Certification Marks: When Theory and Practice Diverge

“In theory, there is no difference between theory and practice. But, in practice, there is.”

Although this quote is attributed as a remark overheard at a computer science conference in Walter J. Savitch’s Pascal: An Introduction to the Art and Science of Programming (1984), it could not be more relevant to the theory and practice of registering a certification mark with the U.S. Patent and Trademark Office (PTO).

Unlike trademarks and service marks, certification marks are not used by the owner of the mark, but instead by those authorized by the owner; certification marks signify that the user’s goods/services meet one of the following specific qualifications or standards:

(1) the goods/services originate in a specific geographic region;

(2) the goods/services meet certain standards in relation to quality, materials, or mode of manufacture;

or

(3) that members of a union or other organizations performed the work, or that a service provider meets the particular certifier’s standards

15 U.S.C. §§1054, 1127.

Registering a certification mark with the PTO requires that the owner submit evidence that the mark enjoys certification significance in the marketplace. This proof is evaluated on a case by case basis. According to the Trademark Manual of Examining Procedure (TMEP) § 1306.02(a)(i), sufficient proof must include the following:

1. a statement specifying what the applicant is certifying about the goods or services in the application;
2. a copy of the certification standards governing use of the certification mark on or in connection with the goods or services specified in the application;
3. a statement that the applicant is the certifier, not the producer, i.e., the applicant is not engaged in the production or marketing of the goods/services to which the mark is applied;
4. the date of the applicant’s authorized user’s first use of the mark anywhere and in commerce on or in connection with the goods or services;
5. one specimen for each class, showing how an authorized user uses the mark in commerce as a certification mark;

   and

6. a verified statement/declaration that includes language that the applicant is the owner of the mark and is exercising legitimate control over the use of the mark in commerce; that no other persons except authorized users have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods or services of such other persons, to cause confusion or mistake, or to deceive; that the specimen shows the mark as used in commerce by the applicant’s authorized users.

As to specimens, it is not necessary to show that the mark is instantly recognizable as a certification mark, or that the mark has already become well known to the public as a certification mark. However, it should be clear from the materials submitted that the circumstances surrounding the use or promotion of the mark will give certification significance to the mark in the marketplace. See Ex parte Van Winkle, 117 USPQ 450 (Comm’r Pats. 1958).

In In re The Council on Certification of Nurse Anesthetists, 85 USPQ2d 1403 (TTAB 2007) (“CRNA”), the Trademark Trial and Appeal Board provided some guidance as to the types of materials that could suffice as a specimen to support registration of a certification mark for services, noting that suitable specimens must: (1) indicate that the holder of the certification has satisfied the requirements for certification and (2) be displayed in a manner that it would be viewed by the ultimate recipients of the services in the normal place of business. The applicant in CRNA had submitted specimens consisting of clothing and accessories featuring the letters CRNA, a certificate issued to certified individuals, a brochure, and other literature discussing the characteristics of certified individuals.

According to the Board, the clothing and accessories were ancillary promotional materials that would not suffice as specimens showing use of a certification mark; however, the certificate, brochure, and additional literature would suffice as evidencing an authorized user’s use of the mark as a certification mark.

In theory, applicants following guidance from the Board’s decision in CRNA and the TMEP should have a clear idea of exactly what is required to demonstrate use of a certification mark for services. However, in practice, it seems that certain typical specimens, such as certificates, are no longer readily accepted as demonstrating certification mark use. Based on anecdotal evidence, it seems that the PTO is now favoring the following types of evidence as demonstrating use of certification marks for services:

• an authorized user’s excerpted LinkedIn page identifying the certifications for the authorized user/member;

  and/or

• an excerpt from or snapshot of an authorized user’s company website, showing the certification.

For applicants seeking to register certification marks for services, we recommend providing one or both of the types of electronic specimens above, if available. We also recommend that applicants provide as much information as possible that conveys that a mark is perceived as a certification mark by the ultimate consumers of the goods/services bearing the mark.

This article appeared in the November 2016 issue of MarkIt to Market. To view our past issues, as well as other firm newsletters, please click here.