A certification mark serves a very different purpose than a traditional trademark (or service mark). Although certification marks aren’t nearly as common as trademarks, it’s still extremely important that businesses, organizations, and associations don’t ignore or overlook them when performing a federal trademark search to check the availability of a trademark for use with specific products or services. I strongly recommend reviewing my article titled “What is a Trademark?” before reading this article because it will give you some helpful background information about trademarks and the role they play in our everyday lives.
What is the Difference between a Trademark and a Certification Mark?
The primary difference between trademarks and certification marks is how they function. A traditional trademark (1) indicates the source of products/services, and (2) identifies and distinguishes one’s products/services from those offered by one’s competitors. For instance, Apple uses its famous apple logo on computers and cell phones to identify and distinguish its products from those offered by other consumer electronics companies such as Microsoft, Samsung, and Google. Likewise, Amazon uses its famous AMAZON name on delivery vehicles, marketing materials, and on its own website to identify and distinguish its e-commerce services from other e-commerce services provided by Walmart, Target, and Wayfair.
If we didn’t have these trademarks, how would we be able to easily ascertain which mobile device we were purchasing and which online retail store we were ordering our products from? What would happen if we went to our favorite liquor store and none of the bottles of vodka had any names or logos printed on their labels? How could we identify and buy Smirnoff and not end up with Absolut, Svedka, Grey Goose, Skyy, or any one of the dozens of other vodka brands in the marketplace? We simply couldn’t. Unless you’re a poor college student just looking for the cheapest vodka possible, all of us need trademarks to make our purchasing decisions.
In contrast, a certification mark is used by a person other than the owner of the certification mark to certify something about that person’s products/services. In other words, it’s used to indicate that a person’s products/services possess certain characteristics or meet certain qualifications or standards set by another person (who may or may not be the owner of the certification mark). The message conveyed by a certification mark is that a person’s products/services were examined, inspected, or tested by someone else using methods determined by the certifier, and that such products/services were found to have met all prescribed characteristics, standards, or qualifications. A certification mark is generally applied to a person’s products/services by that person with the authorization of the certification mark’s owner, not by the owner itself.
What are Some Examples?
Here are a few examples of fairly well-known certification marks in the United States:
- ENERGY STAR used to certify that appliances (e.g. refrigerators and washing machines) meet certain energy efficiency standards
- USDA ORGANIC used to certify that produce meets certain agricultural standards
- PARENTAL ADVISORY EXPLICIT CONTENT used to certify that musical recordings contain explicit content not suitable for children
- RATED R used to certify that motion pictures contain adult material and that no one under the age of 17 should be admitted unless accompanied by a parent or guardian
- GROWN IN IDAHO used to certify that potatoes are grown in the State of Idaho
None of these names are used by their owners to advertise and sell products/services. For example, the owner of ENERGY STAR does not manufacture and sell refrigerators. Rather, manufacturers of refrigerators (such as General Electric and Whirlpool) are authorized to apply the ENERGY STAR name to their refrigerators if their refrigerators meet certain energy efficiency standards. In other words, the owner of ENERGY STAR is certifying that the refrigerators meet or exceed all such standards. Consumers who are interested in purchasing energy-efficient refrigerators would look for the ENERGY STAR certification mark on the refrigerators so that they can be assured the refrigerators are, in fact, energy efficient.
Can a Certification Mark Also Be a Trademark?
Unlike a collective membership mark, a certification mark cannot also be used a trademark. In other words, the owner of a certification mark may not (1) engage in the production or marketing of the same products/services to which the certification mark is applied by others, or (2) permit others to use the certification mark for purposes other than to certify. So, for example, if ORGANIRIFIC is a certification mark used to certify that carrots grown by others are done so without any chemicals, the owner of the ORGANIRIFIC certification mark may not grow and sell its own carrots, nor may it allow other carrot growers to use ORGANIRIFIC as a trademark to advertise and sell their carrots.
Having said that, there’s nothing preventing the owner of a certification mark from using the same certification mark as a trademark for different products/services. So, if the owner of the ORGANIRIFIC certification mark wanted to start manufacturing and selling paper plates under the ORGANIRIFIC name, it could do so without jeopardizing or invalidating its ORGANIRIFIC certification mark for carrots.
How Do I Protect a Certification Mark?
You can apply to register a certification mark with the United States Patent and Trademark Office (USPTO) just like you can apply to register a traditional trademark. The USPTO provides an online application form specifically for certification marks that is actually quite similar to the form used to apply to register traditional trademarks. However, there are several very important differences of which you need to be aware in order to properly register a certification mark. Therefore, if you’ve decided to file an application to federally register a certification mark without seeking any legal representation, I hope you’ll spend some time reading Section 1306 of the Trademark Manual of Examining Procedure (TMEP) before preparing the application and submitting it with the non-refundable filing fee.
Any Questions or Concerns?
I’m experienced US trademark attorney Morris Turek. If you have questions concerning certification marks and how they differ from other types of trademarks, please don’t hesitate to contact me by phone at (314) 749-4059, by email at email@example.com, or through my contact form located toward the bottom of this page. I look forward to speaking with you soon.