What is a Certification Mark?
Ever wonder about certain marks like UL that you find on goods? How do certification marks differ from trademarks? Can any company apply to register a certification mark?
Certification marks serve to convey to the consumer that a product or service has met certain qualifications. For example, you might see a 100% Certified Recycled Paperboard mark indicating that the product is made of such material. You may also see certified geographical marks to indicate that the goods genuinely originate from a particular location.
Here are some examples provided by the USPTO.
Certification Mark vs. Trademark
Trademarks, on the other hand, serve to indicate that the source of a product comes from a particular company or person.
Unlike trademarks which are used exclusively by brand owners, certification marks are meant to be used by others. While a company might apply for registration of such a mark, permission to use certification marks must be given to third parties who meet certain standards.
For example, an electrical product that seeks to bear the UL mark must meet the certification requirements by Underwriters Laboratories.
Owners of certification registrations control the requirements and provide authorizations for third parties to use the marks. The certification owners themselves cannot provide the pertinent goods or services.
Can a company register a “Certified by . . .” trademark?
It is possible to apply for a trademark that starts off with “Certified . . .” but be careful. You need to consider whether such an application should be filed as trademark application to indicate that certain goods or services are originating from your business.
Be prepared to submit evidence showing the specific requirements that must be met by others in order to use the certification.
Can a certification mark be descriptive?
To be registrable, certification marks must still meet USPTO registration requirements. Certification marks tend to be descriptive by nature. As such, more hurdles must be overcome in order to obtain a registration. If an applied-for mark is merely descriptive which may typically be the case, then the applicant must show sufficient acquired distinctiveness.
That means an applied-for certification mark must not have a likelihood of confusion with any prior trademark registrations.
Can you register an acronym as a certification mark?
Acronyms are registrable. However, they have a higher risk of encountering merely descriptive rejections by USPTO trademark examining attorneys. Be prepared to show how your acronym has achieved secondary meaning.
Take the example of the acronym CRNA, a certification application for an acronym that stood for Certified Registered Nurse Anesthetist. That application was ultimately defeated, but not for the reasons you might think. The TTAB held that the applicant presented sufficient evidence to show usage as a certification mark.
However, the applicant could not overcome the merely descriptive refusal. The evidence of acquired distinctiveness was insufficient.
Need to register a certification or acronym trademark?
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