Article by Lauren Hughes McClanahan
Rockridge Venture Law® (RVL®) uses several certification marks, including Certified B Corp and 1% for the Planet, to distinguish our firm from others in the marketplace. We also help businesses establish and grow certification mark programs and manage licensee relationships. This article presents a short overview of considerations for an effective certification mark program. We use the term “certification mark” throughout this article, but these types of trademarks are also commonly referred to as trustmarks.
The Five Rules of Certification:
If you want to be the future owner of a certification mark, you will be required to follow certain rules to maintain the validity of your chosen mark. This article will provide a general overview of the best practices that should be implemented into your third-party standards agreements and policing efforts, which will significantly reduce the risk of having your certification mark declared invalid. We’ve also included some helpful examples of qualitative and quantitative marks, which is a distinction you’ll make when creating your mark. RVL® is always here for hiring if you have any questions regarding the practices outlined below.
You cannot produce or sell any product bearing your own certification mark. 15 U.S.C. § 1064(5)(B). This prohibition preserves the objectivity of the standards and criteria embodied in the mark. If you as a certification-mark owner are allowed both to set the standards and to sell goods under the same standards you set, the integrity of those standards would be compromised.
For instance, your certification mark may not be the same as any of your current trademarks. You may continue to sell products under your trademarks, but those products must not bear your certification when you are acting as the seller.
As the owner of a certification mark, you cannot refuse to allow a company to use the mark if that company meets the standards of certification. 15 U.S.C. § 1064(5)(D). This prevents nonobjective or secret criteria in the certification process or the otherwise unfair favoring of certain producers over others.
However, you are the maker of your own standards, and they may be as rigorous and elusive as you please. Your standards will only be judged according to whether they are being applied uniformly. To make such a determination, the Trademark Trial and Appeal Board (TTAB) may review your records of requests for certification.
To ensure that you will receive a favorable judgment of implementing your standards uniformly, you should keep records to establish that no third-party is being treated in a discriminatory manner. These records should contain information on who applies to use the mark, when the application was filed, a checklist of ceriteria met, and the reason(s) for granting or denying the use of the certification mark.
Exclusivity of Use
You must not permit the use of the certification mark for any purpose other than certification. 15 U.S.C. § 1064(5)(C). Allowing the mark to convey any message other than the independent verification of the certifier’s standards would detract from the mark’s significance and indeed may cause the mark to lose all meaning in the minds of consumers.
For example, the certification mark should not be incorporated into other trademarks, owned either by yourself or the user. If this practice is allowed, you run the risk of forcing the user to cease use and registration of its trademark via an infringement action or cancellation action, should that user’s right to use the certification mark ever terminate.
Further, the inclusion of the certification mark in the trademarks of numerous unrelated entities could make it difficult for you as the owner of the certification mark to prove likelihood of confusion should a third-party commence use of a similar mark.
Accordingly, in establishing a certification program, you should avoid any intermingling of the certification mark with users’ specific trademarks. Implementing a dedicated monitoring program to police such use is advisable, which s firm like RVL® can conduct for you.
You should have an agreement in place with each user of the certification mark to allow you to exercise control over its use. 15 U.S.C. § 1064(5)(A). These agreements will allow you to enforce the certification standards, deny licenses to third-parties that fall short of the standards and withdraw licenses from users no longer meeting the standards. Failure to control use of the certification mark would result in undermining the trust consumers would place in the mark, which is particularly important should you choose a certification mark with quantitative elements.
Examples of standards include requiring that:
- The mark must be reproduced according to specified color, size, font and placement guidelines (often including the mandatory use of a downloadable graphics file to reproduce a logo);
- The mark may not be used as a verb (e.g., “I am going to Xerox these papers”);
- The mark may not be used as a noun (e.g., “DECT” is necessary in this configuration);
- The mark may not be altered or combined with other marks;
- The mark may not be used in a demeaning, derogatory or misleading manner;
- The mark may not be registered or used as, or as part of, a trade name, domain name, metatag, or entity name (e.g., Bluetooth Consultants, Bluetooth-users.org);
- The mark may not be used in, or as, a pun; and
- The mark must be accompanied by the ® or TM symbol and acknowledged as the property of the mark owner.
There is no defined level of control required by statute. Given that absolute control over all possible uses of the mark is impossible, TTAB requires only that you take “reasonable steps” to control the mark so that the public is not misled about which products are certified and which are not.
