Subject Matter of Marks - Certification Marks



As stated in section 1306.01 Definition of Certification Mark of the Trademark Manual of Examination Procedure:

Section 4 of the Trademark Act, 15 U.S.C. §1054, provides for the registration of "certification marks, including indications of regional origin." Section 45 of the Trademark Act, 15 U.S.C. §1127, defines "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.

A certification mark "is a special creature created for a purpose uniquely different from that of an ordinary service mark or trademark...." In re Florida Citrus Commission, 160 USPQ 495, 499 (TTAB 1968).

There are generally three types of certification marks. First, there are certification marks that certify that goods or services originate in a specific geographic region (e.g., ROQUEFORT for cheese). See Community of Roquefort v. William Faehndrich, Inc., 303 F.2d 494, 133 USPQ 633 (2d Cir. 1962); State of Florida, Department of Citrus v. Real Juices, Inc., 330 F. Supp. 428, 171 USPQ 66 (M.D. Fla. 1971) (SUNSHINE TREE for citrus from Florida); Bureau Nat'l Interprofessionnel Du Cognac v. International Better Drinks Corp., 6 USPQ2d 1610 (TTAB 1988) (COGNAC for distilled brandy from a region in France). See TMEP §§1306.02 et seq.

Second, there are certification marks that certify that the goods or services meet certain standards in relation to quality, materials, or mode of manufacture (e.g., approval by Underwriters Laboratories). See Midwest Plastic Fabricators Inc. v. Underwriters Laboratories Inc., 906 F.2d 1568, 15 USPQ2d 1359 (Fed. Cir. 1990) (UL certifies, among other things, representative samplings of electrical equipment meeting certain safety standards); In re Celanese Corp. of America, 136 USPQ 86 (TTAB 1962) (CELANESE certifies plastic toys meeting certifier's safety standards).

Third, certification marks may certify that the work or labor on the products or services was performed by a member of a union or other organization, or that the performer meets certain standards. See TMEP §1306.03 and cases cited therein for further information.

There are two characteristics that differentiate certification marks from trademarks or service marks. First, a certification mark is not used by its owner and, second, a certification mark does not indicate commercial source or distinguish the goods or services of one person from those of another person. See TMEP §1306.09(a) for a discussion of the distinction between a certification mark and a collective trademark, collective service mark, or collective membership mark.

See Holtzman, Certification Marks: An Overview, 81 Trademark Rep. 180 (1991).

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  • Statutory definition of a certification mark.
    • In re The Council on Certification of Nurse Anesthetists, Serial No. 75722091, (TTAB 2007).
      • A certification mark is defined in Section 45 of the Trademark Act, 15 U.S.C. §1127, 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."
    • In re Software Publishers Association, Serial No. 74/498,601, (TTAB 2003).
      • "Certification mark" is defined in Section 45 of the Trademark Act, 15 U.S.C. §1127...As explained in the TMEP §1306.03 (Third Edition 2002): "A certification mark may be used to certify that the work or labor on the goods or services was performed by a member of a union or other organization, or by a person who meets certain standards and tests of competency set by the certifier. 15 U.S.C. §1127. The certifier does not certify the quality of the work being performed, but only that the work was performed by a member of the union or group, or by someone who meets certain standards. (Case citations omitted.) Used in this manner, the mark certifies a characteristic of the goods or services. Whether or not specific matter functions as a certification mark depends on whether the matter is used in connection with the goods or services in such a manner that the purchasing public will recognize it, either consciously or unconsciously, as a certification mark. Occasionally it is not clear whether a term is being used to certify that work or labor relating to the goods or services was performed by someone meeting certain standards or by members of a union or other organization to indicate membership or whether the term is merely being used as a title or degree of the performer to indicate professional qualifications. Matter that might appear to be simply a title or degree may function as a certification mark if used in the proper manner. (Case citations omitted.)"
  • Explanation of a certification mark.
    • In re The Council on Certification of Nurse Anesthetists, Serial No. 75722091, (TTAB 2007).
      • As explained in TMEP §1306.03 (Fourth Edition 2005) (case citations omitted):
        "A certification mark may be used to certify that the work or labor on the goods or services was performed by a member of a union or other organization, or by a person who meets certain standards and tests of competency set by the certifier. 15 U.S.C. §1127. The certifier does not certify the quality of the work being performed, but only that the work was performed by a member of the union or group, or by someone who meets certain standards. Used in this manner, the mark certifies a characteristic of the goods or services. Whether or not specific matter functions as a certification mark depends on whether the matter is used in connection with the goods or services in such a manner that the purchasing public will recognize it, either consciously or unconsciously as a certification mark. Occasionally, it is not clear whether a term is being used to certify that work or labor relating to the goods or services was performed by someone meeting certain standards or by members of a union or other organization to indicate membership or whether the term is merely being used as a title or degree of the performer to indicate professional qualifications. Matter that might appear to be simply a title or degree may function as a certification mark if used in the proper manner."
  • Proper Use of a certification mark.
    • In re Software Publishers Association, Serial No. 74/498,601, (TTAB 2003).
      • Professor J. Thomas McCarthy explains proper use of a certification mark at 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §19:93 (4th ed. 2001) as follows (footnotes omitted): "For a symbol to be registrable as a certification mark, that symbol must, by its nature and use, function such that buyers are likely to recognize the symbol as a symbol of guarantee or certification. For example, a designation indicating that a merchant is the recipient of a title or degree must be used in such a way as to indicate certification. But the use of such a designation in a way that would not normally be perceived by consumers as a certification mark will not be registrable. ... The rationale of the Patent and Trademark Office is that titles and degrees (such as Professor, Professional Engineer, Certified Dietician, JD, CPA, and MD) are not used to certify goods and services when used only to convey "personal information about the individual and certify some characteristic only about the individual's achievement" rather than certifying the characteristics of services rendered by that individual. A certification mark for goods must be used in a manner analogous to that required for trademarks, namely on the goods or their containers or on displays associated therewith. Similarly, a certification mark for services must be used in a manner analogous to that of a service mark, namely in the sale or advertising of the services rendered."10

        FOOTNOTE 10 "See also, Professor McCarthy's "Comment on certification marks" at 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §19:96 (4th ed. 2001); and In re University of Mississippi, 1 USPQ2d 1909 (TTAB 1987). See generally, Terry E. Holtzman, "Tips From the Trademark Examining Operation – Certification Marks: An Overview," 81 Trademark Rep. 180 (1991)."

