T.M.E.P. § 1304.08
Refusal to Register Membership Mark

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1304.08 Refusal to Register Membership Mark

An application to register a collective membership mark on the Principal Register must meet all the criteria for registration of other marks on the Principal Register. 15 U.S.C. 1054. See 37 C.F.R. 2.46. Likewise, when determining the registrability of a collective membership mark on the Supplemental Register, the same standards are used as are applied to other types of marks. See 37 C.F.R. 2.47. Thus, the same standards generally applicable to trademarks and service marks are used in considering issues such as descriptiveness or disclaimers. Racine Industries Inc. v. Bane-Clene Corp., 35 USPQ2d 1832, 1837 (TTAB 1994); In re Association of Energy Engineers, Inc., 227 USPQ 76, 77 (TTAB 1985).

1304.08(a) Matter That Does Not Function as a Membership Mark

Whether or not matter functions as a collective membership mark is determined by the specimens and evidence of record. It is the use of the mark to indicate membership rather than the character of the matter composing the mark that determines whether a term or other designation is a collective membership mark. See Ex parte Grand Chapter of Phi Sigma Kappa, 118 USPQ 467 (Comm'r Pats. 1958), which held that Greek letter abbreviations are not collective membership marks indicating membership in Greek letter societies simply because some people apply them to athletic jerseys, and In re Mountain Fuel Supply Co., 154 USPQ 384 (TTAB 1967), which held that the design on a jewelry pin indicated longevity rather than membership in an organization. If a proposed mark does not function as a mark indicating membership, the examining attorney should refuse registration under §§1, 2, 4, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, 1054, and 1127. See TMEP §1304.08(c) as to degrees or titles.

1304.08(b) Likelihood of Confusion

Likelihood of confusion may arise from the contemporaneous use of a collective membership mark on the one hand and a trademark or service mark on the other. The same standards used to determine likelihood of confusion between trademarks and service marks also apply to collective membership marks. See 15 U.S.C. 1052(d); In re National Novice Hockey League, Inc., 222 USPQ 638 (TTAB 1984); Allstate Life Ins. Co. v. Cuna International, Inc., 169 USPQ 313 (TTAB 1971), aff'd, 487 F.2d 1407, 180 USPQ 48 (C.C.P.A. 1973); Boise Cascade Corp. v. Mississippi Pine Manufacturers Assn., 164 USPQ 364 (TTAB 1969).

The finding of likelihood of confusion between a collective membership mark and a trademark or service mark is not based on confusion as to the source of any goods or services which happen to be provided by the members of the collective organization. Rather, the question is whether relevant persons are likely to believe that the trademark owner's goods or services emanate from, are endorsed by, or are in some way associated with the collective organization. In re Code Consultants Inc., 60 USPQ2d 1699, 1701 (TTAB 2001).

1304.08(c) Degree or Title Designations Contrasted to Membership Marks

Professional, technical, educational, and similar organizations often adopt letters or similar designations to be used by persons to indicate that the persons have passed certain tests or completed certain courses of instruction that are specified by the organization, or have demonstrated a degree of proficiency to the satisfaction of the organization. When such a symbol is used solely as a personal title or degree for an individual (i.e., it is used in a manner that identifies only a title or degree conferred on this individual), then it does not serve to indicate membership in an organization and registration as a membership mark must be refused. In re International Institute of Valuers, 223 USPQ 350 (TTAB 1984) (refusal affirmed in collective membership application where use of the mark on specimens indicated award of a degree or title, and not membership in collective entity). See also In re National Society of Cardiopulmonary Technologists, Inc., 173 USPQ 511 (TTAB 1972). Cf. In re Thacker, 228 USPQ 961 (TTAB 1986); In re National Association of Purchasing Management, 228 USPQ 768 (TTAB 1986); In re Mortgage Bankers Association of America, 226 USPQ 954 (TTAB 1985).

If the proposed mark functions simply as a degree or title, the examining attorney should refuse registration under §§1, 2, 4, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, 1054, and 1127, on the ground that the matter does not function as a membership mark. See TMEP §1304.08(a).