What Are Certification Marks?

Certification marks are names, symbols, or devices used by groups or persons that show compliance to a set of standards. A certification mark does not distinguish between producers. In addition, the user of the mark is not the registered owner, and the owner is not permitted to use the mark. These marks can show geographic origin, standards met with respect to quality or manufacture, or work performed by a person that meets certain standards. The party that applies for a certification mark must also be considered competent to certify the products in question.

Why Are Certification Marks Important?

Certification marks are important for businesses that want to demonstrate the quality of their products. Trade associations and centralized commercial groups are the most common owners of these marks. To get the rights to use a given mark, the business's goods must reach a certain standard. By achieving this standard, companies can show that they use certain methods, workers, and materials to make a product.

Reasons to Consider a Certification Mark

Consumers want a guarantee that products and services meet desired standards. To meet this demand, more companies are trying to get a certification mark or create a certification body. This provides airtight proof of quality for the product in question. It also puts consumers' minds at ease.

How Can Parties Get Certification Marks?

Certification marks fall under three main categories:

  • Geographic origin
  • Characteristics of the goods or service
  • Work or labor group: This shows that a product or service was manufactured by members of a union or other organization.

Characteristics of certified goods or services include:

  • Safety
  • Quality
  • Morality
  • Mode of manufacture
  • Materials used
  • Accuracy

The California Certified Organic Farmers (CCOF) is an organization that's a great example of a certification mark. It has many characteristics of a certification mark. In particular, this mark certifies that a food is pesticide-free. California farmers that meet this standard can use the CCOF logo.

Because the CCOF doesn't sell products, they also don't use their certification mark, just as the law states. Instead, a voluntary trade organization based out of Santa Cruz, California, owns the mark. They allow others to use the mark with their own trademark. For example, if you bought Molino brand tomatoes that followed CCOF standards, both marks would appear on the package. 

Certification Marks vs. Trademarks

There are two main differences between certification marks and trademarks:

  • A certification mark is not used by its owner. Instead, authorized users use the mark. However, the owner maintains control over the use of the mark.
  • A certification mark does not indicate a source. It also doesn't distinguish the goods or services of one company from those of another producer. According to the United States Patent and Trademark Office (USPTO), a trademark identifies the source of the goods of one party.

A certification mark is still regulated like a trademark. It falls under the protection of the Lanham Act. However, it can have geographic descriptive details that a trademark cannot.

Like with trademarks, it's up to the owner of the mark to monitor and control the use of the mark. Failure to enforce the standards of the certification mark can result in cancellation of the mark. Using the same mark for two different purposes also invalidates the mark. In addition, a certification mark cannot be trademarked and vice versa, as described in Section 15 of the Trademark Act. This would cause too much consumer confusion about the mark itself.

Historically, standards bodies developed criteria for certification marks. They also develop supplementary materials like:

  • Booklets and pamphlets
  • Software and programming interfaces
  • Instructional materials

Pros and Cons of Certification Marks

A certification mark's main benefit is the appearance of dedication to the product instead of profits. This is because a certification mark holder cannot put the mark on its own goods. However, several drawbacks exist.

  • Obtaining a mark is more difficult. Some standards also change over time, making it harder to get certification.
  • Certification can be stripped by unsupervised third parties. When authorized users fail to meet standards, the licensor is put at risk.
  • Certification marks aren't recognized outside of certain regions or the United States.
  • Licensing or assigning a certification mark to others destroys the meaning of the mark. In the eyes of the USPTO, this is abandonment.

Pros and Cons of Trademarks

Despite the trend of organizations toward using certification marks, some have begun to consider trademarks. Advantages of trademarks over certification marks include:

  • Complete control over their mark. This allows them to license a trademark to anyone.
  • They cannot come under attack from licensees.
  • More familiarity from consumers
  • Less paperwork
  • Worldwide recognition

While the advantages are many, there are still some drawbacks to the use of trademarks by standards bodies or licensors. Some disadvantages are:

  • Licensors may seem too involved in commercial aspects. This calls into question the motives of the licensor.
  • A trademark must be used to identify a specific good or service.

How to Decide Between a Trademark and a Certification Mark

Assessing materials, services, activities, and the market is the best way to figure out which mark works best for a company. If an owner places importance on unbiased standard-setting, the certification mark is best. For ease of administration and greater flexibility in the use of the mark, a trademark is a better choice.

How Do I Register a Certification Mark?

Many of the requirements of registering a certification mark are similar to registering a trademark. They can also be refused for being too similar to other trademarks or for being merely descriptive. When filing for a certification mark, applicants must show proper evidence of use. This evidence demonstrates how businesses other than the owner will use the mark. Like trademarks and service marks, certification marks have two classifications. Certification of services is Class B. Certification of goods is Class A. However, one application can cover both classes. Other requirements include:

  • A statement that the applicant isn't engaged in the business of selling, producing, or marketing of goods to which the mark applies.
  • A copy of certification standards. This shows how groups can get certification. These standards do not have to be original. Applicants can pull them from government agencies or adopt them from private companies.
  • A statement about the features of certifiable goods or services. This should show how the mark works for a geographic location, a work group, or a set of characteristics.
  • A statement showing how the owner has control over the use of the mark.

Despite the importance of these statements, the USPTO doesn't verify them.

