TMEP 1302.01: Brief History of Collective Marks

October 2017 Edition of the TMEP

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1302.01    Brief History of Collective Marks

Under the Trademark Act of 1905, registration could be based only on a person’s own use of a mark. The Act did not permit for registration of collective and certification marks because such marks are generally used by a member of a collective organization or an authorized user, while the owner of the mark exercises legitimate control over this use by others. However, the June 10, 1938 amendment to the Act of 1905, out of which §4 and the accompanying definitions in §45 grew, changed this limitation on use and provided for registration of a mark by an owner who "exercises legitimate control over the use of a collective mark." "Collective marks," however, were not defined in the federal statute until implementation of Section 45 of the Act of 1946.

Section 4 of the Trademark Act of 1946 provides the authority for the registration of collective and certification marks by persons exercising legitimate control over their use, even in the absence of an industrial or commercial establishment. 15 U.S.C. §1054. Section 45 defines collective marks and certification marks separately, as distinctly different types of marks. 15 U.S.C. §§1054, 1127. Additionally, the definition of collective mark in §45 encompasses collective trademarks and collective service marks, as well as collective membership marks, which indicate membership in a union, association, or other organization. 15 U.S.C. §1054. See TMEP §1306 regarding certification marks.