TMEP 1306.01: Types of Certification Marks
October 2017 Edition of the TMEP
Previous: §1306 | Next: §1306.01(a)
1306.01 Types of Certification Marks
Section 4 of the Trademark Act, provides for the registration of "certification marks, including indications of regional origin," which are defined in Section 45 as follows:
The term "certification mark" means any word, name, symbol, or device, or any combination thereof--
- (1) used by a person other than its owner, or
- (2) which its owner has a bona fide intention to permit a person other than the owner to use in commerce and files an application to register on the principal register established by this [Act],
to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person’s goods or services or that the work or labor on the goods or services was performed by members of a union or other organization.
Based on the statute, there are generally three types of certification marks, that is, those that certify:
- 1. Geographic origin. Certification marks may be used to certify that authorized users’ goods or services originate in a specific geographic region (e.g., ROQUEFORT for cheese). See Cmty. of Roquefort v. William Faehndrich, Inc., 303 F.2d 494, 133 USPQ 633 (2d Cir. 1962) (ROQUEFORT for cheese from a municipality in France); State of Fla., Dep’t of Citrus v. Real Juices, Inc., 330 F. Supp. 428, 171 USPQ 66 (M.D. Fla. 1971) (SUNSHINE TREE for citrus from Florida); Bureau Nat’l Interprofessionnel Du Cognac v. Int’l Better Drinks Corp., 6 USPQ2d 1610 (TTAB 1988) (COGNAC for distilled brandy from a region in France); TMEP §§1306.05–1306.05(j).
- 2. Standards met with respect to quality, materials, or mode of manufacture. Certification marks may be used to certify that authorized users’ goods or services meet certain standards in relation to quality, materials, or mode of manufacture (e.g., approval by Underwriters Laboratories). See Midwest Plastic Fabricators Inc. v. Underwriters Labs. Inc., 906 F.2d 1568, 15 USPQ2d 1359 (Fed. Cir. 1990) (UL certifies, among other things, representative samplings of electrical equipment meeting certain safety standards); In re Celanese Corp. of Am., 136 USPQ 86 (TTAB 1962) (CELANESE certifies plastic toys meeting certifier’s safety standards).
- 3. Work/labor performed by member or that worker meets certain standards. Certification marks may also be used to certify that authorized users’ work or labor on the products or services was performed by a member of a union or other organization, or that the performer meets certain standards. See TMEP §1306.04(d)(ii)and cases cited therein for further information.
Differences between certification marks and trademarks or service marks. Two characteristics differentiate certification marks from trademarks or service marks: first, a certification mark is not used by its owner but rather by authorized users and, second, a certification mark does not indicate commercial source or distinguish the goods or services of one person from those of another person but rather indicates that the goods/services of authorized users are certified as to a particular aspect of the goods/services. See TMEP §1306.06(a) for a discussion of the distinction between a certification mark and a collective trademark, collective service mark, or collective membership mark.