Certification Mark Requirements Explained

Discussed here, a certification mark can be a valuable tool for regional nonprofits and quasi-governmental agencies to build brand awareness. This post focuses on some of the more technical aspects of obtaining and owning a certification mark.

Owners of certified marks have five main obligations to ensure approval and continued registration of their certification mark.

1. Certification Standards

Your organization will be required to identify the set of standards to which your certification mark applies. This is an extremely important step because, as discussed below, your organization must grant the use of the mark to companies or individuals that meet these standards.

2. Control Over the Mark

Trademark law states that an owner of a certification mark must control or be able to exercise legitimate control over use of the mark. This means the owner must take steps to ensure the products or services that will use the mark actually meet the certification standards of the mark. Further, the owner must be cautious to prevent unauthorized use of the mark. If either situation is present, the certification mark is at risk.

3. Use by Owner

Certification marks, by definition, are not to be used by the owner of the mark. If your organization wishes to use a mark in connection with the sale of its own goods and services, a certification mark is not the right vehicle for you.

4. Uses Other than to Certify

Certification mark holders should have a single focus for the use of their marks: to certify certain goods or services. Anytime other factors come into play, such as playing favorites (as discussed below) or permitting a business to incorporate the certification mark into its own trademark, the mark can be at risk.

5. Refusal to Permit the Use of the Certification Mark

Certification mark owners cannot discriminately refuse to certify or continue to certify the goods or services of any person who maintains the standards or conditions which such mark certifies. When a business meets your standards, you should permit the use of your certification mark.

Conclusion

In the right situation, certification marks can be a valuable tool. However, before investing the time and money into setting industry or region standards, you should consult with an attorney to review the obligations of owning this type of mark.

The USPTO Application Process for Certification Marks

The application process for registering a certification mark at the USPTO differs in several important ways from the process for registering a standard trademark. The applicant must specifically identify the type of certification the mark will convey — whether it certifies regional origin, material, mode of manufacture, quality, accuracy, or another characteristic of the certified goods or services. 15 U.S.C. § 1127.

The application must also include a copy of the standards the owner uses to determine whether to authorize use of the mark, or a statement that the applicant will furnish the standards upon request. The USPTO examining attorney will scrutinize whether the proposed certification criteria are sufficiently defined and objective to enable consistent application.

One important difference from standard trademark applications is the use requirement. While standard trademarks are used by the registrant itself, certification marks are used only by authorized third parties. The application must reflect this — the owner of a certification mark can never use the mark on its own products or services. If the certifying organization begins using the mark to promote its own commercial interests, the registration is vulnerable to cancellation.

Maintaining the Integrity of Your Certification Program

Registration is only the beginning. The long-term value of a certification mark depends entirely on the perceived credibility and consistency of the certification program behind it. Consumers and businesses that rely on the mark must be confident that every authorized user has genuinely met the same objective standards.

This requires the certifying organization to develop and document clear, objective standards; establish a rigorous application and approval process; conduct ongoing audits or inspections of authorized users; and take prompt enforcement action against unauthorized use or use by certified entities that fall out of compliance. A certification program that is perceived as rubber-stamping applicants or turning a blind eye to non-compliant users will lose its market credibility and may face cancellation of the registration.

Certification Mark vs. Collective Mark: Understanding the Difference

Certification marks are frequently confused with collective marks, and the distinction matters. A collective mark is used by members of a collective organization — a trade association, cooperative, or similar group — to indicate membership. The mark identifies the source of goods or services as coming from members of that collective.

A certification mark, by contrast, is not about membership. It certifies specific characteristics of goods or services — origin, quality, material, process — and must be available to any entity that meets the certification standards, regardless of whether they are a member of an organization. The owner of a certification mark cannot discriminate among qualified applicants based on membership or other non-standard criteria. This mandatory licensing obligation is a defining legal characteristic of the certification mark and distinguishes it from a collective mark or a standard trademark.

Enforcement Against Unauthorized Users

Protecting the integrity of a certification mark requires vigilant monitoring and decisive enforcement. When a business uses the certification mark without authorization — whether by falsely claiming to meet the certification standards or by using the mark after losing certified status — the certifying organization has both the right and the obligation to act.

Legal remedies for infringement of a certification mark are the same as for standard trademark infringement: injunctive relief stopping the unauthorized use, an accounting of profits derived from the unauthorized use, actual damages, and attorney’s fees in exceptional cases. Prompt enforcement also sends a market signal that the certification program is credible, which protects the long-term value of the mark for all authorized users.

If your organization is considering applying for a certification mark or needs assistance managing an existing certification program, Revision Legal’s trademark attorneys can guide you through every step of the process. Contact us at 855-473-8474 or through our website for a consultation.