or the statement of use. 37 C.F.R. 2.45(b).
The standards do not have to be original with the applicant. They may be standards established by another party, such as specifications promulgated by a government agency or standards developed through research of a private research organization.
1306.06(g)(iii) Exercise of Control
In an application based on use in commerce under §1(a) of the Trademark Act, the applicant must assert that the applicant is exercising legitimate control over the use of the certification mark in commerce. 37 C.F.R. 2.45(a).
In an application based on §1(b), §44, or §66(a) of the Act, the applicant must assert that the applicant has a bona fide intention to exercise legitimate control over the use of the certification mark in commerce. See 37 C.F.R. 2.45(b). 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 certification mark in commerce.
If there is doubt as to the existence or nature of such control by the applicant, the examining attorney should 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).
1306.06(g)(iv) Use by Others Indicated in Dates-of-Use Clause
When specifying the dates of first use, the applicant must indicate that the certification mark was first used under the authority of the applicant, or by persons authorized by the applicant, because a certification mark is not used by the applicant itself.
1306.06(g)(v) Statement That Mark is Not Used by Applicant
The application must contain a statement that the applicant is not engaged in (or, if the application is filed under §1(b), §44 or §66(a) of the Act, will not engage in) the production or marketing of the goods or services to which the mark is applied. See 37 C.F.R. 2.45. This statement does not have to be verified, and can therefore be entered by examiner's amendment.
1306.06(g)(vi) Amendment to Different Type of Mark
If an application is filed to register a mark as a certification mark and the mark is actually another type of mark, or if an application is filed to register a mark as another type when it is actually a certification mark, the application may be amended (without additional fee) to request registration as the proper type of mark. It is preferred that the applicant completely rewrite the application to provide a clean copy, rather than amend the original papers. Also, the application should be re-executed because some essential allegations differ for the different types of marks.