This article is for informational purposes only. It should not be construed as legal advice for any individual matter, nor does it create an attorney-client relationship between you and the author or the publisher. Guidelines pertain to U.S. law only.
- Come into effect when one entity uses a mark on an item
- Tell the public who is responsible for items bearing the mark
- Symbolize goodwill that the mark’s owner builds within the community that enjoys products and services bearing the mark
- Distinguish the items bearing them from other similar items on the market
Some trademarks, however, brush off these principles. Welcome to the wacky world of collective and certification marks.
Collective and certification marks hammer home the core tenet of trademark law: trademarks exist to protect consumers, not to privilege registrants. (I promise, this one’s always true.) Beyond that fundamental principle, however, these oddball marks behave differently from the rest of the trademark family.
Collective trademarks are marks owned by groups but not used by them. Instead, they’re used by the group’s members to distinguish themselves from nonmembers. The groups also control the collective marks’ use; the group doesn’t sell goods or perform services under a collective mark, but it may advertise or promote the goods or services sold by its members under the mark. For example, the National Association of Realtors owns various “Realtor” marks, permitting qualified REALTORSi to use the title. (That’s right: only real estate agents who are NAR members can call themselves REALTORS.) NAR promotes Realtors’ services vis-a-vis other real estate professionals. Consumers conduct business knowing each Realtor is vetted—whether or not they know about the NAR! With collective marks, everyone wins: members earn marketplace credibility, collectives assert authority within their industries, and the public gains trustworthy touchstones.
A cousin of the collective trademark, a collective membership mark solely indicates inclusion in a collective. The group does not advertise or promote its members’ services through these marks. For example, individual Teamstersii proclaim their affiliations via this emblem, but they don’t conduct business on behalf of the labor union that actually owns and circulates permission to use the mark.
Collective marks depart from other trademarks: groups own them; owners don’t use them to sell anything; and they don’t identify sources of goods. But collective marks build goodwill between consumers and unfamiliar individuals and prevent nonmembers from creating false associations with the collective. Accordingly, consider launching a collective mark or joining a collective when you want to pool resources or emphasize qualifications.
Certification marks take another step: they verify a characteristic of items bearing the mark. Three standards exist:
- Geographic origin (VIDALIAiii; GROWN IN IDAHOiv; GRAPES FROM CALIFORNIAv)
- Quality, materials, or manufacture (ENERGY STARvi; ULvii)
- Work or labor (CFPviii; FARMWORKERS AFL-CIOix)
As with collectives, certifiers authorize others to use their marks when products meet their standards. Consumers can deduce that items bearing certification marks possess desirable attributes, no matter who sells them. Accordingly, certification marks fail the distinctiveness test; most trademarks disassociate items, but certification marks align them, often by describing one aspect of the product. Yet certification marks protect consumers precisely because they denote a key feature of items bearing them.
Put another way, certification marks don’t identify source. VIDALIA is not an onion producer; it’s a Georgia town where super-sweet onions grow in soil with miniscule sulfur levels. Georgia’s VIDALIA certification communicates that marketable sweetness to consumers while reserving its marketing for farmers whose land produces it. But VIDALIA doesn’t identify any single onion farm.
WHAT IT MEANS FOR YOU
Consumers recognize that anything bearing collective and certification marks satisfies criteria defined by the marks’ owners. This provides the owners a useful tool to call attention to a group that provides a product or service, or to a level of certification for a marketable quality. To use them well and prevent any trouble, avoid displaying insignias of groups to which you don’t belong or tout features your products don’t have. This could constitute false advertising or generate trademark infringement liability. Perhaps most importantly, it corrodes trust among your consumers, harming your reputation where you strive to build it. Conversely, if your product does qualify, sanctioned use of certification marks can engender consumer confidence and boost sales—especially for purpose-based initiatives like nonprofits, special interest groups that promote products and services with certain qualities, lobbying organizations, and professional certifications or academic licensing boards.
All trademarks say something about the items displaying them. But collective and certification marks stand alone because their owners don’t use them to indicate the source of distinct products. Instead, they herald the virtues of the goods and services bearing them—where they come from, to whom they belong, or what they say about the organization that created them.
Perry Gattegno leads the Trademarks and Branding practice at Litwin Law in Chicago and is the co-founder of Derby Fantasy Wins League. He focuses on clearance of trademarks for branding and naming agencies, trademark prosecution for entrepreneurs and businesses, and intellectual property strategy and counseling for all. A recovering journalist, he retains a soft spot for a good story. He likes short sentences and hates legalese.
- i REALTORS: U.S. Reg. No. 0515200, for “brokerage of real estate,” etc. Owned by the National Association of Realtors as designated as a “collective service mark”. Compare U.S. Reg. No. 1009745, R + design (shown below), for “indicating membership in applicant.” Also owned by the National Association of Realtors, this logo merely indicates that its bearer is an NAR member – a Realtor may wear it as a pin while showing homes, or display it on her individual business card that she hands out to prospective clients. On the other hand, the NAR can use the REALTORS name to promote the services of individuals who are members of the organization.
- ii INTERNATIONAL BROTHERHOOD OF TEAMSTERS + design: U.S. Reg. No. 1994996, for a “transportation, maintenance and handling labor union.” Owned by International Brotherhood of Teamsters.
- iii VIDALIA: U.S. Reg. No. 1709019, for “onions.” Owned by the Georgia Department of Agriculture, “intended to be used by persons authorized by certifier, and will certify that the goods in connection with which it is used are yellow Granex type onions and are grown by authorized growers within the Vidalia onion production area in Georgia as defined in the Georgia Vidalia onion act of 1986.”
- iv GROWN IN IDAHO + design: U.S. Reg. No. 4221403, for “potatoes and potato products,” etc. Owned by the Idaho Potato Commission, “as used by authorized persons, certifies the regional origin of potatoes grown in the State of Idaho and certifies that those potatoes conform to grade, size, weight, color, shape, cleanliness, variety, internal defect, external defect, maturity and residue level standards promulgated by the certifier.
- v GRAPES FROM CALIFORNIA + design: U.S. Reg. No. 3442615, for “grapes.” Owned by the California Table Grape Commission, “as used by persons authorized by the certifier, certifies that the grapes have been grown in the State of California for the fresh market.”
- vi ENERGY STAR + design, U.S. Reg. No. 3569551, for “Consumer electronics, kitchen and household appliances,” etc. Owned by the Environmental Protection Agency, “as used by authorized persons, certifies that the items are more energy efficient than most items sold in the same category.
- vii UL + design: U.S. Reg. No. 0782589, for “electrical equipment, usually not of a voltage exceeding 600 volts; building materials and equipment,” etc. Owned by UL, LLC, intended to be “used by persons authorized by applicant to indicate that representative samplings of the products conform to the safety requirements used by the applicant.”
- viii CFP: U.S. Reg. No 2359790, for “financial planning services.” Owned by Certified Financial Planner Board of Standards, Inc., “to be used by authorized persons, certifies that the person displaying the mark has completed education course work requirements and work experience requirements of the certifier, has completed examinations administered by the certifier in satisfactory manner, has agreed to adhere to the certifier’s standards for professional responsibility, continuing education and other post-certification requirements.”
- ix FARMWORKERS AFL-CIO UNION LABEL + design: U.S. Reg. No. 0909835, for “fresh agricultural produce.” Owned by United Farm Workers Organizing Committee, “certifies that the labor involved in producing and harvesting the goods was performed by members of applicant.”