    • In re The Council on Certification of Nurse Anesthetists, Serial No. 75722091, (TTAB 2007).
      • Professor J. Thomas McCarthy explains proper use of a certification mark at 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §19.93 (4th ed. November 2006) as follows (footnotes omitted):
        "For a symbol to be registrable as a certification mark, that symbol must, by its nature and use, function such that buyers are likely to recognize the symbol as a symbol of guarantee or certification. For example, a designation indicating that a merchant is the recipient of a title or degree must be used in such a way as to indicate certification. But the use of such a designation in a way that would not normally be perceived by consumers as a certification mark will not be registrable. ….. The rationale of the Patent and Trademark Office is that titles and degrees (such as Professor, Professional Engineer, Certified Dietician, JD, CPA, and MD) are not used to certify goods and services when used only to convey "personal information about the individual and certify some characteristic only about the individual's achievement" rather than certifying the characteristics of services rendered by that individual. The focus should be on the manner of use of the alleged mark by persons whose work is allegedly certified and the likely perception of that use by customers of those services.

        A certification mark for goods must be used in a manner analogous to that required for trademarks, namely on the goods or their containers or on displays associated therewith. Similarly, a certification mark for services must be used in a manner analogous to that of a service mark, namely in the sale or advertising of the services rendered."

  • The primary consideration in determining how members of the relevant public will perceive the mark is the use by those other than the mark's owner or those under the owner's control.
    • In re The Council on Certification of Nurse Anesthetists, Serial No. 75722091, (TTAB 2007).
      • In order for an applicant to obtain registration of a certification mark, it should be clear from the record that the circumstances surrounding the use and promotion of the mark will give certification significance to the mark in the marketplace. See In re National Association of Legal Secretaries (International), 221 USPQ 50 (TTAB 1983). That is, when an applicant seeks registration of a certification mark, it is the use by persons other than the owner of the mark, subject to the owner's control, which is the primary consideration in determining how members of the relevant public will perceive the mark.
  • In order for an applicant to obtain registration of a certification mark it should be clear from the record that the circumstances surrounding the use and promotion of the mark will give certification significance to the mark in the marketplace.
    • In re Software Publishers Association, Serial No. 74/498,601, (TTAB 2003).
      • In order for an applicant to obtain registration of a certification mark it should be clear from the record that the circumstances surrounding the use and promotion of the mark will give certification significance to the mark in the marketplace. See In re National Association of Legal Secretaries (International), 221 USPQ 50 (TTAB 1983).
  • When an applicant seeks registration of a certification mark, it is the use by persons other than the owner of the mark, subject to the owner's control, which is the primary consideration in determining prospective purchasers' perceptions.
    • In re Software Publishers Association, Serial No. 74/498,601, (TTAB 2003).
      • That is, when an applicant seeks registration of a certification mark, it is the use by persons other than the owner of the mark, subject to the owner's control, which is the primary consideration in determining prospective purchasers' perceptions.
  • Greater protection is afforded to more distinctive marks.
    • Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006).
      • Generally, greater protection is afforded to more distinctive marks. See Worthington Foods Inc. v. Kellogg Co. 732 F.Supp. 1417, 14 USPQ2d 1577, 1607 (S.D. Ohio 1990) ("The inherent nature of the plaintiff's mark is relevant since the more distinctive the mark, the more likely it is that a consumer, with a general recollection of the plaintiff's mark, will draw a connection between the two parties when seeing the defendant's mark.")
  • A mark that is registered on the Principal Register is entitled to all Section 7(b) presumptions including the presumption that the mark is distinctive and moreover, in the absence of a Section 2(f) claim in the registration, that the mark is inherently distinctive for the goods.
    • Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006).
      • A mark that is registered on the Principal Register is entitled to all Section 7(b) presumptions including the presumption that the mark is distinctive and moreover, in the absence of a Section 2(f) claim in the registration, that the mark is inherently distinctive for the goods. See, e.g., Sally Beauty Co. v. Beautyco, Inc., 304 F.3d 964, 64 USPQ2d 1321, 1326 (10th Cir. 2002) (rebuttable presumption that the mark is inherently distinctive); and Equine Technologies Inc. v. Equitechnology, Inc., 68 F.3d 542, 36 USPQ2d 1659, 1661 (1st Cir. 1995) (holder of the mark entitled to presumption that its registered trademark is inherently distinctive). See also McCarthy, supra at §11:43 (4th ed. 2006) (noting that "The vast majority of courts have interpreted this section [7(b)] to mean that plaintiff in litigation is entitled to a strong prima facie presumption that its registered mark is either not 'merely descriptive' or if descriptive, that secondary meaning is presumed, which amounts to the same thing.")
  • The question of whether a designation serves as a mark, or a particular kind of mark, must be determined on the basis of the manner and context in which the designation is used, as revealed by the specimens and other literature of record, and the significance which the designation is likely to have to members of the relevant public because of the manner in which it is used.
    • In re Software Publishers Association, Serial No. 74/498,601, (TTAB 2003).
      • However, the question of whether a designation serves as a mark, or a particular kind of mark, must be determined on the basis of the manner and context in which the designation is used, as revealed by the specimens and other literature of record, and the significance which the designation is likely to have to members of the relevant public because of the manner in which it is used.
  • It is not necessarily deceptive to use a certification mark on an item if only a component of said item is being certified.
    • Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006).
      • There is nothing inherently deceptive in permitting use of the mark to identify a component of the tea, if it is the component that is being certified. A certification mark does not exist in a vacuum. It cannot be considered apart from that aspect of a product that is being certified and the standards for certification. See Opticians Association of America v. Independent Opticians of America Inc., 734 F. Supp. 1171, 14 USPQ2d 2021, 2027 (D.N.J. 1990) ("certification mark serves as seal of approval for, or guarantee of compliance with, uniform standard"); and American Speech-Language-Hearing Assn. v. National Hearing Aid Society, 224 USPQ 798 (TTAB 1984). Thus, even if opposer was authorizing use of the marks to identify a component of an entire tea product, as long as the standards provided for adequate control of the marks when used in that manner, then as a matter of law, the standards were not deceptive. Further, if the marks were used in accordance with those standards, then the marks were not being used in a deceptive or misleading manner, and consumers could not have been deceived as to the source of the product or its purity.
  • Failing to capitalize a mark may suggest the term functions as a generic identifier rather than a specific instance.
    • Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006).
      • We also note that, while not determinative, Darjeeling is always capitalized in these references. Applicant has not pointed to, nor have we seen, a single instance of use of Darjeeling in a lower case letter "D" which may signify use in the manner of a generic designation. See, e.g., Zimmerman, supra at 1434 ("'Realtor' is capitalized and used in a manner consistent with respondent's position that this term functions as an identifier for its members, not as a generic designation for all real estate agents"); and Fontina, supra (noting lower-case treatment of "fontina" by reference materials to name a kind of cheese with certain characteristics regardless of regional origin).
  • Evidence: Submission of third-party registrations are of limited probabtive value in the analysis of whether a mark functions as a certification mark.
    • In re Software Publishers Association, Serial No. 74/498,601, (TTAB 2003).
