T.M.E.P. § 1306.09
Uncertainty Regarding Type of Mark

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1306.09 Uncertainty Regarding Type of Mark

When the facts in the application are insufficient to provide an adequate basis for determining whether the mark is functioning as a trademark or service mark or as a certification mark, the examining attorney should ask for further explanation as to the activities in which the mark is used and should require a sufficient disclosure of the facts to enable a proper examination to be made. The manner in which the activities associated with a mark are conducted is the main factor that determines the type of mark. The conduct of parties involved with the mark evidences the relationship between the parties, and the responsibilities of each to the goods or services and to the mark.

1306.09(a) Distinction Between Certification Mark and Collective Mark

A collective trademark or collective service mark indicates origin of goods or services in the members of a group. A collective membership mark indicates membership in an organization. A certification mark certifies characteristics or features of goods or services. See American Speech-Language-Hearing Association v. National Hearing Aid Society, 224 USPQ 798, 806-808 (TTAB 1984), for a discussion of the distinction between collective marks and certification marks.

Both collective marks and certification marks are used by more than one person, but only the users of collective marks are related to each other through membership in a collective group. The collective mark is used by all members and the collective organization holds the title to the collective mark for the benefit of all members.

A certification mark may be used to certify that the work or labor on the goods or services was performed by a member of a union or other organization. See TMEP §1306.03. Used in this manner, the certification mark certifies not that the user is a member of an organization but that the labor on the user's goods or services was performed by a member of an organization.

An application to register a mark that is used or intended to be used by members of a collective group must be scrutinized carefully to determine the function of the mark. If the mark is used or intended to be used by the members as a trademark on goods they produce or as a service mark for services they perform, then the mark is a collective trademark or collective service mark. If the mark is used or intended to be used by members to indicate membership in an organization, then the mark is a collective membership mark. However, if use of the mark is or will be authorized only under circumstances designated by the organization to certify characteristics or features of the goods or services, the mark is a certification mark.

1306.09(b) 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 America, 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. Monsanto, 201 USPQ at 870.

1306.09(c) Patent Licenses

Sometimes the owner of a patent asserts ownership of the mark that is applied to goods that are manufactured under license from the patent owner, in accordance with the terms and specifications of the patent. In most cases, these marks have been registered as trademarks, on the basis of related-company use. Generally, the patent owner's purpose, in arranging for the application of a mark to the goods manufactured under his or her license, would be to identify and distinguish those goods whose nature and quality the patent owner controls through the terms and specifications of the patent. Therefore, registration as a trademark (on the basis of related-company use) rather than registration as a certification mark would be appropriate.