Trademark/Service Mark Definitions

trademark

A trademark includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name.

service mark

A service mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce, to identify and distinguish the services of one provider from services provided by others, and to indicate the source of the services.

certification mark

A certification mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce with the owner’s permission by someone other than its owner, to certify regional or other geographic origin, material, mode of manufacture, quality, accuracy, or other characteristics of someone'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.

collective mark

A collective mark is a trademark or service mark used, or intended to be used, in commerce, by the members of a cooperative, an association, or other collective group or organization, including a mark which indicates membership in a union, an association, or other organization.

The Section Below is an Excerpt from the United States Trademark Office:
Trademark Manual of Examining Procedure (TMEP)
Second Edition, Revision 1.1

Trademarks are used to identify goods, that is, physical commodities, which may be natural or manufactured or produced, and which are sold or otherwise transported or distributed.

The Trademark Act defines "trademark" as follows:

The term "trademark" includes any word, name, symbol, or device, or any combination thereof--

1. used by a person, or

2. which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this Act, to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.

15 U.S.C. §1127.

Service marks are used to identify services, that is, intangible activities, which are performed by one person for the benefit of a person or persons other than himself, either for pay or otherwise.

Provision for registration of service marks is made in §3 of the Trademark Act of 1946. 15 U.S.C. §1053.

The Trademark Act defines "service mark" as follows:

1. used by a person, or

2. which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this Act, to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown. Titles, character names, and other distinctive features of radio or television programs may be registered as service marks notwithstanding that they, or the programs, may advertise the goods of the sponsor.

15 U.S.C. §1127.

For examination of service marks, see TMEP §1301.

Collective trademarks and collective service marks may be registered under the Trademark Act. These are trademarks or service marks which are used by members of a group or collective, with each member applying the mark to the member's own goods or using it in connection with the member's own services. Application for registration on the Principal Register may also be made by a group or collective based on its bona fide intention to use the mark in commerce through its members. Ownership of collective trademarks and collective service marks properly lies in the parent body or other organization because of its exercise of legitimate control over use of the mark by the members of the group.

Provision for registration of collective marks is made in §4 of the Trademark Act of 1946. 15 U.S.C. §1054.

The Trademark Act defines "collective mark" as follows:

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 Act, and includes marks indicating membership in a union, an association, or other organization.

15 U.S.C. §1127.

For examination of collective marks, see TMEP §§1302 through 1304.

A collective organization can use a mark, as distinguished from use of the mark by members of such organization. If the collective organization produces and distributes goods, or performs services for others, and uses a mark to distinguish such goods or services, the organization stands in the same position as an individual, partnership or corporation doing the same thing, and the mark is properly referred to merely as a trademark or service mark, not as a collective trademark or collective service mark. See TMEP §1305.

Collective membership marks are registrable under the Trademark Act. These are collective marks of a special type. They are marks which are used by members of a group for the purpose of indicating their membership in the group or collective. Application for registration may also be made by the group or collective based on its bona fide intention to use the mark in commerce through the group's members. Ownership of such marks properly lies in the parent body, group or collective organization because of its exercise of legitimate control over use of the mark by the members of the group.

Provision for registration of collective marks is made in §4 of the Trademark Act of 1946. 15 U.S.C. §1054.

The definition of a collective membership mark is included in the definition of collective marks in §45 of the statute. 15 U.S.C. §1127. The concept of collective membership marks is discussed in Ex parte Supreme Shrine of the Order of the White Shrine of Jerusalem, 109 USPQ 248 (Comm'r Pats. 1956).

For examination of collective membership marks, see TMEP §1304.

Provision for registration of certification marks is made in §4 of the Trademark Act of 1946. 15 U.S.C. §1054.

The Trademark Act defines "certification mark" as follows:

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 Act, 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.

15 U.S.C. §1127.

Certification marks are, by their basic nature, unlike any other types of marks. Although certification marks are used or intended to be used in connection with goods or services and might therefore seem to be like trademarks and service marks, they differ from trademarks and service marks because they do not indicate origin of the goods or services. Moreover, they are neither used by the owner of the mark nor used on the owner's goods or with the owner's services. Although certification marks are used or intended to be used by more than one person and might therefore seem to be like collective marks, they are very different from collective marks in nature. Because of the superficial similarities, care must be exercised in examination to identify certification mark situations even where the mark is not identified as a certification mark in the application.

For examination of certification marks, see TMEP §1306.

A mark used by related companies is not a separate type of mark and therefore it is not defined as a mark in the Trademark Act.

The Trademark Act defines "related company" as follows:

15 U.S.C. §1127.

The concept of related company use is set forth in §5 of the Act, which provides:

15 U.S.C. §1055.

For examination in connection with related company situations, see TMEP §1201 et seq.

It is important that a mark be registered according to its correct type for, if it is not, the registration may be subject to cancellation. See National Trailways Bus System v. Trailway Van Lines, Inc., 222 F. Supp 143, 139 USPQ 54 (E.D.N.Y. 1963), and 269 F. Supp. 352, 155 USPQ 507 (E.D.N.Y. 1965).

Care should be taken by the examining attorney during examination to ascertain the correct type of mark and, if appropriate, to have the application amended to reflect the actual situation.

See Hi-Shear Corp. v. National Automotive Parts Association, 152 USPQ 341, 344 n.3 (TTAB 1966); B.F. Goodrich Company v. National Cooperatives, Inc., 114 USPQ 406 (Comm'r Pats. 1957).

The name of a business or company is a trade name. The Trademark Act defines "trade name" and "commercial name" as follows:

15 U.S.C. §1127.

Trade names must be distinguished from trademarks and service marks because there is no provision in the Trademark Act for the registration of a trade name which is used solely as a trade name. However, wording which constitutes a trade name may be used in such a manner that it also functions as a trademark or service mark. For this reason it is necessary to exercise care in examination in order to determine registrability of matter which serves the dual function of being a trade name as well as being a trademark or service mark.