Trademarks don’t just apply to standard goods and services that people are see in commerce everyday, but marks of authenticity and certification can also be trademarked. Have you ever seen a symbol or a word that indicates that a product or a service meets certain quality standards or criteria? For example, the UL mark for electrical safety, the USDA Organic seal for organic food, or the LEED logo for green buildings. These are examples of certification marks, which are a type of trademark that is used to show consumers that particular goods and/or services, or their providers, have met certain standards set by the owner of the mark.
Certification marks are different from regular trademarks in several ways. First, certification marks are not used by the owner of the mark, but by authorized third parties who comply with the standards established by the owner. Second, certification marks do not indicate the source or origin of the goods or services, but rather the quality or characteristics of them. Third, certification marks are not classified according to the normal USPTO classification system, but rather according to the type of certification they provide.
In this blog post, we will discuss how to register and protect your certification marks in the US.
How to Register a Certification Mark
Registering certification marks is similar to any other trademark, but with a few differences. Like any mark, you’ll need to file an application, determine a filing basis (in use or intending to use), include a description of the mark, and pay the filing fee. But you’ll also need to provide the following:
A textual explanation of the mark: You need to describe the certification mark in clear and concise terms, such as its meaning, function, and scope. For example, “The mark certifies that the goods are made from 100% recycled materials.”
A copy of the standards: You need to provide a copy of the standards or criteria that you use to certify the goods or services. The standards must be objective, verifiable, and non-discriminatory.
A declaration of control: You need to declare that you exercise legitimate control over the use of the certification mark by authorized users. This means that you have a system for testing, inspecting, monitoring, and enforcing compliance with your standards.
A statement that you do not sell or provide the same types of goods or services as to which the certification will cover.
How to Protect a Certification Mark
To protect a certification mark from infringement or dilution, you need to prove that your certification mark is distinctive and serves as a quality indicator for your goods or services. This means that your certification mark must not be generic, descriptive, functional, or common in your industry. For example, a certification mark for “organic” would likely be rejected as being descriptive and common.
To prove distinctiveness, you may need to provide evidence of use and recognition of your certification mark by consumers. This may include surveys, testimonials, sales figures, advertising expenditures, media coverage, awards, or any other relevant information that shows that your certification mark has acquired secondary meaning or goodwill.
You also need to monitor and enforce your rights against any potential infringers or diluters of your certification mark. This may involve sending cease and desist letters, filing oppositions or cancellations with the USPTO, initiating lawsuits in federal court, seeking injunctions or damages, or negotiating settlements or licenses.
One important thing to note is that you cannot use your own certification mark for your own goods or services that could be certified under the mark. This would create a conflict of interest and undermine the credibility and objectivity of your certification program. For example, if you own a certification mark for “vegan” food products, you cannot use it for your own vegan food products.
Certification marks are a valuable way to communicate your quality standards and criteria to consumers and to differentiate yourself from competitors. However, they also require careful planning and strategy to register and protect them. If you are interested in registering a certification mark for your business, contact us to learn more.