A lesson in applying for a Certification Mark

I stumbled across an interesting trademark application the other day. On September 10, 2007, three individuals filed a §1(b) intent-to-use application for the mark AIDS HAPPENS (for shirts and hats). What makes this application interesting is the type of trademark for which the applicants filed, namely a certification mark. The certification statement set forth in the application is as follows: “The certification mark, as intended to be used by authorized persons, is intended to certify Ramos, Joshua I Mozg, Thomas W Derousseau, Philip.”

So, the applicants are seeking a certification mark, to be used by authorized persons, to certify that the shirts and hats with the mark AIDS HAPPENS are certified as Josh Ramos, Thomas Mozg, and Philip Derousseau. Hmmmm. Not surprisingly, the applicants filed the application on their own, and did not seek counsel from a trademark attorney. If they had, they would have been told that what they are seeking is a regular trademark, and not a certification mark.

This happens more often than some may think – applicants filing a certification mark application, when what they are really seeking is a more traditional trademark or service mark. While I do not understand how such applicants exploring the USPTO’s trademark website could end up mistakenly filing for a certification mark rather than for a trademark or service mark , it happens enough that a basic review of certification marks is in order.

What is a Certification Mark?
Unlike a trademark, which is used to identify the source of goods and services, a certification mark is any word, name, symbol, or device, or any combination thereof used by a person other than its owner to certify to:
(1) Regional or other geographic origin of such person’s goods or services;
(2) Material, mode of manufacture, quality, accuracy or other characteristics of such person’s goods or services; or
(3) That the work or labor on such person’s goods or services was performed by members of a union or other organization or by a person who meets certain standards and tests of competency set by the owner.
See § 45 of the Trademark Act, 15 U.S.C. §1127.

There are two main differences between a certification mark and a trademark or service mark. First, a certification mark does not indicate commercial source nor distinguish the goods or services of one person from those of another person, but instead inform consumers that the goods or services of a mark user meet certain standards established by the mark owner. Second, a certification mark is not used by its owner in the sense that the owner of a certification mark does not apply the mark to the owner’s goods or services. Rather, the mark is used by other persons on their goods or services, and the owner of the mark controls the use of such by other persons by ensuring that the goods or services bearing the certification mark meet the certification criteria the owner has established for the mark.

Certification Marks certifying to Geographic Origin

Examples of certification marks that certify that goods or services originate in a specific geographic region are CERTIFIED MAINE LOBSTER and JERSEY FRESH FROM THE GARDEN STATE.

One issue that arises with respect to geographic region certification marks is the authority of the owner to control the use of the mark. Normally, a government agency or quasi-governmental organization with power and authority in the named geographic region is the owner of such a mark because such governmental bodies are perceived as being in the best position to fulfill the duties of ensuring the right of all persons in the region to use the term and preventing improper uses of the mark by those not entitled to do so. Using the above two certification marks as examples, CERTIFIED MAINE LOBSTER is owned by the Maine Lobster Promotion Council and JERSEY FRESH FROM THE GARDEN STATE is owned by the New Jersey Department of Agriculture.

Certification Marks certifying to Quality Standards
Examples of certification marks that certify that the goods or services meet certain standards in relation to quality, materials, or mode of manufacture are the UL logo (certifying that certain electrical equipment meets the safety standards of Underwriters Laboratories Inc.) and NSF (certifying that certain food equipment meets the public health standards established by NSF International).

Certification Marks certifying that Labor Was Performed by Specific Group
Examples of certification marks that certify that the work or labor on the goods or services was performed by a member of a union or other organization or by a person who meets certain standards and tests of competency set by the owner are UFCW UNION MADE (certifying that the goods were produced by members of the United Food & Commercial Workers International Union, AFL-CIO, CLC and in accordance with adopted standards) and CONCRETE HOME SPECIALIST (certifying that the designated contractors and installers meet the certifier's standards of training and experience in the installation and use of insulating concrete forms for home construction). The owner of this type of certification mark is not certifying to the quality of the work being performed, but rather only that the work performed was by a member of the union or other organization or by a person meeting certain standards established by the owner.

Certification Marks of Competency versus Titles or Degrees
One issue that arises with respect to this type of certification mark is where the mark serves more as a title or a degree of a person signifying the professional qualifications of such person. Whether a mark that appears to be a title or degree can function as a certification mark depends on the standards set by the owner. See, e.g., CERTIFIED SOFTWARE MANAGER (certifying persons who passed the certifier's examination and have met certifier's standards for software asset and licensing management), which when used on a certificate was found to indicate only that the holder of the certificate had been awarded a title or degree; compare the registered certification mark CERTIFIED CONTROL SYSTEMS TECHNICIAN (certifying such persons as having met certain educational and experiential criteria, has passed the core and specialty examinations in the field of industrial instrumentation and process controls, and adheres to ethical standards established by applicant). Where the standards set by the owner appear to be nothing more than passing a test and following certain established rules, such mark would be deemed more of a title, and not a certification mark. However, where the standards set by the owner involve having certain academic and work experience in addition to passing an exam and following established rules, the mark serves more of a certification function.

