- Posted on: Aug 13 2022
By: Alex Butterman [8/14/22]
Everyone is familiar with a trademark or service mark (“mark”) that a business adopts to identify and distinguish its goods and services (respectively) from that of other businesses. These marks are used by the business to essentially establish a known level of quality and unique characteristics associated with the particular goods or services for that business which consumers readily recognize.
A certification mark is effectively the opposite of a traditional mark because instead of a business adopting a mark to identify the quality of its own goods/services, the owner of a certification mark uses the mark to identify the particular quality or level of standard inherent in the products or services of other businesses. This quality or standard typically identifies or “certifies” the presence of characteristics of the good or service such as a particular regional or other origin; a specific material or mode of manufacture; quality, accuracy, and other characteristics typically sought after in the particular product. Some classic examples are the Good Housekeeping Seal of Approval or the “UL” mark for Underwriter Laboratories.
In the case of the UL mark, Underwriter Laboratories is a company that tests electronic devices and components for their safe operation. When the product passes the standards that UL set for the particular product, the product bears the UL mark and the public recognizes that product as safer because of the UL mark.
There are many geographic certification marks as well, such as CHAMPAGNE and TEQUILA. These marks certify that a particular product derives from a particular region known for its success in developing that type of product. For instance, “Champagne” is a region in France, and only sparkling wine from that region is allowed to be called “champagne.” And a Mexican non-profit association named Consejo Regulador del Tequila, A.C. (“CRT”) has been preventing the use of “tequila” by any distiller who has not been authorized or certified by CRT to manufacture “distilled blue agave liquor” according to its specifications because CRT registered TEQUILA as a certification mark for “distilled spirits, namely, spirits distilled from the blue tequilana weber variety of agave plant.”
Certification Mark Unique Characteristics
Applications for certification mark registration have some unique requirements and differences from ordinary trademarks and service marks, which are outlined below.
1. Broader description of goods/services and a Certification Statement.
A certification mark registration contains a statement that explains what specific characteristics the mark certifies on the goods or services that are associated with it. The associated goods or services can then be stated more broadly or categorically than is normally acceptable for marks registered at the U.S. Patent and Trademark Office. For instance, the 1964 registration of the “UL” circle logo shown to the right contains the following certification statement and description of goods:
Also, the classification of the goods/services of a certification mark is either “A” for goods or “B” for services instead of one of the usual 45 classes in the Nice International Classification System.
2. Certification Standards and Use Evidence.
Probably the most significant unique requirement of a certification mark which demonstrates the use of the mark is the requirement to submit the “standards” which determine if the third-party product or service deserves certification. As previously noted, the mark is to be used by a third-party manufacturer or service provider and the mark owner determines which third party should display that mark. That determination needs to be pursuant to a published set of standards such as inspections of products or examinations of service providers. The USPTO wants to review and have in its record a copy of those standards.
Since a third party is to use the certification mark upon authorization by the mark owner, the evidence of use of the mark is the use by the authorized third parties, such as their display of a particular badge or certificate or possibly in a listing by the mark owner. The use is not by the mark owner in reference to the mark owner.
3. Statement that Applicant Is Not Engaged in Production or Marketing of the Goods/Services.
This is simply a statement in the application record that the owner of the mark will not perform the services or offer the same goods as what it certifies others to do. This is a safeguard against an obvious conflict of interest between the mark owner who would both certify the quality of its own goods and that of its competitors.
International Certification Marks
Certification Marks are generally rare and not registerable in every country, but they are increasingly becoming more common and adopted in more countries. I recently had the opportunity to compare certification mark registration systems around the world while helping a client “catch up” on their registration of a long-standing and suddenly well-known certification mark.
That mark is “N95” which most people probably were not aware of before the 2020 pandemic but has been in use in the U.S. without a federal registration since 1995. A division of the U.S. Department of Health and Human Services called the National Institute for Occupational Health and Safety (“NIOSH”) promulgated regulations at Title 42, Code of Federal Regulations, Part 84 which established standards and product testing rules for “air purifying particulate respirators” commonly known as facemasks. It is unfortunate that a severe pandemic had to establish the notoriety of the N95 certification mark as well as the value of registering such a mark.
NIOSH has applied for and been registering the N95 mark in 16 different countries on virtually every continent, in addition to the U.S. While the three requirements listed above have mostly been the same in most of the countries, the seriousness with which the non-US countries view these requirements and their level of scrutiny appears to have been much greater than that of the USPTO. The USPTO examiner, which for a certification mark is usually any examiner, primarily collects, reviews, and maintains in the registration record whatever standards the mark owner normally distributes to its certification mark applicants and which it submitted to the USPTO. In contrast, in many countries, a dedicated certification mark examiner reviews the standards in detail to ensure that the standards are fair, measurable, reviewable, and actually define necessary qualities for the product or service.
The USPTO accepted NIOSH’ approximately 100 pages of the relevant federal regulations and required a little more while the EU, New Zealand, Brazil, India, United Kingdom, and others required the certification standards to essentially be re-written and customized specifically for the certification mark examination. Moreover, these certification standards typically were required to follow a certain format specified by the trademark office. The typically custom-prepared standards would also include the Nos. 2 and 3 statements specified above. In some countries, the applicant’s representative in that country needed a telephone conference with the assigned examiner to negotiate how it could satisfy the certification mark requirements. In virtually all of the countries except the U.S., the trademark examiner needed to see a legitimate and effective review or appeal procedure for initially denied certification mark applicants, which the USPTO did not request. Interestingly, while the U.S. is usually the only country that examines and requires the usage of a mark to register, the other countries’ strict examination of certification mark standards and how the applicant exercises its control over the use of the certification mark effectively functions as a use requirement.
Don’t overlook the need or underestimate the value of a certification mark. Certification marks are useful mechanisms for expressing confidence in third-party products or services and should be registered like any other mark wherever the certification mark is to be used. In fact, a certification mark is arguably more important to register and protect than a traditional mark because the infringement of a certification mark would constitute a false claim of quality, recognition, certification, and other forms of third-party approval which would appear to be more deliberate and premeditated. If any additional information about certification marks is desired, the trademark law expertise at Dunlap Bennett and Ludwig is a fantastic and highly recommended resource.