TMEP 1904.02(d): Examination Issues Specific to Certification and Collective Marks

This is the October 2015 Edition of the TMEP

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1904.02(d)    Examination Issues Specific to Certification and Collective Marks

Clarification of Mark Type

A §66(a) application may indicate that the mark is a “Collective, Certificate or Guarantee Mark.” In such a case, the examining attorney must require the applicant to clarify the type of mark for which it seeks protection, unless it is already clear from the record.

Classification

If a §66(a) applicant indicates that the mark is a certification mark or collective membership mark, the USPTO will not reclassify it into U.S. Class A, B, or 200. See 37 C.F.R. §§2.44(a)(3)(ii), 2.45(a)(3). United States Classes A, B, and 200 are classes from the prior U.S. classification system that are still used in the United States to classify certification marks for goods (Class A), certification marks for services (Class B), and collective membership marks (Class 200). 37 C.F.R. §§6.3, 6.4. These classes are not included in the international classification system under the Nice Agreement.

Verified Statement

The verified statement required for a §66(a) application, referenced in TMEP §1904.01(c), is not part of the international registration on file with the IB for a collective trademark, collective service mark, collective membership mark, or certification mark; therefore, the examining attorney must require the verified statement during examination. TMEP §§1303.01(a)(v), 1303.01(b)(ii), 1304.02(a)(v), 1304.02(b)(ii), 1306.02(a)(v), 1306.02(b)(ii); see 37 C.F.R. §§2.44(a)(4)(v), (b)(2), 2.45(a)(4)(v)(B), (b)(2).

Additional Requirements

The examining attorney must also require the §66(a) applicant to comply with the additional requirements for the particular type of mark, i.e., collective trademark, collective service mark, collective membership mark, or certification mark. See 37 C.F.R. §§2.44, 2.45. See TMEP §§1303–1303.02(b) regarding the requirements for collective trademark and collective service mark applications, TMEP §§1304–1304.03(c) regarding the requirements for collective membership mark applications, and TMEP §§1306–1306.06(c) regarding the requirements for certification mark applications.