TMEP § 1306.01
Trademark Act §4, provides for the registration of "certification marks, including indications of regional origin," which are defined in §45 as follows:
The term "certification mark" means any word, name, symbol, or device, or any combination thereof--
to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person’s goods or services or that the work or labor on the goods or services was performed by members of a union or other organization.
Based on the statute, there are generally three types of certification marks, that is, those that certify:
Differences between certification marks and trademarks or service marks. Two characteristics differentiate certification marks from trademarks or service marks: first, a certification mark is not used by its owner but rather by authorized users and, second, a certification mark does not indicate commercial source or distinguish the goods or services of one person from those of another person but rather indicates that the goods/services of authorized users are certified as to a particular aspect of the goods/services. See TMEP §1306.06(a) for a discussion of the distinction between a certification mark and a collective trademark, collective service mark, or collective membership mark.
A certification mark may not be used, in the trademark sense of "used," by the owner of the mark; it may be used only by a person or persons other than the owner of the mark. That is, the owner of a certification mark does not apply the mark to goods or services and, in fact, usually does not attach or apply the mark at all. The mark is generally applied by other persons to their goods or services, with authorization from the owner of the mark.
The owner of a certification mark does not produce the goods or perform the services in connection with which the mark is used, and thus does not control their nature and quality. Therefore, it is not appropriate to inquire about control over the nature and quality of the goods or services. What the owner of the certification mark does control is use of the mark by others on their goods or services. This control consists of taking steps to ensure that the mark is applied only to goods or services that contain the characteristics or meet the requirements that the certifier/owner has established or adopted for the certification. See TMEP §1306.03(b) regarding submission of the standards established by the certifier to determine whether the certification mark may be used in relation to the goods and/or services of others.
A certification mark "is a special creature created for a purpose uniquely different from that of an ordinary service mark or trademark . . . ." In re Fla. Citrus Comm’n, 160 USPQ 495, 499 (TTAB 1968). That is, the purpose of a certification mark is to inform purchasers that the goods or services of a person possess certain characteristics or meet certain qualifications or standards established by another person. A certification mark does not indicate origin in a single commercial or proprietary source the way a trademark or service mark does. Rather, the same certification mark is used on the goods or services of many different producers.
The message conveyed by a certification mark is that the goods or services have been examined, tested, inspected, or in some way checked by a person who is not their producer, using methods determined by the certifier/owner. The placing of the mark on goods, or its use in connection with services, thus constitutes a certification by someone other than the producer that the prescribed characteristics or qualifications of the certifier for those goods or services have been met.
If the applicant has used the appropriate application form, the application will clearly indicate that the mark is intended to be a certification mark and should include the required elements. For certification mark applications based on §66(a) of the Trademark Act, the request for extension of protection will include a field indicating that the mark is a "Collective, Certificate or Guarantee Mark." See TMEP §1904.02(d) regarding requirements for §66(a) applications for certification and collective marks.
The examining attorney may also determine that the mark is a certification mark based on a review of the information in the application, which should include a certification statement or language indicating the mark’s use, or intended use, to certify some aspect of the goods or services, such as certifying regional origin, or that the labor was performed by a certain group, or that the goods or services meet certain safety standards. If the nature of the mark and its intended use are unclear, the examining attorney must seek clarification, through a Trademark Rule 2.61(b) requirement for additional information or, if appropriate, by telephone or email communication. See 37 C.F.R. §2.61(b); TMEP §§1306.04(b)(ii), 1306.06-1306.06(b). Any clarification regarding the certification statement that is received by informal communication must be recorded in a Note to the File (also referred to as a Public Note or Notation to File). In addition, if certain required elements, such as those discussed in TMEP §1306.03, are missing or unacceptable, the applicant will be required to provide or amend them.