More On Collective Trademarks

A collective mark is one used by the members of an association, cooperative, or other collective group or organization. A collective mark must be owned by a collective entity. There are two types of collective marks: (1) a collective trademark or service mark or (2) a collective membership mark. The former is a mark adopted by a collective organization or group for use only by its members. Those members of the collective use the mark to identify goods and services from nonmembers. However, the collective itself does not sell goods or perform services, but the collective may advertise or promote the goods or services its members sell under the mark. The second type of mark is a collective membership mark adopted for the sole purpose of indicating membership in a collective group. The mark is not used to identify or distinguish goods or services.

There are some differences in the examination of a collective trademark compared to a regular trademark. For example, the filing basis and requirements for verification differ in form from regular trademarks due to the differences between who owns and uses collective marks. There are also some differences for post registration maintenance if you own a collective mark. In addition to the requirements of the Trademark Manual of Examining Procedure "TMEP" §§ 1604.06-1604.19, a complete Section 8 Affidavit for declaring continued use in commerce, must also include: (1) a statement that the owner is exercising legitimate control over the use of the trademark in commerce; and (2) if the registration was issued from an application where the only filing basis was Section 44 of the Trademark Act, a statement specifying the nature of the trademark owner's control over the use of the mark by the members. A statement that the trademark owner's bylaws indicate the manner of control is typically sufficient.

Regarding identifications, there are some differences to consider when preparing an application a collective membership mark. Since its purpose is to indicate membership in an organization, it would be inappropriate to identify goods or services. A more fitting identification would be indicating membership in an organization, followed by a phrase describing the nature of the organization, such as a social club, political club, or an organization of professional accountants. A detailed description of the organization's activities is not necessary. It need only include the field of activity as related to goods or services or the purpose of the organization.

It is important to keep in mind that someone other than the collective organization may own a collective membership mark. For example, a business corporation who forms a club for persons meeting certain qualifications, and plans to retain control of the group and control of use of the mark, may be entitled to register the mark as the owner. Whether matter functions as a collective membership mark is evaluated based on the specimen of record. It should also be noted that collective marks, collective membership marks, and certification marks (for more information on certification marks see our web page entitled, What You Need To Know To Register A Certification Trademark) are eligible for reduced fee filings using TEAS RF.

Regarding confusion, likelihood of confusion can arise between a collective membership mark and a trademark. But, the finding of confusion is not based on confusion as to source of any goods or services provided by the members of the collective group. Instead, the question is whether relevant persons are likely to believe that the trademark owner's goods or services are endorsed by or are in some way associated with the collective organization. However, if the same owner is using the mark as both a collective membership mark and as a trademark, then there will be no confusion if the same entity owns both. If you are considering filing a collective trademark application, please feel free to contact our office for assistance.