Protecting Your Certification Marks with Certainty | Faegre Drinker Biddle & Reath LLP
A certification mark is an important business tool. Displaying a certification mark on a product or on marketing materials indicates that a company’s offerings meet certain standards. Consumers often look for items that have been tested and found to meet their desired standards, so use of a certification mark can provide businesses with a competitive advantage.
A certification mark doesn’t serve the same function as a source-indicating brand. Instead of helping companies distinguish their offerings from others, certification marks show consumers that products or services have been “certified” as to a particular quality or characteristic. For example, a certification mark may appear on food that originated in a specific geographic region or on a household product that contains certain materials. A certification mark may also be used in connection with services that are provided by members of a union or other organization.
Interested in launching your own certification program? Read on for some dos and don’ts regarding the use and protection of certification marks:
- DO exercise control over your certification mark by developing standards governing its use, and making sure that the mark is only used with products or services that meet those standards.
- DON’T certify your own products or services to help maintain the integrity of your certification program.
- DON’T use an existing trademark as a certification mark to avoid confusion. Moreover, the USPTO won’t allow the registration of the exact same mark as both a trademark and a certification mark.
- DON’T forget that federal applications for certification marks have special requirements. For example, the application must include a statement confirming the quality or characteristic that the mark is certifying, among other information. The mark owner also needs to submit a copy of the certification standards. Remember that the description of products or services in a certification mark application may be less specific than a description in a trademark application, and that the items are categorized in either Class A (products) or Class B (services).
- DO consider the USPTO’s requirements for submitting proof of use. The mark owner needs to show the USPTO how others use the certification mark, so it is important that authorized users of the mark display it publicly.
- DO check with local trademark counsel if you’d like to register your certification mark outside the U.S. because the rules for protecting certification marks vary by country.
