TMEP 1304.03(a): Ownership Considerations

October 2017 Edition of the TMEP

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1304.03(a)    Ownership Considerations

Under the definition of "collective mark" in §45 of the Trademark Act, 15 U.S.C. §1127, only a "cooperative, an association or other collective group or organization" can become the owner of a collective mark. However, there is great variety in the organizational form of collective groups whose members use membership marks. The terms "group" and "organization" are broad enough to cover all groups of persons who are brought together in an organized manner such as to justify their being called "collective."

The organization is usually an association, either incorporated or unincorporated, but is not limited to being an association and may have some other form.

A collective membership mark may be owned by someone other than the collective organization whose members use the mark, and the owner might not itself be a collective organization. An example is a business corporation who forms a club for persons meeting certain qualifications, and arranges to retain control of the group and of the mark used by the members of the group. The corporation that has retained control over the use of the mark is the owner of the mark, and is entitled to apply to register the mark. In re Stencel Aero Eng’g Corp., 170 USPQ 292 (TTAB 1971).

To apply to register a collective membership mark, the collective organization which owns the mark must be a person capable of suing and being sued in a court of law. See 15 U.S.C. §1127; TMEP §803.01. The persons who compose a collective group may be either natural or juristic persons.

Application to register a membership mark must be made by the organization or person (including juristic persons) that controls or intends to control the use of the mark by the members and, therefore, owns or is entitled to use the mark. See 15 U.S.C. §1054; In re Stencel Aero Eng’g Corp., 170 USPQ 292 (TTAB 1971). Application may not be made by a mere member.