TMEP 1306.04(e): Relationship of §14 (Cancellation)

This is the October 2015 Edition of the TMEP

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1306.04(e)    Relationship of §14 (Cancellation)

15 U.S.C. 1064   Cancellation (Extract)

A petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed as follows by any person who believes that he is or will be damaged, including as a result of a likelihood of dilution by blurring or dilution by tarnishment under section 1125(c) of this title, by the registration of a mark on the principal register established by this [Act], or under the Act of March 3, 1881, or the Act of February 20, 1905....

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(5) At any time in the case of a certification mark on the ground that the registrant (A) does not control, or is not able legitimately to exercise control over, the use of such mark, or (B) engages in the production or marketing of any goods or services to which the certification mark is applied, or (C) permits the use of the certification mark for purposes other than to certify, or (D) discriminately refuses to certify or to continue to certify the goods or services of any person who maintains the standards or conditions which such mark certifies....

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Nothing in paragraph (5) shall be deemed to prohibit the registrant from using its certification mark in advertising or promoting recognition of the certification program or of the goods or services meeting the certification standards of the registrant. Such uses of the certification mark shall not be grounds for cancellation under paragraph (5), so long as the registrant does not itself produce, manufacture, or sell any of the certified goods or services to which its identical certification mark is applied.

Section 14 of the Trademark Act, 15 U.S.C. §1064, provides for petitions to cancel registrations. Subsection (5) lists specific circumstances when petitions to cancel certification marks may be filed. The only subsections in (5) applicable to examination would be (A) and (B), as an analysis of (5)(A)-(D) below shows:

Subsection A (“exercising legitimate control”): In an application, the applicant states under oath or declaration that the applicant is exercising, or has a bona fide intention to exercise, legitimate control over the use in commerce of the certification mark. See 37 C.F.R. §2.45(a)(4)(i)(F), (a)(4)(ii)(C), (a)(4)(iii)(C), (a)(4)(iv)(C), (a)(4)(v)(B); TMEP §1306.04(b)(i). Such statement is accepted, unless the examining attorney has knowledge of facts indicating that it should not be accepted.

Subsection B (not engaged in, or will not engage in, the production or marketing of any goods or services to which the certification mark is applied …”): The applicant is required to state, as appropriate, that he or she is not engaged in, or will not engage in, the production or marketing of any goods or services to which the certification mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant. See 37 C.F.R. §2.45(a)(4)(i)(C), (a)(4)(ii)(B), (a)(4)(iii)(B), (a)(4)(iv)(B), (a)(4)(v)(A); TMEP §1306.03(c). Such statement is accepted, unless the record contains facts to the contrary.

Subsection C (used for purposes other than to certify): This subsection concerns whether a party permits use of the certification mark for purposes other than to certify. No statements are required in the application specifically on this point. The existence of unauthorized or illegal uses by others without the applicant’s authorization is not within the examining attorney’s province and cannot be used as a basis for refusal to register, provided that use authorized by the applicant, as supported by the record, is proper certification use.

Subsection D (discriminately refusing to certify): This subsection relates to the obligation of the owner not to discriminately refuse to certify. This subject is not mentioned in §4 or §45, 15 U.S.C. §1054 or §1127. The USPTO does not evaluate, in ex parte examination, whether the standards or characteristics which the mark certifies, as set out by the applicant, are discriminatory per se; nor is it in the province of ex parte procedure to investigate or police how the certification is practiced.