Consumers today want to know that their products and services are safe, reliable, eco-friendly, humanely produced, and verifiably from a particular geographic origin. How do companies and organizations prove these claims? Certification marks are one way.
These types of marks are used to certify the geographic origin of products or services, the material or mode of manufacture, the quality or accuracy of products or services, or that work or labor on products or services was performed by a particular organization or according to particular standards or tests of competency that are established by the owner of the mark. For example, the Woolmark logo is used to certify that goods are 100 percent wool. Domestic and foreign wine appellations are also protected through the use of certification marks. Certification marks are the only way you can establish a property right in a geographical indication in the United States.
Under Section 45 of the Trademark Act, a certification mark is any word, name, symbol, device, or combination of these that is used by somebody other than the owner. It also applies to one of these things if its owner has the bona fide intention of permitting another to use in commerce and files an application to register with the United States Patent and Trademark Office (USPTO) to certify particular characteristics of the products or services.
The user of the certification mark is a business or other organization that has been certified by the mark’s owner. In the United States, certification marks are divided into two classes. Class A is for goods, while Class B is for services.
Not all countries’ legal systems recognize and protect certification marks, and the lack of recognition can present obstacles to organizations in the United States seeking to implement certification marks abroad. Some countries, such as those in the European Union, use labeling laws to ensure that products from certain regions, such as Champagne, are marked properly.
The Lanham Act places four requirements on those that own certification marks: standards, objectivity, exclusivity of use, and non-discrimination. First, the owner has to set relevant standards for quality, safety, or other characteristics and control the use of the mark by any parties it certifies. When applying to the USPTO, an applicant has to submit the regulations it implements in its certification program. Second, the owner of a certification mark cannot produce or market the goods or services to which a certification mark is attached. Third, the mark must be used exclusively to certify and not for other purposes. Fourth, a certification mark owner cannot discriminate. It has to apply its standards consistently.
The certification mark applicant must also follow the laws that govern regular trademarks. The only exception is that certification marks can be primarily geographically descriptive, even though this would cause a mark to be rejected in a trademark or service mark application. Generally, the owner of a trademark or service mark cannot use the same mark as a certification mark or vice versa. This requirement is to avoid consumer confusion.
You can, however, apply for a composite certification mark. This is a certification mark that includes a trademark or service mark. It is only permitted if it certifies products or services but is not used to indicate the origin of the products or services. The trademark owner and the certification mark owner must be the same in order to obtain a composite certification mark.
Typically, certification is accomplished when the user executes an agreement that confirms the user will adhere to the organization’s rules and regulations. Certification also requires there to be ways of testing and periodic quality control checks to make sure that the user continues to conform to certification standards over time. A user or manufacturer can be prevented from using the certification mark if a check shows that the organization’s standards are not met. The organization controls the use of the mark.