      • Regarding applicant's submission of 16 third-party registrations, we note, as explained earlier herein, that the crucial question in these types of cases is whether the mark is used in such a manner that it would be perceived by the relevant purchasing public as a certification mark or rather if the use reflects that it would be perceived as merely a title or degree held by the bearer thereof. Inasmuch as applicant did not submit the specimens or any other portion of the record from these third-party registrations, they are of very limited probative value in this case. Stated another way, there has been no showing that the registration of any of the 16 third-party registrations was inconsistent with the law and policy set forth herein regarding the registrability of certification marks. Presumably, the specimens and other information of record in each of those 16 registration files show valid certification mark use and not use solely as a title or degree.
  • In any event, the Board's task in an ex parte appeal is to determine, based on the record before us, whether applicant's mark is used as and would be recognized by the purchasing public as a certification mark.
    • In re Software Publishers Association, Serial No. 74/498,601, (TTAB 2003).
      • In any event, the Board's task in an ex parte appeal is to determine, based on the record before us, whether applicant's mark is used as and would be recognized by the purchasing public as a certification mark.
  • Evidence: Evidence merely showing use of the mark on promotional material, without any indication of what the mark is identifying, only demonstrates applicant's promotion of the mark.
    • In re The Council on Certification of Nurse Anesthetists, Serial No. 75722091, (TTAB 2007).
      • Unlike the applicant in In re Software Publishers Association, supra, the applicant herein has submitted many specimens and other materials. Turning then to the various specimens, the problem with the baseball cap, apron, badge, pin, shoelaces, and material used in the CRNAS FOR AMERICA campaign is that these items are evidence merely of applicant's promotion or use of the term CRNA, but without any indication of what the term is identifying (other than the actual goods on which CRNA is used).
    • In re The Council on Certification of Nurse Anesthetists, Serial No. 75722091, (TTAB 2007).
      • Further, even if we were to view these items and materials as a promotion of applicant's certification program, they promote the term CRNA to prospective authorized users of the designation CRNA, i.e., nurse anesthetists.
    • In re The Council on Certification of Nurse Anesthetists, Serial No. 75722091, (TTAB 2007).
      • These items/materials are similar in nature to the information booklet and materials submitted by the applicant in In re National Association Purchasing Management, supra. Such evidence is not persuasive of how the designation CRNA is perceived by the ultimate recipients of the services, i.e., surgical patients.
  • Evidence: User of a certification mark on a business card function as a title or degree rather than a certification mark.
    • In re The Council on Certification of Nurse Anesthetists, Serial No. 75722091, (TTAB 2007).
      • Insofar as the business cards were concerned, the Board held that the use of C.P.M. thereon "function[ed] solely as a title or degree and not as a certification mark." Id. p. 770.
  • Evidence: Information material has little bearing on how ultimate recipients perceive the certification mark.
    • In re The Council on Certification of Nurse Anesthetists, Serial No. 75722091, (TTAB 2007).
      • As to the brochure, information booklet and other informational materials, the Board stated at 228 USPQ 769, n. 7, "[such] evidence herein concerns applicant's promotion of the certification program to prospective users of the acronym. This evidence has little bearing on how the ultimate recipients perceive it." (citation omitted).
  • Evidence: A certificate merely indicates the holder has been awarded a title and not that the mark is likely to be perceived by relevant purchases as a certification mark.
    • In re The Council on Certification of Nurse Anesthetists, Serial No. 75722091, (TTAB 2007).
      • Finally, in the recent case of In re Software Publishers Association, 69 USPQ2d 2009 (TTAB 2003), the applicant therein sought to register the term CERTIFIED SOFTWARE MANAGER as a certification mark for "software asset and licensing management." Applicant submitted as a specimen a copy of a certificate issued to a person who completed applicant's course. The certificate read "This certificate is awarded to Pamela Pankiewicz for successfully completing the requirements to become a Certified Software Manager." The Board stated, at 69 USPQ2d 2014-2015, that "the only information indicating use of the designation CERTIFIED SOFTWARE MANAGER is the certificate reproduced earlier herein" and "[t]he language on applicant's specimen and the context thereof merely indicates that the holder has been awarded the title or degree of "Certified Software Manager," and is not likely to be perceived by the relevant purchasers as a certification mark."
  • Lack of a formal certification mark program does not automatically prohibit trademark protection.
    • Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006).
      • First, the mere fact that there may have been no formal certification mark program or licensing program in place prior to the adoption of the logo program in 1987 is not in itself evidence that Darjeeling has lost significance as a mark. Halo Management, LLC v. Interland, Inc., ___ F.Supp.2d____, 76 USPQ2d 1199 (N.D.Cal. 2004) (noting that the lack of a formal quality control provision does not automatically divest a trademark holder of protection).
  • The issue of genericness turns on whether control of the mark is maintained.
    • Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006).
      • The question is whether in fact control is maintained. See Woodstock's Enterprises Inc. (California) v. Woodstock's Enterprises Inc. (Oregon), 42 USPQ2d 1440, 1448 (TTAB 1997) ("while there was never a formal system of quality control, the inference of abandonment is not drawn...[where] satisfactory quality was maintained"), aff'd (unpublished), 152 F.3d 942 (Fed. Cir. 1998).
  • The control requirement is not defined by statute, but absolute control over a mark is not required to avoid a term becoming generic.
    • Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006).
      • The statute does not define "control" or indicate the degree of control required, but it is clear that absolute control would be impracticable, if not impossible. See Midwest, supra. See also, e.g., Engineered Mechanical Services, Inc. v. Applied Mechanical Technology, Inc., 584 F.Supp. 1149, 223 USPQ 324 (M.D.La. 1984) ("The owner of a mark is not required to constantly monitor every nook and cranny of the entire nation and to fire both barrels of his shotgun instantly upon spotting a possible infringer...").
  • The determination is whether the control is adequate – has the owner taken reasonable steps, under all the circumstances of the case, to prevent the public from being misled"
    • Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006).
      • The question is whether the control is adequate. As stated in Midwest, supra at 1363, "the owner must take reasonable steps, under all the circumstances of the case, to prevent the public from being misled."
  • Even if control is not maintained and misuse occurs, it must be shown that the misuse was of such significance to permit an inference that the mark is generic.
    • Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006).
      • However, the mere fact of misuse, just like the mere absence of formal control, is not sufficient to raise an inference that the control was not adequate or that DARJEELING has lost all significance as a mark. Even if control is not maintained and misuse occurs, it must be shown that the misuse was of such significance to permit an inference that the mark is generic. See Formica, supra; and Engineered, supra (defendants did not prove that because of the lack of efforts by plaintiffs in "policing" use of the mark, that the mark has become so diluted by widespread use by others that it has lost its distinctiveness); and, e.g., University Book Store v. University of Wisconsin Board of Regents, 33 USPQ2d 1385 (TTAB 1994) (few occasional and transitory incidents regarding quality insufficient); Midwest (TTAB), supra (occasional, sporadic problem insufficient); and McCarthy, supra at §18:58 ("Isolated instances of continued use of a mark by terminated licensees is not itself evidence that the licensor does not have an adequate program of control over the mark [citations omitted]"). Compare Bellsouth, supra at 1558 ("near universal" use of logo by competitors was strong, albeit circumstantial, evidence of genericness); and Wallpaper Manufacturers, Ltd. v. Crown Wallcovering Corp., 680 F.2d 755, 765, 214 USPQ 327 (Fed. Cir. 1982) ("numerous" products in the marketplace bearing the alleged mark, and the conduct of the owner, by failing to police its mark, can be said to have caused the mark to lose its significance as a mark).
  • The purpose of requiring control over use of a certification mark, as with a trademark, is two-fold: to protect the value of the mark and its significance as an indication of source, and to prevent the public from being misled or deceived as to the source of the product or its genuineness.
    • Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006).
      • The purpose of requiring control over use of a certification mark, as with a trademark, is two-fold: to protect the value of the mark and its significance as an indication of source, and to prevent the public from being misled or deceived as to the source of the product or its genuineness. See Midwest Plastic Fabricators, Inc. v. Underwriters Labs., Inc., 906 F.2d 1568, 15 USPQ2d 1359, 1362 (Fed. Cir. 1990) ("...to protect the public from being misled"); and, generally, McCarthy on Trademarks and Unfair Competition §2:33 (4th ed. 2006).
