TMEP 1402.11(k): Accreditation- and Certification-Related Services vs. Certification Marks

This is the October 2015 Edition of the TMEP

Previous: §1402.11(j) | Next: §1402.12

1402.11(k)    Accreditation- and Certification-Related Services vs. Certification Marks

Service marks are used to identify and distinguish the services of one person from the services of others and to indicate the source of the services. 15 U.S.C. §1127. For information about what constitutes a service under the Trademark Act, see TMEP §1301.01─1301.01(b)(vi). Unlike service marks, certification marks are not used by their owners but instead are used by authorized producers of goods or services to indicate that the goods or services possess certain prescribed characteristics or meet certain standards established by the certification mark owner. See TMEP §1306.01─1306.06.

Accreditation and certification activities are not considered “services” under the Trademark Act or Nice Classification and should not be included in the identification of services for a service-mark application. However, activities underlying the accreditation or certification, such as testing goods/services to determine whether they conform to established accreditation/certification standards, may constitute services under the Trademark Act if they are performed for the benefit of others and meet the other criteria for activities that constitute services. See TMEP §§1301.01(a)─1301.01(a)(iii). The development, evaluation, or testing of accreditation or certification standards may also constitute services under the Trademark Act when those activities are performed for the benefit of or to the order and specification of others. See generally TMEP §1301.01.

Identifications for accreditation- or certification-related services should make clear the nature of the activities performed for the benefit of others. Therefore, examining attorneys must require clarification of an identification for accreditation- or certification-related services where the activity identified does not clearly constitute a service under the Trademark Act. For example, the identification “Accreditation services, namely, setting and providing standards for {indicate field or subject matter} for the purposes of accreditation” is indefinite because the activities may be performed by the accrediting body for its own benefit rather than by a third party for the benefit of the accrediting body. Thus, it is unclear whether the activities encompassed by the identification constitute services under the Trademark Act and clarification is required.

For information on identifying goods or services of authorized users in certification mark applications, see TMEP §1306.02(c).