TMEP 1306.04(d)(i): Whether Certification Mark and Trademark or Service Mark Appear on Specimen Together

This is the October 2015 Edition of the TMEP

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1306.04(d)(i)    Whether Certification Mark and Trademark or Service Mark Appear on Specimen Together

It is customary for trademarks or service marks to be placed on goods or used with services in conjunction with certification marks. However, it is also possible for a certification mark to be the only mark used on goods or with services. Some producers market their goods or services without using a trademark or service mark, yet these producers may be authorized to use a certification mark and, as a result, the certification mark would be the only mark on the goods or services. In these situations, the significance of the mark might not be readily apparent and the examining attorney should request an explanation under 37 C.F.R. §2.61(b) of the circumstances to ascertain whether the mark is a certification mark rather than a trademark or service mark. See also TMEP §1306.06.

When a trademark or a service mark appears on the specimen in addition to a certification mark, the certification mark can be on a separate label, or can be included on a single label along with the user’s own trademark or service mark.

A composite certification mark may include a trademark or service mark, provided the composite mark functions to certify, with the trademark or service mark serving only to inform, or to suggest the certification program, rather than to indicate the commercial origin of the goods or services with which the mark is used. These situations usually are created when a company that produces goods or performs services wants to develop a program and a mark to certify characteristics of the goods or services of others that are related to the producer’s own goods or services. See the examples in TMEP §1306.04(b).

Under these circumstances, the trademark or service mark must be owned by the same person who owns the certification mark, and the trademark or service mark may not be identical to the certification mark. See 37 C.F.R. §§2.45(f), 2.86(d).

Further, a party may not include the trademark or service mark of another in a certification mark, even with a disclaimer. If the examining attorney believes that a trademark or service mark included in a certification mark is not owned by the applicant, the examining attorney must refuse registration of the certification mark based on Section 2(d), 15 U.S.C. §1052(d), or false association under Section 2(a), 15 U.S.C. §1052(a), as appropriate.