You should actively police your mark, not only to strengthen your rights generally, but also to avoid problems under the statutory “control” requirements. This could mean implementing a worldwide watching service, opposing problem trademark applications, filing letters of protest, monitoring use of the certification mark in the press and on the internet, and taking action for improperly labeled products. To indicate to TTAB that reasonable steps are being taken, all policing efforts should be well-documented.
All mark owners face the possibility of Genericide, which is the loss of registration rights due to the mark becoming part of the everyday language, e.g., Thermos, Escalator, and Aspirin.
You can limit the potential of a Genericide issue if you do not limit your certification registrations to merely word-mark versions of the certification mark. Certification logos featuring distinctive graphical elements are unlikely to be deemed “generic” because the marks must be evaluated as a whole and not merely based on the wording incorporated into the logo. So, while a word-mark registration provides broader rights to the certification mark, if you have a certification mark that embodies word marks that verges on descriptiveness/genericness, you should also develop and register logo forms of the certification mark to avoid the potential disastrous consequences should the certification word mark be held descriptive or generic.
Further, a policing program would provide not only an effective defense to a “failure to control” attack (as discussed above), but also a valuable weapon in combatting a genericness attack by preventing the mark from entering the mainstream without your authority.
Certification marks can sometimes contain certain qualitative or quantitative elements, which helps consumers understand the purpose of the mark. Qualitative marks denote that the mark carries a certain quality, but there is no numerical measure that must be obtained to meet the certification standard. Quantitative marks have certain numerical or percentage points in place that must be met to reach the standard. Below is a list of examples of each.
Summing It Up
As a general recap, if you’re in the process of creating a certification mark, you should include logos and graphical elements as part of your mark, especially if that mark contains potentially descriptive or generic wording. After designing the mark, you should carefully prepare drafted standards and regulations that address all parts of the certification program that would enable others to use your certification mark. Lastly, you would be well advised to implement a policing and monitoring program to control the use of your certification mark. The program should (a) forbid uses of the certification mark as regular trademarks and discourage intermingling of the certification mark with the trademarks of users, (b) include a documentation effort to showcase your control over use of the certification mark, and (c) feature good record-keeping to establish the uniform treatment of third-parties seeking certification.
In following these best practices, you should significantly reduce the risk of having your certification mark declared invalid.
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About Lauren Hughes McClanahan
Lauren Hughes McClanahan is the privacy and branding lead at Rockridge Venture Law®. Equally adept at creative campaigns as well as technology transactions, Lauren leads clients through copyright, privacy, regulatory, and trademark considerations in optimizing successful e-commerce portfolios. She is a leading voice among women practicing in technology and tech law. Her primary practice areas include copyright and trademark law, data privacy, sports and entertainment law, and technology transactions. Lauren also leads the Knoxville Technology Council’s Women in Tech Committee, and is a Director of the Tennessee Women’s Theater Project. Read more about Lauren, connect with her, and Calendly her.
RVL® recommended reading by Lauren:
Rockridge Venture Law®, or RVL®, was launched in 2017 to become the preeminent intellectual property and technology firm across the Appalachian Innovation Corridor. We now have offices in Chattanooga, Durham, and Nashville, and represent clients and interests globally. Our services include all aspects of intellectual property, litigation, M&A, privacy, technology transactions, and ventures.
In 2018 and 2019, we were recognized as B Corp Best for the World for our commitment to triple bottom line business practices. RVL® is also certified by 1% for the Planet for its nonprofit partnerships advancing stewardship and sustainability. RVL’s nonprofit partners in 2020 include Green|Spaces, Living Lands and Waters, Mustard Seed Ranch, and the NC State Lulu Games Social and Environmental Impact Competition.
Our pioneering environmental and social impact programs attract top-notch legal talent and assure our clients of missional Rockridge Venture Law alignment with their corporate values. Rockridge uniquely addresses two modern profit drivers: innovation (uptake and development), and corporate social responsibility. We’re Building Today’s Company for Tomorrow’s Economy® by leading clients through the dizzying array of information controls, by helping them to develop and monetize proprietary assets, and by enabling their impactful products, programs, and principles.
Trustmarks: Strategies for Exploiting their Full Potential in E-Commerce (Harvard Business Review)