A Rose by Any Other Name – May or May NOT be a Rose:

A Rose by Any Other Name – May or May NOT be a Rose:
The Distinguishing Characteristics of Federal Marks.

The need for a thorough understanding of the nuances of law surrounding federal marks can arise at unexpected times.   During the practice of any facet of legal procedure, clients’ needs can include establishment and protection of property or rights, including federal trademarks, service marks, collective trademarks and collective service marks, collective membership marks, and certification marks.  While the ‘titles’ of these marks seem quite similar, or perhaps even overlapping, their functions each are unique.  Differentiating between them requires understanding of the intrinsic characteristics of various federal marks.

The laws governing federal marks can be found in the United States Code and the Code of Federal Regulations.  Chapter 15 of the United States Code encompasses the Lanham Act which is the federal trademark statute.  Also, since trademarks are not provided for in the United States Constitution, the federal government controls their registration and use through the Interstate Commerce Clause.

Federal Trademarks

Federal trademarks are used on tangible goods or products to identify the source or origin of goods and are registered and protected by federal statute [i].  A federal trademark is used to identify the origin of shoes, fruit, sporting equipment, or any other tangible goods.  A federal trademark which is placed upon or is part of said items is “any word, name, symbol, device, or any combination of these options”[ii].  This definition encompasses groupings of words or logos.

Case law has also allowed for a single color or a multitude of colors to function as a trademark.  The Federal Circuit held that Owens-Corning could use the color pink to distinguish and identify its residential fibrous glass insulation from competitors in the marketplace [iii].  The Supreme Court also held that a single color may serve as a trademark[iv].  Both the Federal Circuit and the Supreme Court noted that it was important that the trademarked color serve no utilitarian purpose but merely distinguish the goods from those of competitors[v]

The United States also recognizes that a distinctive sound may be trademarked.  The National Broadcasting Corporation (“NBC”) was able to trademark the sound of its chimes preceding a broadcast[vi].  Also, Metro Goldwyn Mayer Lion Corporation (“MGM”) has a trademarked its lion’s roar which is heard at the beginning of many MGM movies[vii].

Regardless of what trademark the owner chooses, it must be used in association with goods in interstate commerce.  A federal trademark is owned by an individual, company, or other entity and used to distinguish its goods and services from competitors in the market.  Only the owner of the federal trademark is allowed to use that mark on its products and can prevent others from using the same or similar mark on similar goods.  However, the owner of a trademark may grant other entities permission to use its mark on the grantee’s products.

Federal Service Marks

Under 15 U.S.C. §1053, service marks are entitled to federal registration and protection in the same manner as federal trademarks[viii].  A federal service mark must have the same iconic properties and meet the same standards of traditional trademarks[ix].

A federal trademark is distinguished from a federal service mark in intent:   a service mark identifies the services provided by the source, as opposed to a trademark which identifies the goods.  For example, a service mark may identify a chiropractor’s practice, a pet grooming business, or an oil change station.  The service mark still must be used in interstate commerce in association with the services.

A service mark serves to indicate origin and distinguish the owner’s services from those of competitors.  The owner of the service mark has the exclusive right to use the mark on its services and may prevent others from using the same or a similar mark on similar services.  Again, the owner may grant another entity permission to use the same or a similar mark in connection with the grantee’s services.

A single applicant may require both a federal trademark and service mark.  Case in point, a camera company may manufacture cameras, camera cases, and other camera equipment for which it would require a federal trademark to identify its goods in commerce.  In addition, the same camera company may repair cameras and equipment for which it would require service mark protection to distinguish its camera repair services from competitors in the marketplace.   The same mark can serve as both the trademark and service mark.

Collective Trademarks and Collective Service Marks

Under 15 U.S.C. § 1054 collective trademarks and collective service marks are entitled to federal registration and protection[x]  Collective trademarks and service marks differ from traditional trade and service marks because they are held by a “parent” organization or group and identify the origin of products and services to members of such group[xi].  As such, collective trademarks and service marks are designed to be used by a multitude of businesses, providers, and producers.   The owner of the mark does not use the mark but simply maintains control over who may use the mark[xii].

