TMEP 1306.04(b): Ownership

October 2017 Edition of the TMEP

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1306.04(b)    Ownership

The owner of a certification mark is the party responsible for the certification that is conveyed by the mark. The party who affixes the mark, with authorization of the certifier, does not own the mark; nor is the mark owned by someone who merely acts as an agent for the certifier, for example, an inspector hired by the certifier. The certifier, as owner, is the only person who may file an application for registration of a certification mark. See In re Safe Elec. Cord Comm., 125 USPQ 310 (TTAB 1960).

Certification is often the sole purpose for the owner of a certification mark. However, a person is not necessarily precluded from owning a certification mark because he or she also engages in other activities, including the sale of goods or the performance of services. However, the certification mark may not be the same mark that the person uses as a trademark or service mark on the same goods or services. See 37 C.F.R. §2.45(f); TMEP §1306.04(f).

Examples of organizations that conduct both types of activities are trade associations and other membership or "club" types of businesses, such as automobile associations. These organizations may perform services for their members, and sell various goods to their members and others, as well as conduct programs in which they certify characteristics or other aspects of goods or services, especially of kinds which relate to the main purpose of the association.

Manufacturing or service companies that do not certify the goods or services of members may nonetheless engage in certification programs under proper circumstances. For example, a manufacturer of chemical wood preservatives might conduct a program certifying certain characteristics of wood or wood products that are treated and sold by others. Among the characteristics or circumstances certified could be the fact that a preservative produced by this manufacturer under a specified trademark was used in the treatment.

A magazine publisher may also conduct a certification program relating to goods or services that are advertised in or have some relevance to the interest area of the magazine.

The certifier/owner determines the requirements for the certification. The standards do not have to be created by the certifier/owner, but may be standards established by another person, such as specifications promulgated by a government agency or standards developed through research of a private research organization. See TMEP §1306.03(b) regarding the standards for certification. However, if the name of the organization that developed the standards is part of the mark, an issue could arise as to whether the mark is deceptively misdescriptive under 15 U.S.C. §1052(e)(1)   ( see TMEP §1209.04) or falsely suggests a connection with persons, institutions, beliefs, or national symbols under 15 U.S.C. §1052(a)   ( see TMEP §1203.03(c)).

See TMEP §1306.04(d)(i) regarding appearance of a trademark or service mark in a certification mark or on a specimen, and see TMEP §1306.05(b)(ii) regarding the authority to control a geographic certification mark.