Academic journal article Notre Dame Law Review

(Un)common Law Protection of Certification Marks

Academic journal article Notre Dame Law Review

(Un)common Law Protection of Certification Marks

Article excerpt


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.


A. 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. …

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