Again, a collective trademark or a collective service mark must have the same iconic properties and meet the same standards of traditional trademarks and service marks[xiii].  They are distinguished from traditional marks via utilization and display by the owner’s members in connection with the member’s goods or services in the marketplace.  Collective trademarks and service marks identify and distinguish goods or services provided by those members of the association, group, or union from those provided by nonmembers.  Only members of the collective group may place the mark on their goods or services.

The owner of a collective trademark or service mark can not use the mark in connection with its own goods or services[xiv].  If the owner of the mark wishes to ‘mark’ its own goods or services, then it needs to design a new mark and file a traditional trademark or service mark application.

An example to illustrate a collective service mark is a group of like businesses across the nation forming an organization to promote associates of the collective group by offering discounts to consumer members of the group.  The parent organization owns the collective service mark but each individual associate member would have permission to display the mark on or in connection with their associate business.  Consumers purchase access to the benefits of the collective group and are attracted to the member business associations via the collective service mark.

Collective Membership Marks

Under 15 U.S.C. 1054, collective membership marks are entitled to federal registration and protection[xv].  A collective membership mark “may be a letter or letters, a word or words, a design alone, a name or nickname, or other matter that identifies the collective organization or indicates its purpose”[xvi]. Collective membership marks are owned by a parent organization, group, or union and are used by its members[xvii].

Collective membership marks are nontraditional in the sense that they do not indicate the source or origin of particular goods or services.  Collective membership marks only serve to indicate that the person, business, or other entity bearing the mark is a member of a particular organization such as a union, a professional organization, or a social fraternity[xviii].  The collective membership mark does not distinguish the goods and services provided by the members from those provided by nonmembers.  The organization owns the mark and grants permission for its members to use the mark.

For example, a merchant may use a collective membership mark to indicate membership in a national organization.  The national organization is the owner of the mark and grants the merchant permission to display the mark in connection with this person’s business services.  The merchant’s collective membership mark only indicates membership in the national organization.  The mark does not identify the merchant’s services as being part of the national organization and does not strive to identify them as superior to nonmembers.

Certification Mark

A certification mark differs from traditional trademarks or service marks as the owner of the certification mark does not use it to identify its goods or services[xix].  The certification mark is distinguished by its intent to be used by a multitude of individual producers or providers and it does not link the goods or services to an individual business.  However, a certification mark differs from a collective mark as the users are not interrelated members of the owner’s group.

A certification mark serves to identify or distinguish particular characteristics or qualities of a product or service which meet established standards from those that do not[xx].  Again a certification mark must have the same iconic properties and meet the same standards of traditional trademarks and service marks[xxi].  A certification mark is intended to be used on the goods or services in commerce.

Certification marks may certify a singular or multitude of qualities that goods or services must possess in order to display the mark.  This distinction is exemplified by an organization that promotes products from a defined region or nation[xxii].  The owner of the certification mark may also require that users meet standards of accuracy, precision, or thoroughness in their services or products[xxiii].  Also, the mark may indicate the method of manufacture used to produce the goods or signify that the goods or services have passed a particular group’s testing standards[xxiv].  Any standard or combination thereof can be required by the parent organization in order for others to use the certification mark.

The owner of the certification mark must maintain control of the mark and ensure that the established standards are met for any product or service on which the mark is used[xxv].   The owner of the mark grants individuals permission to use the mark on their goods or services that meet the established standards.  If the owner of the mark falsely certifies goods or services that do not conform to the established standards or, conversely; it fails to certify goods or services that do in fact conform, it may lead to cancellation of the certification mark[xxvi]

Some common certification marks indicate the geographical region of origination of the product.  The Second Circuit held that geographical descriptions may be used as certification marks.  The certification mark at issue in that case was “Roquefort” which was used in relation to cheese which originated from the Roquefort region of France versus similar cheeses originating from different locales[xxvii].

From the above descriptions, one can see the variance between rights associated with differently designated federal marks.  Once analyzed, the type of federal mark is readily apparent.  The usage rights can then be determined, and appropriate counsel can be provided to your client.  Additional information regarding federal marks can be obtained at www.uspto.gov.