Certification Marks of Work done by a Group versus Collective Marks
A certification mark used to certify that the work or labor on the goods or services was performed by a member of a union or other organization is not to be confused with a collective mark, which is a type of trademark indicating membership in a group. A collective trademark or service mark serves to indicate the origin of goods/services in the members of a group. E.g., THE FTD BELOVED BOUQUET and AII AMERICAN INSTITUTE OF INSPECTORS. A collective membership mark indicates membership in an organization. E.g. REALTOR ASSOCIATE (Interesting tidbit: the famous REALTOR mark is actually a registered service mark, and not a collective membership mark). In the case of a collective mark, the users of the mark are all members of the same collective group and the collective organization owns the collective mark for the benefit of all members. Contrast this with a certification mark used to certify that the work or labor on the goods or services was performed by a member of a union or other organization. In such case, the certification mark is not certifying that the user is a member of an organization, but rather that the labor which worked on the user's goods or services was performed by a member of a union or other organization or by a person who meets certain standards and tests of competency set by the owner.

Examination of Certification Marks
Certification marks are subject to the same laws governing the registration of regular trademarks (e.g., descriptiveness, disclaimers, likelihood of confusion, etc.). One exception is with respect to marks that are “primarily geographically descriptive” – while such a mark may be rejected as a trademark or service mark, it can be allowed as a certification mark indicating geographic regional origin.

Because of the different purposes served by certification marks compared to trademarks/service marks, an owner of a registered trademark for goods or service mark for services cannot register the same mark as a certification mark for such goods and services, and likewise, an owner of a registered certification mark which certifies particular goods or services cannot register the same mark as a trademark/service mark for such goods or services. See §4 of the Trademark Act, 15 U.S.C. §1054. The rationale behind the prohibition is obvious – having the same mark used for two such different purposes would cause consumer confusion about the meaning of the mark.

However, an owner may have what is called a composite certification mark, which is a certification mark that includes a trademark or service mark. A composite certification mark is allowed so long as it does serve the function of certifying the goods or services to which it is attached, and not used to indicate origin of the goods or services. In such case, the trademark/service mark part of the composite certification mark serves an informational role, such as to identify the certifying owner. See., e.g., the certification mark AAA APPROVED contains the registered trademark AAA. In order to obtain a composite certification mark, the trademark owner and the certification mark owner must be the same.

Certification mark applicants must provide a statement of the characteristics, standards, or other features that are certified or intended to be certified by the mark. Such a statement can begin with "The certification mark, as used (or intended to be used) by authorized persons, certifies (or is intended to certify) . . . ." See 37 C.F.R. §2.45. In addition, when specifying dates of first use, applicants must indicate that the certification mark was first used under the authority of the applicant or by persons authorized by the applicant. Applicants must also make a statement that the applicant is not engaged in or will not engage in (for §1(b), §44 or §66(a) applications) the production or marketing of the goods or services to which the mark is applied.

Certification marks do not have the same classifications of goods and services as typical trademark and service marks. In certification mark applications, all goods are classified in Class A and all services are classified in Class B – and a single application may contain both classes. The goods and services do not need to be identified as specifically as a traditional trademark/service mark application. For an application based on §66(a), the classification is already established by the International Bureau of the World Intellectual Property Organization in accordance with the Nice Agreement for the International Classification of Goods and Services for the Purposes of the Registration of Marks, and therefore, cannot be changed to conform to the PTO’s Class A-B system. If the §66(a) application appears to be for a certification mark, the PTO will keep the original international classification.

An application to register a certification mark may be based on a foreign registration under §44 of the Trademark Act; however, the scope of the foreign registration may dictate whether such registration can serve as a basis for registering the mark in the U.S. For example, a foreign trademark registration cannot serve as a basis for registration as a certification mark in the United States.

The specimen of use that must be submitted with the application (or with the amendment to allege use or the statement of use for §1(b) applications) must show how persons other than owner will use the mark on goods or services in order to serve one of the three main certification functions mentioned above.

In addition, a copy of the standards established by the owner to determine which persons can use the owner’s certification mark for their goods or services must be submitted with the application (or with the amendment to allege use or the statement of use for §1(b) applications). These standards do not have to be original, and can be the standards established by a government agency or adopted by a private organization.

Finally, the applicant must assert that the applicant is exercising control over the use of the certification mark in commerce (for §1(a) applications) or has a bona fide intent to exercise control over the use of the certification mark in commerce (for §1(b), §44, or §66(a) applications). For a §1(b) application, the applicant must make this statement in either the amendment to allege use or the statement of use before the certification mark can be registered.

Finally, and most importantly for the AIDS HAPPENS applicants and any other applicants who wrongly file for a trademark using the certification mark application form, an applicant can amend the application to a different type of mark. The examining attorney will typically attach the form necessary to the non-final office action and will suggest the proper classification of goods and services.

So let that be a lesson to you, Messrs. Ramos, Mozg, and Derousseau. Good luck with the prosecution of your trademark application (emphasis on the word trademark).