  • A certification mark used to certify regional origin as well as qualities and characteristics associated with the origin will not be deemed to have become a generic term as applied to particular goods unless it has lost its significance as an indication of regional origin for those goods.
    • Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006).
      • A certification mark used to certify regional origin as well as qualities and characteristics associated with the origin will not be deemed to have become a generic term as applied to particular goods unless it has lost its significance as an indication of regional origin for those goods. See Institut National Des Appellations d'Origine v. Brown-Forman Corp., 47 USPQ2d 1875 (TTAB 1998).
    • Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006).
      • To begin with, we note that DARJEELING is used to certify regional origin of the tea and, as is often the case with geographical indications, the mark also certifies certain qualities and characteristics of the product that are due to factors associated with the geographic region. See, e.g., Bureau National Interprofessionnel Du Cognac v. International Better Drinks Corp., 6 USPQ2d 1610 (TTAB 1988) (COGNAC certifies regional origin as well as the quality of the brandy which quality results from the use of the required type of grape, methods of distillation, aging conditions, etc.); and Community of Roquefort et al. v. William Faehndrich, Inc., 198 F.Supp. 291, 131 USPQ 435 (S.D.N.Y. 1961), aff'd, 303 F.2d 494, 133 USPQ 633 (2d Cir. 1962) (ROQUEFORT indicates geographic source and methods for production and manufacture associated with that region).
  • A term denoting regional origin can become generic if, through lack of control of the mark, the mark comes to primarily signify goods of a certain type, without regard to regional origins.
    • Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006).
      • This can occur when, by virtue of a failure to control the mark, the mark is used on goods which originate somewhere other than the place named in the mark, or on nongenuine goods, or through otherwise uncontrolled use, but only if as a result of such misuse, the mark has come to primarily signify a type of goods with certain characteristics, without regard to regional origin and the methods and conditions for growing it. See Community of Roquefort v. Faehndrich, Inc., supra; and In re Cooperativa Produttori Latte E Fontina Valle D'Aosta, 230 USPQ 131 (TTAB 1986). See also BellSouth Corp. v. DataNational Corp., 60 F.3d 1565, 35 USPQ2d 1554, 1557 (Fed. Cir. 1995) ("A term may become generic over time through common usage if the otherwise nondescriptive term is not policed as a trademark and it is commonly used to describe a type of product." Emphasis added.); and Formica Corporation v. The Newnan Corporation, 149 USPQ 585, 587 (TTAB 1966) ("It is well settled that a party asserting that an otherwise arbitrary trademark for an article has become a common descriptive name for the article has the burden of showing not only that the mark has been misused in the manner stated but that the misuse thereof has been so widespread and of such duration that there can be no doubt that to the trade and/or to the public generally the mark identifies the article as to kind rather than as to source"), aff'd, 396 F.2d 486, 158 USPQ 104 (CCPA 1968).
  • Failure to take enforcement action against misusing third-parties does not, in and of itself, mean the mark has become generic.
    • Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006).
      • While, as applicant claims, opposer never took any enforcement action against any third party for the misuse that occurred, there is no evidence that such action was necessary or that the action opposer did take was not sufficient to remedy the past misuse. See Midwest (TTAB), supra at 1275 (noting petitioner's argument that other steps should have been taken by respondent, the Board stated "it is not the Board's province to delineate guidelines or rules for respondent or to indicate what actions respondent should or should not take in exercising control over the use of its marks. Rather, the Board's only task is simply to review the factual record before it and determine whether the facts presented warrant a conclusion that respondent has failed to exercise control over its marks.")
  • Evidence of instituting tighter controls over use of a mark is not evidence of a lack of control or lost significance of a mark.
    • Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006).
      • The fact that the Tea Board, in response to changing needs and circumstances, has instituted increasingly tighter controls over use of the mark is clearly not evidence of lack of control and certainly not evidence that the mark has lost significance. To the contrary, it is evidence of opposer's continuing efforts to maintain control of the mark and protect its value as a geographical indication. See, e.g., Zimmerman v. National Association of Realtors, 70 USPQ2d 1425 (TTAB 2004); and University Book Store, supra.
  • In the absence of an actual showing of loss of trademark significance, the presence of a "naked license" does not mean a certification mark has lost its significance.
    • Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006).
      • However, even assuming we found the standards in the "draft regulations to be inadequate, while it has been held that license agreements without adequate provisions for quality control ("naked licenses") may result in a forfeiture of the mark (see, e.g., Stanfield v. Osborne Industries Inc., 52 F.3d 867, 34 USPQ2d 1456 (10th Cir. 1995)), we would not presume that a certification mark had lost its significance merely because of a "naked license," in the absence of an actual showing of loss of trademark significance. See Exxon Corp. v. Oxxford Clothes, Inc., 109 F.3d 1070, 42 USPQ2d 1417 (5th Cir.), cert. denied, 118 S. Ct. 299 (1997).
  • In the absence of any conclusive evidence to the contrary, the TTAB assumes that applicant's product contains material from where the mark claims.
    • Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006).
      • There is nothing to indicate that the tea is anything other than 100% tea from Darjeeling. Nor is there any indication that any tea identified as "blended" includes anything besides teas from more than one Darjeeling tea garden, rather than a blend of tea from different geographic regions. See, e.g., Community of Roquefort v. Santo, 157 USPQ 444, 447 (TTAB 1968) (in the absence of any conclusive evidence to indicate that the listing of "Roquefort cheese" as an ingredient of applicant's product was, as opposer charged, a blatant misrepresentation, the Board held it must assume that applicant's product contained an unspecified quantity of "ROQUEFORT" cheese.)
  • Case Finding: The designation CERTIFIED SOFTWARE MANAGER, as a whole, is used as a title or degree and does not function as a certification mark.
    • In re Software Publishers Association, Serial No. 74/498,601, (TTAB 2003).
      • Considering the overall evidence in this case, we agree with the Examining Attorney that the designation CERTIFIED SOFTWARE MANAGER, as a whole, is used as a title or degree and does not function as a certification mark.
  • Case Finding: The mark merely indicates that the holder has been awarded a title or degree and is not likely to be perceived by the relevant purchasers as a certification mark.
    • In re Software Publishers Association, Serial No. 74/498,601, (TTAB 2003).
      • The language on applicant's specimen and the context thereof merely indicates that the holder has been awarded the title or degree of "Certified Software Manager," and is not likely to be perceived by the relevant purchasers as a certification mark. See In re National Association of Purchasing Management, 228 USPQ 768 (TTAB 1986) (Board held acronym "C.P.M.," which stands for "certified purchasing manager," as used by persons other than the owner (applicant) subject to the owner's control, and directed to prospective recipients of the authorized users' services, the only use of which in the case consisted of business cards of two purchasing managers, does not constitute use as a certification mark, but rather functions solely as a title or degree); In re National Association of Legal Secretaries (International), supra (Board held (i) the designation "PROFESSIONAL LEGAL SECRETARY," as used on applicant's specimens, business-card-size certificates, does not constitute use as a certification mark, but rather merely identifies a title awarded to the cardholder, and (ii) the designation is merely descriptive of persons having the ability to perform as a professional legal secretary to which applicant stated it certified); In re Institute of Certified Professional Business Consultants, 216 USPQ 338 (TTAB 1982) (Board held "C P B C," as used on applicant's specimens, the business cards of an authorized individual, does not constitute use as a certification mark, but rather merely identifies a title or degree earned by an individual); In re Professional Photographers of Ohio, Inc., 149 USPQ 857 (TTAB 1966) (Board held "CERTIFIED PROFESSIONAL PHOTOGRAPHER," as used on applicant's letterhead specimens, does not constitute use as a certification mark, but rather as one of a number of titles).12

