Collective Marks Under the Law
Like trademarks and service marks, collective marks are made up of letters, words, designs, names, or anything else. There are two types of collective marks: those used by members of a collective (collective membership mark) or those registered by a cooperative, association, or collective with a bona fide intent to use the mark in commerce. This includes marks that indicate membership in a union, association, or other organization.
Examples of collective membership marks are the mark Reorganized Church of Jesus Christ of Latter Day Saints and the letters AAA® inside an oval to indicate membership in the American Automobile Association. This mark only serves to show membership in a collective group. The collective itself does not use the mark to identify its products or services. The Trademark Act requires that a collective own the collective mark, although members of a collective use the mark to indicate their affiliation with the collective. Membership marks may include the term “member,” but this inclusion is not required.
An example of the collective mark used for commerce is FTD®, which is used by florists that are members of the Florists’ Transworld Delivery Association. The United States Patent and Trademark Office (USPTO) and courts consider a collective mark to be used in commerce when it is placed on products that are sold or transported in commerce or in advertisements for services, and the services are rendered in more than one state or in the United States in addition to a foreign country.
Many different organizational forms of a collective can register a collective mark. However, the organization must be considered a party that is capable of suing and being sued in a court of law. The most common form of a collective mark is in print, but a membership mark can include an object such as a flag or ring.
Registering a Collective Membership Mark
Collective marks function similarly to trademarks or service marks. The collective can register the collective mark with the USPTO. The examiner will use the same standards that he or she uses on other types of marks when considering issues such as disclaimers and descriptiveness. However, the applications for registration are different from applications for registration of other trademarks and service marks, since the ownership and use of collective marks differ from the ownership and use of trademarks and service marks.
When applying for a collective mark based on the use of commerce, an applicant needs to assert that it is exercising control over the use of the mark in commerce or that the applicant intends to exercise control over the use of the mark. In contrast to the requirements for certification marks, a collective may use the same mark as a collective mark as a trademark for its own goods and services. However, the same mark cannot be used as both a collective mark and a certification mark.
The application to register a collective mark will need to specify the class of people who are allowed to use the mark, describe their relationship to the applicant, and state the nature of the applicant’s control or intended control over the use of the mark. Unlike trademarks or service marks, a collective membership mark is not used in business or trade. Instead, the owner of the mark wants to prevent the use of the mark by others. The sole purpose of its use is indicating membership.
The examiner of an application for a collective mark will look at the specimen submitted and the evidence of record. The specimen submitted needs to show use of the mark by a member on products or in the sale of a member’s services.
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