Westchester Women's Bar Association

What You Need to Know to Register a Certification Trademark

For the basic rules that apply to certification trademarks, see our blog post entitled, What Is A Certification Trademark? This page will address some of the more sophisticated issues concerning registration of a certification mark. A certification mark certifies particular characteristics or features of the goods or services and is used by a party other than the owner. The same standards are utilized to evaluate the registrability of a certification trademark that are used for standard trademarks. Certification marks can be refused for various reasons, including likelihood of confusion, merely descriptiveness and if the mark does not function as a certification mark. For example, if there is a title awarded to an individual or an educational degree and it is used only for that purpose (a personal title or personal qualification) it will not function as a certification mark and will be refused by the Examining Attorney.

For example, see the precedential case, In re The Council on Certification of Nurse Anesthetists, 85 USPQ2d 1403 (TTAB 2007), where the Board determined that the mark CRNA (standing for Certified Registered Nurse Anesthetist) was highly descriptive and therefore acquired distinctiveness had to be proven. The Applicant failed to show secondary meaning and the Board affirmed refusal on the basis that the certification mark was merely descriptive of the services. Therefore, in addition to the numerous requirements specifically targeted at certification marks, the applicant must keep in mind that the evaluation for standard trademarks will typically apply as well.

Similar to trademarks or service marks, certification marks can be cancelled by filing a cancellation proceeding at the Trademark Trial and Appeal Board (the "Board" or the "TTAB"), but some of the grounds for cancellation will differ. Section 14 of the Trademark Act provides that a certification mark may be cancelled if (1) the registrant does not control the use of the mark; (2) if the registrant engages in production or marketing of any goods or services to which the certification mark is applied; (3) permits use of the mark for other purposes other than to certify; and (4) discriminately refuses to certify goods or services of any person who maintains the standards and conditions set forth under the certification mark.

The Trademark Act does not require that a certification mark be in a specific form. Similar to a standard trademark it may be words only, design only or a combination thereof. Often a certification mark includes wording such as "certified", "inspected", or "approved by" but this wording is not mandatory for a certification mark. In order to register the mark it may be helpful to use this wording but in the end, the Examining Attorney will look to the record to determine if the circumstances surrounding the marketing or use of the mark will provide certification significance in the marketplace.

It is well settled that the owner of a certification mark cannot use the identical mark as a standard trademark or service mark on the same goods and services that it certifies. However, there seems to be uncertainty about how far removed the goods and services must be from those the owner certifies. The TTAB appears to be extending the rule to any goods or services that are likely to cause confusion with the goods or services being certified by the mark owner. For example, the mark O.J. was registered as a certification mark for oranges grown in Florida that complied with the standards of the mark owner. However, the same trademark owner was not allowed to register the same mark for promotion of orange juice made from Florida oranges. Keep in mind this rule is applicable to marks that are identical or so substantially similar that they would constitute the same trademark. Modifications to the mark, if meaningful and if create a separate commercial impression can create different marks and then such rule would not apply.

Lastly, an Examining Attorney will pay special attention to a certification application if a contractual relationship exists in the nature of a license or franchise. These circumstances typically indicate a standard trademark or service mark use rather than certification use. Certification mark applications are fraught with challenges; if you have any questions regarding this type of trademark application please contact our office for a courtesy consultation.

Client Reviews
Nikki's commitment to clients is unparalleled with her devotion and attention to detail in every assignment and aspect of intellectual property law. Damien Germino
Nikki Siesel is the most profound trademark lawyer I have worked with and she has thoroughly empowered me with her knowledge. Maria Jacobs