        FOOTNOTE 12 "For analogous cases on designations used as titles or degrees, but involving collective membership marks or service marks, see In re Thacker, 228 USPQ 961 (TTAB 1986); In re Mortgage Bankers Association of America, 226 USPQ 954 (TTAB 1985); American Speech-Language-Hearing Association v. National Hearing Aid Society, 224 USPQ 798 (TTAB 1984); In re International Institute of Valuers, 223 USPQ 350 (TTAB 1984); In re Institute for Certification of Computer Professionals, 219 USPQ 372 (TTAB 1983); In re Packaging Education Foundation, Inc., 184 USPQ 832 (TTAB 1974); and In re The National Society of Cardiopulmonary Technologists, Inc., 173 USPQ 511 (TTAB 1972)."

  • Case Finding: Not a mutilation of a mark and functioned as a certification mark.
    • In re Software Publishers Association, Serial No. 74/498,601, (TTAB 2003).
      • Cf., In re National Institute for Automotive Service Excellence, 218 USPQ 744 (TTAB 1983) (Board held (i) a design mark consisting solely of two meshed gears was not a mutilation of the mark as used which included the words "NATIONAL INSTITUTE FOR AUTOMOTIVE SERVICE EXCELLENCE" and "CERTIFIED GENERAL MECHANIC," and (ii) use of the mark on cloth insignias to be worn by individuals certified by applicant, coupled with the record showing that in order to qualify a mechanic must meet certain standards as to experience and training, pass applicant's tests for each area of automotive mechanics, and to retain certification must retake and pass the tests every five years, established use as a certification mark.)
  • Case Finding: The bare declaration of a mark, which seems like a title, on a business card fails, in our view, to convey the impression that the mark is a certification mark.
    • In re The Council on Certification of Nurse Anesthetists, Serial No. 75722091, (TTAB 2007).
      • In the case of In re National Association of Legal Secretaries, supra, the applicant therein sought to register the designation PROFESSIONAL LEGAL SECRETARY as a certification mark attesting to "the ability of a certificate holder to perform as a professional legal secretary." The only specimen submitted was a business size card which read "National Association of Legal Secretaries certifies that [name of qualifying member] is a Professional Legal Secretary," accompanied by appropriate organizational signatures. In finding that this specimen was unacceptable, the Board stated at 221 USPQ 51: "Although applicant contends that the foregoing language "advertises to the prospective employer the quality of the secretary's services," we conclude that it comes much closer to attesting that the cardholder has been awarded the title of "PROFESSIONAL LEGAL SECRETARY" by applicant with little else assumable by fair inference; nor does the record show, through other evidence or documentation, that a message as to service capability certification would be thereby communicated to prospective employers or other service purchasers. While it is true that the "PROFESSIONAL LEGAL SECRETARY" designation does not appear as a title or degree following the member's name on a letterhead [as was the case of "CERTIFIED PROFESSIONAL PHOTOGRAPHER" in In re Professional Photographers, supra], or on a business card [as with "C.P.B.C." in the recent case of In re Institute of Certified Professional Business Consultants, 216 USPQ 338, Serial No. 206,007 (slip opinion, May 13, 1983)], the bare declaration that the holder is a PROFESSIONAL LEGAL SECRETARY" fails, in our view, to convey the impression that PROFESSIONAL LEGAL SECRETARY is a certification mark."
  • Case Finding: A cloth insignia worn on a shirt was suitable evidence to register a design mark as a certification mark.
    • In re The Council on Certification of Nurse Anesthetists, Serial No. 75722091, (TTAB 2007).
      • In the case of In re National Institute for Automotive Service Excellence, 218 USPQ 744 (TTAB 1983), the applicant therein sought to register a design mark as a certification mark for automotive repair services. The specimens submitted with the application consisted of cloth insignia with the design mark appearing thereon and the cloth insignia was said to be worn by individuals certified by applicant. In finding these specimens acceptable evidence of certification mark use, the Board distinguished this case from those involving word designations or a combination of letters used immediately after the name of an individual in the manner of a title or degree: "In the instant case, applicant's mark sought to be registered is obviously not a word designation, or a combination of letters, shown by the specimens of record to be used immediately after the name of an individual in the manner of a title or degree. To the contrary, the mark is a design mark which is not used in conjunction with the name of an individual at all.

