Protecting Certification Marks With Federal Registration

Certification marks can make or break certain products. Many consumers rely on these marks, which function like a guarantee that the products on which they appear meet the standards set by the certifying agency. Without such a mark, the consumer will take a pass. Consumers of organic food, for example, typically look for what they believe to be a reliable certification mark, like the Quality Assurance International (QAI) seal, to assure that the product is in fact organic. And Kosher consumers tend to be very strict about not buying products unless they bear a reliable Kosher certification mark. For them, the certification mark is not a matter of convenience, it’s a theological necessity. And this is no small market. According to the OU, the Kosher market consists of more than 10 million consumers, including not only Jews but also many Muslims, Seventh Day Adventists, vegetarians and other religiously observant and health-conscious consumers.   
           
With this much money on the line, it’s no surprise that certifiers such as Underwriters Laboratories and the Florida Citrus Commission take their certifications seriously. But how do consumers know whether the certification marks on which they rely are in fact reliable? And how do certifiers communicate this reliability to consumers?

One of the biggest misconceptions about certification marks is that there are government controls over the standards set by the certifier. In reality, it’s up to the certifier to set its own standards and then convince buyers that the certification symbol actually provides reliable and useful information.
One measure of reliability is how vigilant the certifier is in preventing the unauthorized use of its certification mark by third parties. This is not easy information for a consumer to obtain unless the certifier makes its efforts known.

For example, the OU publishes the fact that it investigates more than 500 cases of questionable use of its certification mark each year, and when necessary, doesn’t hesitate to file actions for infringement to protect the integrity of the brand. Moreover, the OU has a hotline for consumers to call if they spot a suspicious-looking product bearing the OU symbol. With these types of efforts, certifiers can instill more confidence in consumers that their certification marks can be relied on.

While there may be common law protection available for unregistered certification marks, registration of the mark will dramatically enhance the owner’s ability to protect the mark. And registration will instill confidence in manufacturers and consumers that the certification mark has value. Registration of a certification mark with the U.S. Patent and Trademark Office is made in the same manner as registration of a trademark. Although the International Trademark Association’s Model State Trademark Bill, adopted in most states, does not provide protection for certification marks, Florida is one state that affords such protection. And a Florida registration can be obtained much more quickly and less expensively than a federal registration.

Caution: Certifiers should be cautioned that they cannot use their certification mark as a trademark to sell the kinds of goods they certify. Indeed, certifiers are prohibited from selling the goods they certify, and trademarks and certification marks are mutually exclusive. As J. Thomas McCarthy, the nation’s leading trademark commentator, explains, “The primary reason for this rule is that dual usage of the mark would improperly compromise the objectivity of the certifier if it were competing in the market that it certifies.”

Last year, the 9th U.S. Circuit Court of Appeals, in State of Idaho Potato Commission v. G&T Terminal Packaging Inc., gave probably the best reason to seek federal registration for a certification mark — statutory damages. In that case, the Idaho Potato Commission sued G&T, a wholesale distributor of potatoes, for certification mark infringement when G&T continued to use the IPC certification mark even after its right to do so was terminated.

Significantly, the trial court awarded IPC $100,000 in statutory damages under the Federal Trademark Act’s counterfeiting provisions. In affirming this award, the 9th Circuit explained that “if parties use IPC’s mark without abiding by IPC’s quality control provisions ... the certification mark may lose its value because goods bearing the mark do not consistently meet the standards the mark signifies.” The 9th Circuit concluded, “the qualities that distinguish a certification mark from a trademark weigh in favor of making ... statutory penalties available in cases like this one, where an ex-licensee intentionally makes unauthorized use of a certification mark.”

The lesson to be learned is that without a federal registration, a certifier, like the Idaho Potato Commission, does not have the ability to rely on the Trademark Act’s counterfeiting “hammer” to effectively punish third parties for the unauthorized use of a certification mark. Having that ability in a certification mark owner’s arsenal will greatly enhance the value of the mark. Certification mark owners would thus be wise to take advantage of this powerful tool as well as devoting resources to educating the public about what their certification marks actually mean.