Vondran Legal® - Trademark College®: Overview of Collective Trademarks. Call us at (877) 276-5084 for representation on trademark legal issues, including arbitration, mediation and litigation.
Introduction
Collective marks are a different type of trademark from those of goods (trademark) or services (service mark). Like trademarks and service marks (each is an enforceable trademark), COLLECTIVE MARKS can be made up of characteristics such as any word, phrase, symbol, design, or a combination of these things, and similar identifying characteristics. There are two types of collective marks, ONE where the members can use the mark in advertising their own services (ex. Realtors), this is known as a "Collective Mark" and TWO is a "Collective Membership Mark" where the members do not advertise their services using the mark, they only use the mark to show membership in something (ex, AAA car association).
This blog will discuss this unique form of federally registered trademark.
NOTE: This is different from a "certification" mark, a fourth type of trademark.
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A brief history of the collective mark from the USPTO
Inside the USPTO Trademark Examination Guide:
"Under the Trademark Act of 1905, registration could be based only on a person's own use of a mark. The Act did not permit for registration of collective and certification marks because such marks are generally used by a member of a collective organization or an authorized user, while the owner of the mark exercises legitimate control over this use by others. However, the June 10, 1938 amendment to the Act of 1905, out of which §4 and the accompanying definitions in §45 grew, changed this limitation on use and provided for registration of a mark by an owner who "exercises legitimate control over the use of a collective mark." "Collective marks," however, were not defined in the federal statute until implementation of Section 45 of the Act of 1946."
There are two types of collective marks recognized by the USPTO:
There are two types of collective marks:
(1) COLLECTIVE MARK: A collective trademark or collective service mark is used by the members of a collective organization to identify its goods and services and to distinguish them from those of non-members.
EXAMPLE: The National Association of Realtors ("NAR")
A collective mark is used by all members of the collective group; therefore, no one member can own the mark, and the collective organization holds the title to the collectively used mark for the benefit of all members of the group. In comparison, a trademark or service mark is used by the owner of the mark to indicate the commercial source or origin of the goods/services in the owner.
The collective organization itself neither sells the goods nor renders the services provided under the mark, but may advertise so as to publicize the mark and promote the goods or services sold by its members under the mark. For example, a collective organization of real-estate professionals does not render real-estate services, but rather promotes the real-estate services offered by its members. See Zimmerman v. Nat’l Assoc. of Realtors, 70 USPQ2d 1425, 1428 (TTAB 2004).
For example, the NAR holds title to the mark that is used by all Realtors. NAR itself does not sell real estate (a service), but as the title owner of the trademark, they can use the NAR mark to advertise for the benefit of its member realtors. Here, the Realtor members WILL use the mark to advertise their own services, because it is seen as a "cut above" your regular real estate agent since they require additional training and provide certification possibilities. You will see realtors use the mark on their broker websites.
(2) COLLECTIVE MEMBERSHIP MARK: A collective membership mark is a mark adopted to indicate membership in a collective group. It is not used to identify and distinguish the source or origin of goods or services; its sole function is to indicate that the person displaying the mark is a member of an organized collective group.
EXAMPLE: A collective membership mark is owned by the organization (trade union, fraternal organization, cooperative, or collective) and the individual members of the organization may not use the collective membership mark to advertise and sell any products/services whatsoever. For example, members of a fraternity can permissibly wear clothing displaying the fraternity's Greek letters to indicate that they are members of the fraternity. But, they are not allowed to sell clothing, or other items (cups, shirts, posters) bearing the Greek letters.
NOTE: Membership marks may include the term “member,” but this is not a legal requirement.
These include marks that indicate membership in a union, association, or other organization.
15 U.S.C. § 1127
15 U.S.C. section 1127 defines a collective mark.
The term “collective mark” means a trademark or service mark—
(1) used by the members of a cooperative, an association, or other collective group or organization,
or
(2) which such cooperative, association, or other collective group or organization has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter, and includes marks indicating membership in a union, an association, or other organization.
The term “mark” includes any trademark, service mark, collective mark, or certification mark.
Statement of Control (applies to both types of Collective Marks)
All collective marks require a statement of control be made in the trademark application.
1304.02(a)(i)(A) Manner/Method of Control
An applicant must specify the class of persons entitled to use the mark (i.e., the applicant's members), indicating their relationship to the applicant, and the nature of the applicant's control over the use of the mark. 37 C.F.R. §2.44(a)(4)(i)(A). A statement that the applicant's bylaws or other written provisions specify the manner of control is sufficient to satisfy this requirement. This statement does not have to be verified and, therefore, may be entered by examiner's amendment.
The following language may be used for the above purpose:
Applicant controls the members' use of the mark in the following manner: [specify, e.g., the applicant's bylaws specify the manner of control].
Contact a Federal Trademark Law Firm
Vondran Legal® handles trademark registration, arbitration, mediation and litigation. Contact us at (877) 276-5084 for more information or fill out our contact form and we will reach out to you.
