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Anatomy of a certification trademark

Posted by ipelton on: July 29th, 2011

The great majority of trademarks identify the source of services or goods offered by the owner. But there are a few categories of special trademarks. Once such category is “certification marks.”

What is a Certification Mark?

In the words of the USPTO,

“Trademarks or service marks and certification marks are different and distinct types of marks, which serve different purposes. A trademark or service mark is used by the owner of the mark on his or her goods or services, whereas a certification mark is used by persons other than the owner of the mark. A certification mark does not distinguish between producers, but represents a certification regarding some characteristic that is common to the goods or services of many persons. Using the same mark for two contradictory purposes would result in confusion and uncertainty about the meaning of the mark and would invalidate the mark for either purpose.” TMEP 1306.05(a).

A mark registered as a certification mark cannot be registered as a standard trademark for the same goods or services certified, and vice-versa.

How is a Certification Mark registered?

When registering a certification mark with the U.S. Patent and Trademark Office, many of the requirements are the same as standard trademarks and service marks. For example, certification marks can still be refused as being merely descriptive or as likely to be confused with one or more registered trademarks.

The biggest issue in many certification mark applications is proper evidence of use – the evidence must show how a person or company other than the owner uses the mark to indicate certification. And the mark bust be used by that person or company to promote the type goods or services which are certified.

Certification marks are classified differently by the USPTO when it comes to the category of goods or services. Certification of goods is in International Class A. Certification of Services is in International Class B.

Other features of certification mark registrations:

  • The application must contain a statement about the characteristics or features of the goods or services that are certified.
  • A copy of the certification standards used to determine who qualifies for certification must be submitted.
  • A statement that the certification mark exercises legitimate control over use of the mark in commerce is required.
  • The application must contain a statement that the applicant is not engaged in the production or marketing of the goods or services to which the mark is applied.

What are some examples?

Here are a few examples of certification marks registered with the USPTO:

SERVICES:

  • (Serving of food and beverages in restaurants and providing lodging in hotels and motel)
  • (Internet access services in public venues utilizing wireless LAN products)
  • (Moving services, Eye care, Automotive repair and maintenance services)

 

GOODS:

  •   (kosher foods, beverages and food products)
  • (foods, prepared food products, beverages and printed materials complying or consistent with applicant’s applicable guidelines or criteria relating to cardiovascular health and fitness, and/or applicant’s medical or science positions relating thereto)
  • (Fresh Florida-grown citrus fruit)
  • (musical sound recordings)
  • (PRODUCTS MADE WHOLLY OR PREDOMINANTLY OF WOOL, INTENDED FOR ULTIMATE CONSUMERS.)

Additional reading:

 

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