Certification Mark Rules

Owners of certification marks must follow strict rules after obtaining their mark. Section 14 of the Lanham Act lays out these rules:

  • Non-discrimination: The owner cannot refuse the mark to any company that meets the standards of certification. This prevents secrets and discrimination in the certification process.
  • Exclusivity of Use: The owner cannot use the mark for any purpose other than certification. If they do, it becomes invalidated. Also, consumers lose meaning in the mark.
  • Standards: The owner must draft agreements to certified parties. This helps verify that other parties continue to meet the standards.
  • Objectivity: Owners cannot sell any product on their own that bears the mark.

What Are Some Well-Known Certification Marks?

  • Woolmark is a certification mark that verifies that goods are 100 percent wool.
  • Cognac signifies brandy made in a certain part of France.
  • Sunshine Tree indicates products made from fruit in Florida.
  • Roquefort is a mark given to cheese from the Roquefort region of France.
  • EnergyStar appliances show that they meet certain efficiency standards.
  • The Parental Advisory emblems warn parents of inappropriate or vulgar content in music.
  • UL logos show that a product meets the safety standards of Underwriters Laboratories Inc.

Common Misconceptions of Certification Marks

In some cases, a certification mark is confusing to the consumer.

  • Certification Marks vs. Titles: Sometimes, a certification mark owner shows a product to have the certification of a person. This person usually holds a degree or title and a set of certification standards. That doesn't always mean that it's a certification mark. If it does, the mark serves a certification function.
  • Certification Marks vs. Collective MarksUsing a certification mark to show work on a product or service by a labor group is a common practice. However, this gets confused often with a collective mark. A collective mark shows that the users of the mark are all part of the same organization. That group owns the mark to benefit the members.

The Swiss Watch Case Study

One of the most revolutionary case studies was Swiss Watch International, Inc. v. Federation of the Swiss Watch Industry. This 2012 landmark case from the Trademark Trial and Appeal Board (TTAB) provides a thorough examination of the validity of certification marks. It mainly deals with an owner's inability to police the mark. This case resulted in losses and injury to users of the mark.

The Federation of the Swiss Watch Industry certified three aspects:

  • The watch's Swiss origin
  • The watch's packaging in Switzerland
  • That the final inspection of the watch took place in Switzerland

When these three criteria were met, watches received the official stamp of the Federation, (either SWISS or SWISS MADE). Swiss Watch International, Inc. (SWI) is a U.S. manufacturer of watches under the name Swiss Watch International and Swiss Legend. Because of the certification mark held by the Federation, SWI's trademark application was denied by the USPTO. As a result, SWI petitioned to the TTAB to have the certification mark of the Federation canceled for five reasons.

  • Failure to control the mark: SWI argued that the Federation didn't use due control over its mark. However, the Board stated that while true, a certification mark owner only had to show "reasonable" attempts to control the use of its mark.
  • Uses of marks for reasons other than certification: SWI alleged that the Federation allowed its members and users to include the word "Swiss" in their trademark. However, these marks didn't contain the word Swiss or Swiss Made alone, and thus didn't violate the Trademark Act. The Board did caution certification mark holders to look out for the potential pitfalls of allowing part of the mark to appear in registered trademarks.
  • The marks had become generic: Using third parties not affiliated with the Federation, SWI attempted to show the generic use of "Swiss" and "Swiss Made" as another failure at controlling the mark. The Board deemed this insufficient evidence. They sided with the Federation and determined they exercised reasonable caution to control the mark.
  • Fraud on the USPTO: SWI stated that the Federation had influenced and misled the attorney examining the case. They submitted both the application and the Swiss statute for "Swiss Made," confusing the examiner in the process. This was dismissed by the Board. It failed to show fraud, which was defined as purposely misleading the examining attorney or purposely omitting sections of the application.
  • Discrimination on Standard Applications: A certification mark must be completely non-discriminatory. However, SWI alleged that watches should only have to be made in Switzerland, not packaged or inspected, to constitute a Swiss certification. However, the Board turned this down, as it's not able to actually judge the standards themselves.

In the end, SWI's case was dismissed. This shows that historical and current cases typically side with the certification body. However, this does raise some issues, and certification bodies should try with more fervor to police their marks. In addition, a certification program should:

  • Draft standards and regulations that address all aspects of certification and marks.
  • Discourage the mingling of certification marks with a user's trademark.
  • Keep records to show non-discriminatory treatment of applicants for usage.
  • Use marks with descriptive logos or lettering as part of certification marks.

Frequently Asked Questions

  • Can I still sell goods if I own a certification mark?

Nothing prevents certification mark owners from participating in sales or service. However, you may not use your certification mark on your own products.

  • What is a composite certification mark?

This type of certification mark also includes a trademark or service mark. It's only used to signify that a product or service meets certain standards. It's never used for geographic origin. To get a service mark, the trademark owner and the certification owner are the same.

  • What if I have a registered certification mark or trademark abroad?

A registered certification mark or trademark in a foreign country is not an acceptable basis for filing or obtaining one in the United States.

  • What if I fill out a trademark application for a certification mark application or vice versa?

If you file for a trademark using a certification mark application, you can amend it. This usually requires a form filled out by an attorney and attached to the new application.

If you need help with certification marks, you can post your job on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or for companies like Google, Menlo Ventures, and Airbnb.