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Service Marks, Trademarks

WHAT IT TAKES TO PROTECT A CERTIFICATION MARK? (Part 2)

Orange Tick Circled Shows Quality And Excellence

This blog follows on my earlier examination of why a certification mark could improve the bottom line for both for-profit and not-for-profit organizations.

If you think that setting up a certification program is in your future, or you already have one in place, here are some points to consider as you develop or perfect the program:

1.         A certification mark is not the same as the mark your organization uses to identify its goods and services (“identification mark”).  While the design of the certification mark may incorporate some elements from your identification mark, it should nonetheless have distinctive elements to eliminate confusion between the two. 

2.         Because there are basically three types of marks, it is critical to understand which kind applies to your organization, because the standards for the United States Patent and Trademark Office (“USPTO”) registration process differ: 

            a.         Marks that certify that goods or services originate from a specific geographic region (“Champagne” for wine, “Roquefort” for cheese, “Indian River Fruit” for Florida citrus);

            b.         Marks that certify that goods or services meet certain standards for quality, materials or mode of manufacture (“UL” mark certifies electrical equipment meets certain safety standards; “Pure Wool” logo means the product is made of a 100% wool); and

            c.         Marks that certify that the work or labor for a product or service was performed by a member of a union or other person meeting certain standards.( Union workmanship).

3.         Identify the standards that an applicant to your program must meet.  These may be created by your organization or based on standards established by a governmental agency or other standard developer.

4.         The certification mark will be used by third parties, not by your organization.  Once the third party has met the standards your organization has set, they will be permitted to use the certification mark in connection with their own goods or services to tell the world they are “qualified” to do so by the certifier.

5.         Consider federally registering your certification mark with the USPTO, which, once accomplished, basically gives your organization protection in all 50 states.

6.         If you are going to request federal registration of the mark, the USPTO will require you to submit a copy of the standards you have established to determine whether others may use the certification mark. (37 C.F.R. §2.45)

7.         To protect your rights in the mark and not risk being deemed to have abandoned it, maintain an appropriate policing program to insure that it will be used correctly by the third parties.  Here are two actions you should take:

a.         Issue a letter that makes it clear that they are using the certification mark under license from your organization and if they fail to maintain the standards you have required, you can revoke the privilege; and

b.         Monitor third-party use of your certification mark.  For example, depending on what is appropriate, you could require periodic refresher training or status reporting.  At such intervals, your organization could charge fees to support this monitoring process.

In these difficult economic times, developing a certification program can not only help to set you apart from your competition but also force others to play by your rules.  That is definitely an enviable position.

About Law Office of Barbara I. Berschler

In addition to advising my clients about general business matters associated with business formation and operation, I counsel for-profit and not-for-profit organizations about the protection and use of intellectual property.

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