Several of our clients have recently inquired as to whether their mark can function as a certification trademark. The Trademark Act provides for registration of certification marks under Section 4. It can be any word, symbol, name or device or any combination thereof used by a person other than its owner or one where the owner of the mark maintains a bona fide intent to permit others to use the mark in commerce and the owner registers the mark on the Principal Register at the United States Patent & Trademark Office (“USPTO”). A certification mark differs from a standard trademark in that the owner does not use a certification mark and a mark of this nature does not indicate commercial source nor does it distinguish the goods and services among trademark owners. In fact, if a trademark owner uses the mark then pursuant to the statutory definition it is no longer a valid certification trademark.
There are three types of certification marks. The first category certifies that the goods or services emanate from a specific geographic region. An example would be COGNAC for distilled brandy from a region in France. The second category certifies that the goods and services meet certain standards in connection to the quality, materials, or mode of manufacture. For example, the certification mark UL certifies that samplings of electrical equipment meet certain safety standards. See Midwest Plastic Fabricators, Inc. v. Underwriters Laboratories Inc., 906 F.2d 1568, 15 USPQ2d 1359 (Fed. Cir. 1990). The third category certifies that the work or labor of the goods or services was performed by a member of a union or other organization or that the worker or laborer meets the required standards. For example, CRNA functions as a certification mark used to certify that a person who meets certain standards and tests of competency is performing anesthesia services.
Another common question we receive is can the same mark simultaneously function as a standard trademark and a certification mark. Most practitioners believe that the same mark may not be used both as a certification mark and as a trademark or service mark for the same goods or services. The rationale is that using the same term for both purposes would result in confusion about the meaning of the mark.
Regarding specimens, it should be pointed out that the applicant of a certification mark must show how a person other than the owner uses the mark to certify origin, material, mode of manufacture, quality or other characteristics of the goods or services, or that members of a specific organization performed the work. In certain cases, the owner of the certification mark may prepare a tag or label that bears the certification mark and provide it to the authorized users. Authorized users have the option of only using the certification mark on the goods or in connection with the services or using both the certification mark and their own trademark.
Another difference with certification marks and standard trademarks can be found in how the goods and services are classified. In an application for a certification mark all goods are classified in Class A and all services in Class B. Moreover, the identification statement for a certification mark must describe the goods and/or services of the party who will receive the certification, not the activities of the trademark owner. The certification activities of the mark owner will be described in the certification statement section of the application.
Applicants of a certification mark must submit a copy of the standards established to determine whether others may use the certification mark on their goods and/or services. If the application was submitted under 1(b), the standards will be submitted with the Statement of Use. Keep in mind the standards, do not have to be original, but can be established by a third party, such as a government agency or private research corporation. In the Use Clause, the applicant must specify the dates of first use of the certification mark under the authority of the applicant or by persons authorized by the applicant. In addition, the applicant must state that it will not engage in the production or marketing of the goods or services to which the mark is applied. Applying for a certification mark at the USPTO can be difficult, if you require assistance with your application, please feel free to contact our office and we would be happy to assist you.