TMEP 1306.04(c): Characteristics of Certification Marks – Specimen Shows Mark Functions as a Certification Mark

This is the October 2015 Edition of the TMEP

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1306.04(c)    Characteristics of Certification Marks – Specimen Shows Mark Functions as a Certification Mark

The Trademark Act does not require that a certification mark be in any specific form or include any specific wording. A certification mark may be wording only, design only, or a combination of wording and design. In other words, there is no particular way that a mark must look in order to be a certification mark.

A certification mark often includes wording such as “approved by,” “inspected,” “conforming to,” “certified,” or similar wording, because certification (or approval) is practically the only significance the mark is to have when it is used on goods or in connection with services. However, this wording is not required, and a mark that lacks this wording can perform the function of certification.

The examining attorney must look to the specimen and any facts disclosed in the record to determine whether the mark is used in certification activity and is in fact a certification mark.

It is not necessary to show that the mark is instantly recognizable as a certification mark, or that the mark has already become well known to the public as a certification mark. However, it should be clear from the record that the circumstances surrounding the use or promotion of the mark will give certification significance to the mark in the marketplace. See Ex parte Van Winkle, 117 USPQ 450 (Comm’r Pats. 1958).

If the specimen shows the proposed mark is not being used by a person other than the applicant or does not function as a certification mark, the examining attorney must refuse registration under §§1, 2, 4, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, 1054, 1127. The applicant may overcome the refusal by submitting an acceptable substitute specimen or amending the filing basis to §1(b), if appropriate. See TMEP §§806.03(c), 904.05. See TMEP §1306.04(d)(ii) regarding specimens showing use as degrees or titles. See TMEP §904.07(b) for information about matter that fails to function as a trademark or service mark.

See TMEP §1306.05(b)(iii) regarding the specimens of use for geographic certification mark applications.