        Further, the record shows that in order to qualify to use the mark, a mechanic must meet certain standards set by applicant as to experience and training and must pass a test conducted by applicant for each area of automotive mechanics (e.g., engine repair, brakes, electrical systems, etc.) in which he desires to be certified as competent. In order to maintain his certification, he must retake and pass the test or tests every five years thereafter. According to applicant's literature, applicant's certification program, which is voluntary, tests "at a high level of competency, based on difficult, meaningful tests of mechanics' skill and knowledge."

        In our opinion, applicant's design mark, when used by an automotive mechanic certified by applicant, serves to certify a characteristic of the automotive repair services performed by him, namely, that the services are being performed by a person who meets certain standards and tests of competency set by applicant, an indication that the services may be of better quality than automotive repair services performed by a person who has not been certified by applicant."

  • Case Finding: The Board found the mark was not being used as a collective membership mark and commented how the mark may function as a certification mark.
    • In re The Council on Certification of Nurse Anesthetists, Serial No. 75722091, (TTAB 2007).
      • Further, the Board's decision in American Speech-Language-Hearing Association v. National Hearing Aid Society, 224 USPQ 798 (TTAB 1984) is instructive. In that case, the petitioner sought to cancel the registration of the collective membership mark NATIONAL HEARING AID SOCIETY CERTIFIED HEARING AID AUDIOLOGIST on the ground that, inter alia, the registration was invalid because the mark was not being used as a collective membership mark. In holding that the mark was not being used as a collective membership mark, the Board commented that the manner in which the mark was used might qualify it to be a certification mark:
        "The specimens comprise a certificate with the mark appearing on the lower right hand portion of the certificate. Respondent's name appears across the top of the certificate and below respondent's name is the following verbiage:
        "NATIONAL BOARD for CERTIFICATION To all those who witness these presents, be it known that: [Name of Individual] having complied with the requirements of the National Board for Certification of the National Hearing Aid Society, an organization fostering, stimulating, and maintaining high standards of technical competence and ethical practices on the part of those engaged in the fitting and servicing of hearing aids, is hereby declared to be a "CERTIIFIED HEARING AID AUDIOLOGIST" An identical specimen certificate was filed in connection with respondent's Section 8 affidavit. Article VIII of the respondent's By Laws provides for the establishment of the Board of Governors and states that the duties of the Board shall be to evaluate and pass on the qualifications of all applicants for certification; and that all certified members shall be furnished with an appropriate certificate evidencing such certification. As for the requirements for certification, a pamphlet entitled Certification by the National Hearing Aid Society made of record indicates that certification is granted only to those who have met strict standards of education, experience, competence and character. Under the heading "CERTIFICATION," the text reads: "The title, Certified Hearing Aid Audiologist, is granted only to those hearing aid dealers who have met exacting requirements established by the National Hearing Aid Society." Requirements include completion of the respondent's course in hearing aid audiology or an equivalent approved course; passage of respondent's comprehensive examination or an equivalent approved examination; proof of two years experience in the fitting of hearing aids; submission of three references to the applicant's competence in the hearing aid field; submission of character and financial references; agreeing to abide by respondent's Code of Ethics; and submission of all advertising for 30 days prior to application, as proof of ethical advertising procedures. In our opinion, the specimens and exhibits referred to above indicate that the mark may well be serving as a certification mark as defined in Section 45 of the Act." Id. 224 USPQ 807.
  • Case Finding: The issue whether the subject matter functions as a certification mark turns largely on the nature of its use on materials advertising the services which are directed to recipients by the authorized users.
    • In re The Council on Certification of Nurse Anesthetists, Serial No. 75722091, (TTAB 2007).
      • In the case of In re National Association of Purchasing Management, 228 USPQ 768 (TTAB 1986), the applicant therein sought to register the acronym C.P.M. as a certification mark for "management of purchasing and materials." As evidence of certification mark use, the applicant submitted the business cards of two purchasing managers on which C.P.M. appeared, a four-page brochure titled "Professional Certification for Purchasing Managers – Application for Certification," an information booklet for applicants taking the qualifying examination for certified purchasing managers, and other informational materials. The Board stated at 228 USPQ 769:
        "Whether subject matter functions as a title or degree or as a certification mark for services must be determined from the context in which it is used, as revealed by the specimens of record, and how it is perceived by prospective recipients of the services, the characteristics of which are certified. (case citation omitted) Since it is the use by persons other than the owner (appellant), subject to the owner's control, which is the primary consideration in determining prospective recipients' perceptions, the issue whether the subject matter functions as a certification mark turns largely on the nature of its use on materials advertising the services which are directed to recipients by the authorized users."
  • Case Finding: Applicant's mark serves as a certification mark because the evidence shows use of the mark on material explaining the qualifications needed to obtain certification.
