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.