TMEP 1306.04(b)(ii): Distinguishing Certification Mark Use from Related-Company Use of Trademark or Service Mark
October 2017 Edition of the TMEP
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1306.04(b)(ii) Distinguishing Certification Mark Use from Related-Company Use of Trademark or Service Mark
Sometimes, an application requests registration of a certification mark, but there is a contractual relationship in the nature of a franchise or license between the applicant and the user of the mark, whereby the applicant, as the franchisor or licensor, specifies the nature or quality of the goods produced (or of the services performed) under the contract. These situations require care in examination because they usually indicate trademark or service mark use (through related companies) rather than certification mark use, because the applicant, as franchisor or licensor, controls the nature of the goods or services and has the responsibility for their quality.
The key distinction between use of subject matter as a certification mark and use as a trademark or service mark through a related company is the purpose and function of the mark in the market place, and the significance that it would have to the relevant purchasing public. A trademark or service mark serves to indicate the origin of goods or services, whereas a certification mark serves to guarantee certain qualities or characteristics. See In re Monsanto Co., 201 USPQ 864, 870 (TTAB 1978); In re Celanese Corp. of Am., 136 USPQ 86 (TTAB 1962).
Furthermore, the owner of a certification mark must permit use of the mark if the goods or services meet the certifier’s standard, whereas a trademark owner may, but is not obligated to, license use of its mark to third parties. In re Monsanto Co., 201 USPQ at 870.