1304.09 Examination of Collective Membership Mark Applications
The examination of collective membership mark applications is conducted in the same manner as the examination of applications to register trademarks and service marks, using the same criteria of registrability. Thus, the same standards generally applicable to trademarks and service marks are used in considering issues such as descriptiveness or disclaimers. However, use and ownership requirements are slightly different due to the nature of collective membership marks.
1304.09(a) Classification in Membership Mark Applications
Section 1 and 44 Applications. In applications under §§1 and 44 of the Trademark Act, collective membership marks are classified in Class 200. 37 C.F.R. 6.4. Class 200 was established as a result of the decision in Ex parte Supreme Shrine of the Order of the White Shrine of Jerusalem, 109 USPQ 248 (Comm'r Pats. 1956). Before this decision, there was no registration of membership insignia as such on the theory that all collective marks were either collective trademarks or collective service marks. Some marks that were actually membership marks were registered under the Act of 1946 as collective service marks, and a few were registered as collective trademarks. That practice was discontinued upon the clarification of the basis for registration of membership marks and the creation of Class 200.
Section 66(a) Applications. In a §66(a) application (i.e., a request for extension of protection of an international registration to the United States under the Madrid Protocol), classification is determined by the International Bureau of the World Intellectual Property Organization ("IB"), in accordance with the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks ("Nice Agreement"). Class 200 comes from the old U.S. classification system (see TMEP §1401.02) and is 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 collective membership mark, the United States Patent and Trademark Office ("USPTO") will not reclassify it into Class 200. However, the applicant must comply with all other U.S. requirements for collective membership marks, regardless of the classification chosen by the IB.
1304.09(b) Identifications in Membership Mark Applications
An identification of goods or services is not appropriate in connection with a collective membership mark. The purpose of a collective membership mark is to indicate membership in an organization. Appropriate identification language would be, "to indicate membership in an organization (association, club or the like)...," followed by a phrase indicating the nature of the organization or association, e.g., "to indicate membership in an organization of computer professionals."
The nature of an organization can be indicated by specifying the area of activity of its members (e.g., they may sell lumber, or cosmetics, or food, or may deal in chemical products or household goods, or they may provide services as fashion designers or engineers or accountants). If goods or services are not directly involved, the nature of an organization can be indicated by specifying the organization's type or purpose (such as a service or social club, a political society, a trade association, a beneficial fraternal organization, or the like). Detailed descriptions of an organization's objectives or activities are not necessary. It is sufficient if the identification indicates broadly either the field of activity as related to the goods or services, or the general type or purpose of the organization.
1304.09(c) Specimens of Use for Membership Marks
The owner of a collective membership mark exercises control over the use of the mark but does not itself use the mark to indicate membership. A specimen of use of a collective membership mark must show use by members to indicate membership in the collective organization. 37 C.F.R. 2.56(b)(4). In re International Association for Enterostomal Therapy, Inc., 218 USPQ 343 (TTAB 1983); In re Triangle Club of Princeton University, 138 USPQ 332 (TTAB 1963). See also TMEP §1304.03.
The most common type of specimen is a membership card. Membership certificates are also acceptable. The applicant may submit a blank or voided membership card or certificate.
For trade or professional associations, decals bearing the mark for use by members on doors or windows in their establishments, wall plaques bearing the mark, or decals or plates for use, e.g., on members' vehicles are satisfactory specimens. If the members are in business and place the mark on their business stationery to show their membership, pieces of such stationery are acceptable. Flags, pennants, and banners of various types used in connection with political parties, club groups, or the like could be satisfactory specimens.
Many associations, particularly fraternal societies, use jewelry such as pins, rings or charms to indicate membership. See In re Triangle Club of Princeton University, supra. However, not every ornamental design on jewelry is necessarily an indication of membership. The record must show that the design on a piece of jewelry is actually an indication of membership before the jewelry can be accepted as a specimen of use. See In re Institute for Certification of Computer Professionals, 219 USPQ 372 (TTAB 1983) (in view of contradictory evidence in record, lapel pin with nothing more than CCP thereon was not considered evidence of membership); In re Mountain Fuel Supply Co., 154 USPQ 384 (TTAB 1967) (design on pin did not indicate membership in organization, but merely showed length of service).
Shoulder, sleeve, pocket, or similar patches, whose design constitutes a membership mark and that are authorized by the parent organization for use by members on garments to indicate membership, are normally acceptable as specimens.
A specimen that shows use of the mark by the collective organization itself, rather than by a member, is not acceptable. Collective organizations often publish various kinds of printed material, such as catalogs, directories, bulletins, newsletters, magazines, programs, and the like. Placing the mark on these items by the collective organization represents use of the mark as a trademark or service mark to indicate that the collective organization is the source of the material. The mark is not placed on these items by the parent organization to indicate membership of a person in the organization.
1304.09(d) Special Elements of Applications for Collective Membership Marks
1304.09(d)(i) Exercise of Control
An application to register a collective membership mark must accurately convey the use or intended use of the mark with appropriate language, as follows.
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 mark in commerce by its members.
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 mark in commerce by its members. 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 mark in commerce by its members.
1304.09(d)(ii) Manner of Control
In addition to specifying and containing all elements that are applicable for trademarks, an application for registration of a collective mark under §1(a) of the Act must specify the class of persons entitled to use the mark, indicating their relationship to the applicant and the nature of the applicant's control over the use of the mark. 37 C.F.R. 2.44(a).
In addition to specifying and containing all elements that are applicable for trademarks, an application for registration of a collective mark under §1(b), §44, or §66(a) of the Act must specify the class of persons intended to be entitled to use the mark, indicating what their relationship to the applicant will be, and the nature of the control the applicant intends to exercise over the use of the mark. Cf. 37 C.F.R. 2.44(b).
The following language may be used for the above purpose:
Applicant controls (or, if the application is being filed under §1(b), §44, or §66(a), applicant intends to control) the use of the mark by the members in the following manner: [specify].
If the applicant's bylaws or other written provisions specify the manner of control, or intended manner of control, it will be sufficient to so state.
1304.09(d)(iii) Use by Members Indicated in Dates-of-Use Clause
When setting out dates of use of a collective membership mark, the application or allegation of use must state that the mark was first used by members of the applicant rather than by the applicant, and that the mark was first used on a specified date to indicate membership rather than first used on goods or in connection with services.