Antoinette M. Tease Montana Patent
Intellections

Certification Marks Are Different Than Trademarks But Enjoy the Same Benefits of Federal Registration

A certification mark is a name, logo or slogan that is used to signify that the goods or services used in connection with the mark meet certain standards. According to the trademark office, there are three types of certification marks: (1) marks that certify that goods or services originate in a specific geographic region; (2) marks that certify that the goods or services meet certain standards in relation to quality, materials, or mode of manufacture; and (3) marks that certify that the work or labor on the products or services was performed by a member of a union or other organization, or that the performer meets certain standards. Examples of certification marks are the “Good Housekeeping” seal of approval and the “Union” label. DuPont’s “Teflon” is also a certification mark.

Certification marks are different than trademarks in that they do not act as a source identifier, that is, they do not tell the consumer where the goods or services came from. Instead, certification marks signify that the goods or services sold under the mark meet certain standards promulgated by the certifying organization. As opposed to a trademark, which in theory is used by only one company, a certification mark might appear on the goods of several—or even many—different companies. Only one entity owns the certification mark, however, and that entity is the certifying organization. The certifying organization is responsible for promulgating the standards that must be met by anyone using the certification mark, and those standards must be submitted to the trademark office in connection with an application for registration.

Certification marks can be registered on the federal level just like trademarks. Unlike trademarks, however, the registration process is much easier and less expensive. For one, the applicant is not required to pay separate filing fees for goods or services in different classes. Instead, there are only two classes—one for goods and one for services. Thus, if the certification mark is used only on goods, all of the goods can be included in the same class. The trademark office is also much more lenient regarding the description of goods when it comes to
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certification marks. As stated in the Trademark Manual of Examining Procedure, “In a certification mark application, the goods or services that are certified may be identified less specifically than in an application for a trademark or service mark.” In addition, geographic descriptiveness, which can serve as a basis for refusing to register a trademark, does not bar registration of a certification mark.

Certification marks that are registered enjoy all the benefits of a federal trademark registration, including use of the registered trademark symbol (®) and rights that last as long as the mark is being used in interstate commerce. Infringement of a certification mark occurs if someone who is not certified by the owner of the mark uses the mark in connection with his/its goods or services. In that situation, the certifying organization has the right to sue for infringement.

A certification mark carries with it one important restriction, namely, that the owner of the mark (the certifying organization) cannot use the mark on any of its own goods or services. In other words, the certifying organization is supposed to be certifying compliance with its standards but not competing with the goods and services it certifies. This rule is sometimes referred to as the “anti-use by owner” rule. If the owner of the mark violates this rule, registration of the mark is subject to cancellation. Similarly, if the certifying organization is discriminatory in applying its standards, the registration may be cancelled. Registration of a certification mark may also be cancelled if the mark is used to violate antitrust laws by creating an illegal boycott.

Because the registration of certification marks is relatively simple and less expensive as compared to the registration of trademarks, any organization that certifies the goods or services of others ought to consider this form of intellectual property protection. It will not be appropriate in all situations, however. For example, a franchisee who wishes to sell the same goods or services that it certifies cannot register the mark as a certification mark. In addition, the owner of the mark must be prepared to license the mark to anyone who meets the standards associated with the mark; in essence, this rule imposes a form of compulsory licensing.
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The information in this newsletter is provided for informational purposes only and should not be considered legal advice. Please consult a qualified attorney for advice on a specific legal matter.

2005 Antoinette M. Tease, P.L.L.C. All Rights Reserved.

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