(UN)COMMON LAW PROTECTION OF CERTIFICATION MARKS.

• Author: Smit, Michelle B.

INTRODUCTION

A quick Google search of "trademark" and "common law" yields a handy booklet published by the United States Patent and Trademark Office (USPTO) regarding everything one needs to know when considering the ideal protection for their trademark. (1) One of the sections in the booklet addresses the question, "Is federal registration of my mark required?" (2) The answer? No. (3) It is well-established that trademarks also exist at common law. However, no such handy booklet exists for certification marks. Although both certification marks and trademarks are protected under the United States Trademark Act ("Lanham Act"), certification marks are fundamentally different. Certification marks indicate collective origin, rather than unique commercial origin, and have specific registration requirements that are inapplicable to trademarks. (4)

So far, there has been no sufficient "yes" or "no" answer to the question of whether certification marks, like trademarks, exist at common law. What little scholarship there is on the matter posits that certification marks can develop under common law, but this view is based entirely on a single federal district court opinion and a single Trademark Trial and Appeal Board (TTAB) decision. (5) However, this overgeneralizes the caselaw because, of the three types of certification marks, those cases only refer to one specific type. (6) The utility of certification marks would be compromised under a common-law regime, because it would create opportunity for anticompetitive abuses that only a registration-based system could adequately address. While the current federal registration system for certification marks has its own flaws, it can be revised in order to address the specific needs of certification mark enforcement.

Part I of this Note defines and examines the general principles of certification marks. From that foundation, Part II provides an overview of the case law on unregistered common law certification marks. Part III analyzes the reasons why abuses of certification marks would increase under a common-law regime and posits that certification marks, therefore, should only exist under federal law. Finally, Part IV proposes several adjustments that should be made to the current certification mark registration system in order to address existing shortcomings that affect both consumers and third-party businesses.

1. BACKGROUND OF CERTIFICATION MARKS

   1. Certification Marks

      Most consumers are familiar with trademarks and can easily rattle off examples without much thought--NIKE for sports equipment, APPLE for computer products, and LEVI'S for jeans. However, consumers would likely be hard-pressed to conjure an example of a certification mark, let alone to describe the purpose of one. (7) "A certification mark is a special creature created for a purpose uniquely different from that of an ordinary service mark or trademark ...." (8) Rather than indicating a unique commercial source, like trademarks, certification marks inform consumers that the goods or services they are purchasing "possess certain characteristics or meet certain qualifications or standards." (9) The utility of certification marks is not only to prevent public confusion like trademarks, but also to promote healthy competition within the marketplace of a certified product. (10) Some examples of certification marks include Underwriters Laboratories Inc.'s "UL" symbol, used for electrical equipment that meets its safety standards, the Florida Department of Citrus's "Fresh From Florida" seal, (11) which is used for citrus products grown in Florida that meet certain quality standards, and the "Woolmark" logo on certain knit goods meeting specified percentages of new wool. (12)

      Although certification marks may go unnoticed by many consumers, for some consumers of certain products, the presence or absence of a certification mark could determine whether they purchase the product at all. (13)

      A certification mark is defined as:

      [A]ny word, name, symbol, or device, or any combination thereof--(1) used by a person other than its owner, or (2) which its owner has a bona fide intention to permit a person other than the owner to use in commerce and files an application to register on the principal register established by this chapter, to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person's goods or services or that the work or labor on the goods or services was performed by members of a union or other organization. (14) Three different kinds of certification marks exist and are distinguished by what they indicate. (15) A certification mark may indicate the following: "1) regional or other origin; 2) material, mode of manufacture, quality, accuracy or other characteristics of the goods/services; or 3) that the work or labor on the goods/services was performed by a member of a union or other organization." (16)

      1. Registration of Certification Marks

         Like trademarks, all three types of certification marks may be registered under the Lanham Act. (17) An application to register a certification mark must include " [a] statement specifying what the applicant is certifying about the goods or services in the application," (18) and "[a] copy of the certification standards governing use of the certification mark on or in connection with the goods or services specified in the application." (19) A mark owner must license all who meet those standards to use the certification mark in connection with their goods or services, thus "mak[ing] certification 'a form of limited compulsory licensing.'" (20)

         Several additional statutory standards are unique to certification marks. First, unlike a trademark which is used to indicate the source of the mark owner's product, the registrant of a certification mark may not produce the goods or provide the services that the certification mark certifies--the mark owner can never place the certification mark on any of its own goods or services. (21) However, the owner of a certification mark is permitted to use its mark in "advertising or promoting recognition of the certification program or of the goods or services meeting the certification standards of the registrant" as long as the "registrant does not itself produce, manufacture, or sell any of the certified goods or services to which its identical certification mark is applied." (22) The reason for this requirement is "because of the fear that a certifier competing in the marketplace with the goods or services it is certifying would no longer be able to certify objectively based on the certification standard." (23) This type of abusive certification mark behavior would have anticompetitive effects in the marketplace and usurp the main objective of certification marks. (24)

      2. Control of Certification Marks

         The owner of a certification mark must also control the use of its mark. (25) The statute implicitly recognizes two ways lack of control could result in cancellation of the certification mark registration. (26) The first is a mark owner's failure to control the use of the mark. (27) Specifically, if a mark owner fails to verify that products or services meet the certification mark standards before granting permission to use the certification mark, it may result in a court finding that the mark owner had a lack of control. (28) For example, in Midwest Plastic Fabricators, Inc. v. Underwriters Laboratories Inc., (29) control was especially important because of the increased risk that consumers would be misled by a certification mark representing specific qualities of the goods that bear the mark. (30) Complete control is not required--the mark owner must only demonstrate "considerable diligence in controlling the use of its marks." (31) The relevant question is whether control is in fact maintained--not whether the mark owner had a formal quality control system. (32) Additionally, the Federal Circuit held that the registrant is not required to personally test products and services to "declare to the public that items carrying the mark meet the standards." (33)

         The second way a court may find a lack of control is if the certification mark becomes generic. (34) Section 1064(5) (A) implicitly contemplates that if the mark owner "fail[s] to control use of the mark by those other than licensed users," the mark may no longer certify those goods or services. (35) That result has been likened to the mark becoming generic. (36) Traditional genericide--where the registered certification mark becomes the generic name for the goods or services it certifies--is also grounds for the registration to be cancelled. (37)

         The registrant's use of the mark is strictly limited for purposes to certify. (38) Additionally, a registrant may not "discriminately refuse [ ] to certify or to continue to certify the goods or services of any person who maintains the standards or conditions which such mark certifies." (39) Failure to adhere to these standards will render the certification mark subject to cancellation. (40) The requirement to license all conforming goods or services coupled with the prohibition of placing the certification mark on the registrant's own goods "removes incentives for mark holders to engage in anti-competitive conduct" and appears to be "designed to promote free competition in the market for certified products." (41)

         Although consumer trust is one of the driving factors behind control of certification marks, (42) the reliability of the certification mark is largely left up to the mark owner. The mark owner creates the standards, the mark owner decides what products will bear the mark, and the mark owner convinces consumers that the certification mark reliably ensures the quality standards it represents. (43) Unless the mark owner independently decides to publish information regarding its efforts in preventing unauthorized use of the certification mark, the consumer would...