Trademarks, certification marks, and collective membership marks are all types of marks that are used with products and services sold in commerce. Any of these can be words, phrases, symbols, designs, logos, and more. Further, each kind of mark can be registered with the US Patent and Trademark Office (“USPTO”). The same process is used to register each type of mark, and generally, the same rules apply. For example, a collective membership mark cannot be registered if the same mark is already being used or if the mark is confusingly similar to one already in use.

However, there are a couple of important differences in terms of legal requirements for registration. First, trademarks must be used in commerce by the owner, whereas certification and collective membership marks must be used by members. Second, trademarks must be registered and used in association with various trademark classes, like clothing, chemicals, written materials, etc. By contrast, collective membership and certification marks are a class unto themselves and do not need to be associated with a trademark class.

If you are thinking of registering a trademark, a certification mark, or a collective membership mark, it is best to hire a top-tier trademark attorney to help. For a consultation, contact us here at Revision Legal. Here are some additional differences between trademarks, collective membership marks, and certification marks.

Purpose

A trademark is used to identify the commercial source of a product or service.

A collective membership mark is also used in commerce — on the packaging and in the advertisements — to indicate membership in a collective organization or group — like cattle ranchers in Texas, potato growers in Idaho, etc.

A certification mark is used by authorized persons and businesses and might signal safety, quality, source, content, accuracy, or some other measure. Generally, the mark also indicates that the user:

• Has been inspected, tested, and/or examined by the organization (or some third party) and
• That the inspection has shown compliance with the rules and standards of the organization

Ownership

A trademark is owned by a person or business, or other entity; no permission is needed for the owner to use the trademark.

A collective membership mark is owned by the organization — often a not-for-profit organization — that has created, registered, and authorized the use of the mark. Generally, use is only authorized for members of the organization that owns the collective membership mark.

Likewise, a certification mark is owned by the organization — often a not-for-profit organization — that has created, registered, and authorized use. Unlike collective membership marks, certification marks are often authorized for use more broadly. That is, the use of a certification mark may be authorized only for members of the organization that owns the certification mark. But, often, the use of a certification mark is authorized in the same manner as a trademark can be licensed for use. The licensee must satisfy all the requirements of the use authorization agreement.

Contact the Trademark Attorneys at Revision Legal

For more information, contact the experienced Trademark Lawyers at Revision Legal. You can contact us through the form on this page or call (855) 473-8474.

Legal Requirements for Certification Marks

Certification marks occupy a unique place in trademark law because the owner of the mark does not use it — authorized third parties do. This creates special registration and maintenance requirements. Under the Lanham Act, 15 U.S.C. § 1054, certification mark owners must submit to the USPTO a written description of the conditions under which the mark is certified and the goods or services on which the mark is or will be used.

Critically, the owner of a certification mark is legally prohibited from using the mark on its own goods and services. If the certifying organization begins using the mark on goods it produces, the mark can be cancelled on grounds that it is no longer functioning as a certification mark. This rule exists to prevent conflicts of interest that would compromise the mark’s role as a neutral quality signal to consumers. Well-known examples of certification marks include:

• The UL (Underwriters Laboratories) safety mark, certifying that products meet specific safety standards
• USDA Organic, certifying that agricultural products meet federal organic production standards
• The Good Housekeeping Seal, certifying consumer product quality
• Real California Milk, certifying that dairy products originate from California dairies

Legal Requirements for Collective Membership Marks

Collective membership marks are used by members of a collective organization — such as a trade association, union, cooperative, or fraternal organization — to indicate their membership. Unlike collective trademarks (which indicate that goods come from members of a group), collective membership marks simply signal membership status itself. The mark owner does not sell goods or services under the mark, but its members display it to show their affiliation.

To register a collective membership mark, the organization must have rules governing who qualifies for membership and how the mark can be used. The USPTO will require submission of those governing documents as part of the application process. Notable examples include marks of professional associations like state bar associations, trade associations in regulated industries, and agricultural cooperatives.

Enforcement Differences Between Mark Types

All three types of marks — trademarks, certification marks, and collective membership marks — can be enforced against infringers under the Lanham Act. However, the standing to sue and the nature of the harm differ. A trademark owner sues to protect its own commercial interests and brand. A certification mark owner sues when unauthorized parties use the mark — or when authorized users misuse it — because consumer deception about quality or origin is the harm. A collective organization sues to protect the integrity of membership designation and prevent non-members from falsely claiming affiliation.

The choice of which type of mark to register reflects the fundamental purpose the mark serves in commerce. Getting this choice right at the outset matters enormously because switching from one mark type to another requires a new filing. The trademark attorneys at Revision Legal can assess which type of mark is appropriate for your organization and guide you through the registration process. Call us at 231-714-0100 or 855-473-8474.