The United States Patent and Trademark Office (“USPTO”) provides electronic forms for filing trademark documents. A certification mark is a special type of mark different from a typical trademark or service mark. 15 U.S.C § 1127 defines a certification mark as follows:
The term “certification mark” means any word, name, symbol, or device, or any combination thereof–
(1) used by a person other than its owner, or
(2) which its owner has a bona fide intention to permit a person other than the owner to use in commerce and files an application to register on the principal register established by this Act,
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.
The Trademark Electronic Application System (“TEAS”) provides a special form when applying for a certification mark. This is important because the statements in the certification mark application are different because the applicant does not use the certification mark. A certification mark conveys a message that goods or services are checked/inspected/tested by a third party that is not the producer of the goods or services. The owner of a certification mark should not use the mark. In fact, the application indicates that “Applicant will not be engaged in the production or marketing of the goods or services to which the mark is applied.”
If an owner of a certification mark were to use a certification mark as a trademark or service mark in connection with the goods or services that are being certified it would invalidate the mark. “Trade or service marks and certification marks are different and distinct types of marks, which serve different purposes. A trademark or service mark is used by the owner of the mark on his or her goods or services, whereas a certification mark is used by persons other than the owner of the mark. A certification mark does not distinguish between producers, but represents a certification regarding some characteristic that is common to the goods or services of many persons. Using the same mark for two contradictory purposes would result in confusion and uncertainty about the meaning of the mark and would invalidate the mark for either purpose.” TMEP 1306.05(a).
Additionally,15 U.S.C. §1054 prohibits the registration of a certification mark “when used so as to represent falsely that the owner or a user thereof makes or sells the goods or performs the services on or in connection with which such mark is used;” and §14(5)(B) of the Act, 15 U.S.C. §1064(5)(B), provides for the cancellation of a registered certification mark where the registrant engages in the production or marketing of any goods or services to which the certification mark is applied. TMEP 1306.05(a).
Between the fifth and sixth year after registration of any mark the owner is required to file a Section 8 Declaration of Use to keep the mark registered. Often a Section 15 Declaration of Incontestability is often filed in combination with the Section 8 Declaration of Use.
Additionally, a Registration owner is required to file a Section 8 Declaration of Use and a Section 9 Renewal every ten years in order to keep the Registration.
The TEAS system provides electronic forms for filing Section 8 & 15 Declarations as well as Section 8 & 9 Renewal forms for trademarks and service marks. These forms indicate that the owner of the marks USE the marks. TEAS does not provide for special forms for Sections 8, 9, & 15 for certification marks.
Owners of Registrations for certification marks should be careful when filing these Declarations and Renewals because if those electronic forms are used they indicate that the owner of the Registration is using the mark.
The best course in filing these types of documents for a certification mark would be to create your own form or to consult with an attorney having experience with certification marks.
The Carolina Hurricanes, who were eliminated from the 2009 Stanley Cup Playoffs by the Pittsburgh Penguins in the Eastern Conference Finals, filed a trademark infringement lawsuit against singer Tye Banks in the U.S. District Court for the Eastern District of North Carolina on August 7, 2009 (Hurricanes Hockey Limited Partnership v. Banks et al, case number 4:2009cv00136).
