Collective Trademarks

A collective trademark is defined in Section 45 of the Trademark Act, 15 U.S.C. § 1127 as a trademark or service mark used by the members of a cooperative, an association, or other collective group or organization. A collective mark must be owned by a collective entity, even though members of the entity use the mark. There are two types of collective trademarks: (1) a collective membership mark and (2) a collective trademark or service mark.

A collective membership mark is adopted for the purpose of indicating membership in an organized group. Examples of the collective group are unions, associations, or other organizations. A group nor its members use the mark to identify and distinguish goods or services. Collective membership marks are not used in business or trade and they do not designate commercial origin of products or services. Registering a membership mark will prevent others from being able to legally register a similar mark or use a similar mark. The other type of collective mark is a collective trademark or service mark and it is used only by its members who use the mark to identify their goods or services and distinguish them from nonmembers of the group. These marks do indicate commercial origin in addition to informing the public that the party providing the goods or services is a member of a certain group and meets the standards for admission of that group.

Collective trademarks may not be certification marks. For details on registering a certification mark, see our web page entitled, What You Need To Know To Register A Certification Trademark. In addition, a collective mark should not include designations of degree or title such as J.D. or M.D., nor should it merely or only indicate some level of proficiency. With regard to specimens, there is a difference with a specimen submitted in a trademark prosecution for a collective trademark verses a specimen in an ordinary trademark prosecution. An ordinary specimen shows use of the trademark by the owner; however a specimen for a collective trademark prosecution must show use of the mark by a member of the group or organization. Other differences between requirements for collective marks and regular trademarks include the filing basis and the verification requirements.

To establish a use basis under §1(a) of the Trademark Act the collective trademark applicant must undertake several acts: (1) submit a statement specifying the nature of the applicant's control over the use of the mark by the members; (2) provide the date of the applicant's first use of the mark anywhere with the goods or services and the first use of the mark in commerce; and (3) upload a specimen showing how a member uses the mark in commerce; and (4) submit applicant's verified statement that the applicant owns the mark, the trademark is in use in commerce, that the applicant is exercising control over use of the mark, and that no other persons except members have the right to use the mark in commerce. Typically, a collective trademark is used by its members pursuant to standards established by the collective. Often, membership in the collective is confirmed by a written document and the rules for usage of the trademark are set forth in writing. The language in these written documents should be paraphrased and set forth in the trademark application. For example, it could be stated that the by-laws or other written provisions provide the manner of control for usage of the collective mark.

The examination of collective trademarks is similar to the examination for regular trademarks. Most of the same standards apply such as likelihood of confusion, descriptiveness, disclaimers, deceptiveness, etc. Although with respect to ownership and use, there are some different requirements. No member may own the collective mark, it must be owned by a collective entity. With respect to finding likelihood of confusion with a regular trademark and a collective mark, the inquiry is would relevant persons be likely to believe that the trademark owner's goods or services emanate from, are endorsed by or are in some way associated with the collective organization. If you have questions concerning a collective trademark or other trademark related questions, please feel free to contact our office for a courtesy consultation.