    • In re The Council on Certification of Nurse Anesthetists, Serial No. 75722091, (TTAB 2007).
      • The sample certificate, brochure and above literature are similar in nature to the items and material submitted by the applicant in In re National Institute for Automotive Service Excellence, supra. That is, in this case, applicant's literature shows that in order to qualify to use the CRNA designation, a nurse anesthetist must meet certain standards and take and pass a test. In addition, in order to maintain certification, the nurse anesthetist must retake and pass a test.
        Further, as evidenced by the certificate, the CRNA designation is used in conjunction with the wording "having satisfied the requirements," and the CRNA designation is displayed in a manner that it would be viewed by the ultimate recipients of the services.
        We find that the sample certificate, brochure and above literature indicate that the CRNA designation serves as a certification mark. The CRNA designation, when used by a nurse anesthetist certified by applicant, serves to certify a characteristic of anesthesia services performed by him/her, namely that the services are being performed by a person who meets certain standards and tests of competency set by applicant, an indication that the nurse anesthesia services being performed are of the highest quality. Applicant has stated that the certificate and brochure, in particular, are displayed by certified registered nurse anesthetists at their places of business. The certificate and brochure, along with applicant's literature concerning its standards and competency tests, serve to demonstrate that the CRNA designation would be perceived as a certification mark by the ultimate recipients of the services, namely surgical patients, and doctors and hospital administrators.
  • There is nothing in the language of Section 2(d) and otherwise no authority for treating certification marks differently from trademarks, or for affording them a lesser scope of protection.
    • Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006).
      • In fact the Board held "as a matter of law" that in a case involving a certification mark "the traditional du Pont likelihood of confusion analysis is applicable" and "as in any other Section 2(d) case ... includes likelihood of confusion as to source, sponsorship, affiliation, or connection." Institut, supra at 1891; and also at 1890 (pointing out that there is nothing in the language of Section 2(d) and otherwise no authority for treating certification marks differently from trademarks, or for affording them a lesser scope of protection).
In re The Council on Certification of Nurse Anesthetists, Serial No. 75722091, (TTAB 2007) Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006) In re Software Publishers Association, Serial No. 74/498,601, (TTAB 2003) Grand Total
Halo Management, LLC v. Interland Inc., ___ F.Supp.2d____, 76 USPQ2d 1199 (N.D.Cal. 2004) 1
Zimmerman v. National Association of Realtors, 70 USPQ2d 1425 (TTAB 2004) 1
In re Software Publishers Association, 69 USPQ2d 2009 (TTAB 2003) 1
Sally Beauty Co. v. Beautyco Inc., 304 F.3d 964, 64 USPQ2d 1321 (10th Cir. 2002) 1
Woodstock's Enterprises Inc. (California) v. Woodstock's Enterprises Inc. (Oregon), 42 USPQ2d 1440, 1448 (TTAB 1997), aff'd (unpublished), 152 F.3d 942 (Fed. Cir. 1998) 1
Institut National Des Appellations d'Origine v. Brown-Forman Corp., 47 USPQ2d 1875 (TTAB 1998) 1
Exxon Corp. v. Oxxford Clothes Inc., 109 F.3d 1070, 42 USPQ2d 1417 (5th Cir.), cert. denied, 118 S. Ct. 299 (1997) 1
BellSouth Corp. v. DataNational Corp., 60 F.3d 1565, 35 USPQ2d 1554 (Fed. Cir. 1995) 1
Equine Technologies Inc. v. Equitechnology Inc., 68 F.3d 542, 36 USPQ2d 1659 (1st Cir. 1995) 1
Stanfield v. Osborne Industries Inc., 52 F.3d 867, 34 USPQ2d 1456 (10th Cir. 1995) 1
University Book Store v. University of Wisconsin Board of Regents, 33 USPQ2d 1385 (TTAB 1994) 1
Midwest Plastic Fabricators Inc. v. Underwriters Laboratories Inc., 12 USPQ2d 1267 (TTAB 1989), aff'd, 906 F.2d 1568 (Fed. Cir. 1990) 1
Opticians Association of America v. Independent Opticians of America Inc., 734 F. Supp. 1171, 14 USPQ2d 2021 (D.N.J. 1990) 1
Worthington Foods Inc. v. Kellogg Co. 732 F.Supp. 1417, 14 USPQ2d 1577 (S.D. Ohio 1990) 1
Bureau National Interprofessionnel Du Cognac v. International Better Drinks Corp., 6 USPQ2d 1610 (TTAB 1988) 1
In re University of Mississippi, 1 USPQ2d 1909 (TTAB 1987) 1
In re Cooperativa Produttori Latte E Fontina Valle D'Aosta, 230 USPQ 131 (TTAB 1986) 1
In re National Association of Purchasing Management, 228 USPQ 768 (TTAB 1986) 2
In re Thacker, 228 USPQ 961 (TTAB 1986) 1
In re Mortgage Bankers Association of America, 226 USPQ 954 (TTAB 1985) 1
American Speech-Language-Hearing Association v. National Hearing Aid Society, 224 USPQ 798 (TTAB 1984) 2
Engineered Mechanical Services Inc. v. Applied Mechanical Technology Inc., 584 F.Supp. 1149, 223 USPQ 324 (M.D.La. 1984) 1
In re International Institute of Valuers, 223 USPQ 350 (TTAB 1984) 1
American Speech-Language-Hearing Assn. v. National Hearing Aid Society, 224 USPQ 798 (TTAB 1984) 1
In re Institute for Certification of Computer Professionals, 219 USPQ 372 (TTAB 1983) 1
In re Institute of Certified Professional Business Consultants, 216 USPQ 338, Serial No. 206,007 (slip opinion, May 13, 1983) 1
In re National Association of Legal Secretaries (International), 221 USPQ 50 (TTAB 1983) 2
In re National Institute for Automotive Service Excellence, 218 USPQ 744 (TTAB 1983) 2
In re Institute of Certified Professional Business Consultants, 216 USPQ 338 (TTAB 1982) 1
Wallpaper Manufacturers, Ltd. v. Crown Wallcovering Corp., 680 F.2d 755, 214 USPQ 327 (Fed. Cir. 1982) 1
In re Packaging Education Foundation Inc., 184 USPQ 832 (TTAB 1974) 1
In re The National Society of Cardiopulmonary Technologists Inc., 173 USPQ 511 (TTAB 1972) 1
Community of Roquefort v. Santo, 157 USPQ 444 (TTAB 1968) 1
Formica Corporation v. The Newnan Corporation, 149 USPQ 585, 587 (TTAB 1966), aff'd, 396 F.2d 486, 158 USPQ 104 (CCPA 1968) 1
In re Professional Photographers of Ohio Inc., 149 USPQ 857 (TTAB 1966) 2
Community of Roquefort et al. v. William Faehndrich Inc., 198 F.Supp. 291, 131 USPQ 435 (S.D.N.Y. 1961), aff'd, 303 F.2d 494, 133 USPQ 633 (2d Cir. 1962) 1
Grand Total 7 21 13 41

