Subject Matter of Marks - Collective Membership Mark



As stated in section 1304.01 History of Membership Marks of the Trademark Manual of Examination Procedure:

Section 4 of the Trademark Act of 1946, 15 U.S.C. §1054, provides that collective marks shall be registrable by persons exercising legitimate control over their use, even though not possessing an industrial or commercial establishment, and the definition of a collective mark in §45, 15 U.S.C. §1127, encompasses marks that indicate membership in a union, association, or other organization.

The Trademark Act of 1905 prohibited registration by anyone of symbols of collective groups. The Act of 1946, however, contains no prohibition and thus permits registration by the owners of collective marks, including those used to indicate membership.

Membership marks are not trademarks or service marks in the ordinary sense; they are not used in business or trade, and they do not indicate commercial origin of goods or services. Registration of these marks fills the need of collective organizations who do not use the symbols of their organizations on goods or services but who wish to protect their marks to prevent their use by others. See Ex parte Supreme Shrine of the Order of the White Shrine of Jerusalem, 109 USPQ 248 (Comm'r Pats. 1956), regarding the rationale for registration of collective membership marks.

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  • Definition: Collective membership marks.
    • Jacob Zimmerman v. National Association of Realtors, Cancellation No. 92032360, (TTAB 2003).
      • FOOTNOTE 6 "Collective membership marks may be owned by collective organizations that never use the symbols of their organizations in connection with the commercialization of goods or services, such as fraternal benefit societies. See Ex Parte The Supreme Shrine of the Order of the White Shrine of Jerusalem, 109 USPQ 248 (Comm'r. Pat. 1956)."
Jacob Zimmerman v. National Association of Realtors, Cancellation No. 92032360, (TTAB 2003) Grand Total
Levi Strauss & Co. v. R. Josephs Sportwear Inc., 36 USPQ2d 1328 (TTAB 1994) 1
Ex Parte The Supreme Shrine of the Order of the White Shrine of Jerusalem, 109 USPQ 248 (Comm'r. Pat. 1956) 1
Grand Total 2 2

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.