Sec. 1054. Collective marks and certification marks registrable

Subject to the provisions relating to the registration of trademarks, so far as they are applicable, collective and certification marks, including indications of regional origin, shall be registrable under this chapter, in the same manner and with the same effect as are trademarks, by persons, and nations, States, municipalities, and the like, exercising legitimate control over the use of the marks sought to be registered, even though not possessing an industrial or commercial establishment, and when registered they shall be entitled to the protection provided in this chapter in the case of trademarks, except in the case of certification marks 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. Applications and procedure under this section shall conform as nearly as practicable to those prescribed for the registration of trademarks.

 

 

Sec. 1127. Construction and definitions; intent of chapter

In the construction of this chapter, unless the contrary is plainly apparent from the context--
The United States includes and embraces all territory which is under its jurisdiction and control.
The word ``commerce'' means all commerce which may lawfully be regulated by Congress.
The term ``principal register'' refers to the register provided for by sections 1051 to 1072 of this title, and the term ``supplemental register'' refers to the register provided for by sections 1091 to 1096 of this title.
The term ``person'' and any other word or term used to designate the applicant or other entitled to a benefit or privilege or rendered liable under the provisions of this chapter includes a juristic person as well as a natural person. The term ``juristic person'' includes a firm, corporation, union, association, or other organization capable of suing and being sued in a court of law.
The term ``person'' also includes the United States, any agency or instrumentality thereof, or any individual, firm, or corporation acting for the United States and with the authorization and consent of the United States. The United States, any agency or instrumentality thereof, and any individual, firm, or corporation acting for the United States and with the authorization and consent of the United States, shall be subject to the provisions of this chapter in the same manner and to the same extent as any nongovernmental entity.
The term ``person'' also includes any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his or her official capacity. Any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this chapter in the same manner and to the same extent as any nongovernmental entity.
The terms ``applicant'' and ``registrant'' embrace the legal representatives, predecessors, successors and assigns of such applicant or registrant.
The term ``Director'' means the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.
The term ``related company'' means any person whose use of a mark is controlled by the owner of the mark with respect to the nature and quality of the goods or services on or in connection with which the mark is used.
The terms ``trade name'' and ``commercial name'' mean any name used by a person to identify his or her business or vocation. The term ``trademark'' includes any word, name, symbol, or device, or any combination thereof--
    1. (1) used by a person, or
    2. (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,
to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.
The term ``service mark'' means any word, name, symbol, or device, or any combination thereof--
    1. (1) used by a person, or
    2. (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,
to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown. Titles, character names, and other distinctive features of radio or television programs may be registered as service marks notwithstanding that they, or the programs, may advertise the goods of the sponsor.
The term ``certification mark'' means any word, name, symbol, or device, or any combination thereof--
    1. (1) used by a person other than its owner, or
    2. (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 chapter,
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 term ``collective mark'' means a trademark or service mark--
    1. (1) used by the members of a cooperative, an association, or other collective group or organization, or
    2. (2) which such cooperative, association, or other collective group or organization has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,
and includes marks indicating membership in a union, an association, or other organization.
The term ``mark'' includes any trademark, service mark, collective mark, or certification mark.
The term ``use in commerce'' means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this chapter, a mark shall be deemed to be in use in commerce--
    1. (1) on goods when--
      1. (A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and
      2. (B) the goods are sold or transported in commerce, and
    2. (2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.
A mark shall be deemed to be ``abandoned'' if either of the following occurs:
    1. (1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. ``Use'' of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.
    2. (2) When any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark. Purchaser motivation shall not be a test for determining abandonment under this paragraph.
The term ``colorable imitation'' includes any mark which so resembles a registered mark as to be likely to cause confusion or mistake or to deceive.
The term ``registered mark'' means a mark registered in the United States Patent and Trademark Office under this chapter or under the Act of March 3, 1881, or the Act of February 20, 1905, or the Act of March 19, 1920. The phrase ``marks registered in the Patent and Trademark Office'' means registered marks.
The term ``Act of March 3, 1881'', ``Act of February 20, 1905'', or ``Act of March 19, 1920'', means the respective Act as amended.
A ``counterfeit'' is a spurious mark which is identical with, or substantially indistinguishable from, a registered mark.
The term ``domain name'' means any alphanumeric designation which is registered with or assigned by any domain name registrar, domain name registry, or other domain name registration authority as part of an electronic address on the Internet.
The term ``Internet'' has the meaning given that term in section 230(f)(1) of title 47.
Words used in the singular include the plural and vice versa.
The intent of this chapter is to regulate commerce within the control of Congress by making actionable the deceptive and misleading use of marks in such commerce; to protect registered marks used in such commerce from interference by State, or territorial legislation; to protect persons engaged in such commerce against unfair competition; to prevent fraud and deception in such commerce by the use of reproductions, copies, counterfeits, or colorable imitations of registered marks; and to provide rights and remedies stipulated by treaties and conventions respecting trademarks, trade names, and unfair competition entered into between the United States and foreign nations.