Certification Mark: History and Legalities

While the legal perception of traditional or ‘ordinary’ trademarks is primarily one of individual source designation, certification marks differ as they are upheld as designations of conformity of goods or services to particular standards that have been universally stipulated by its proprietor. A certification mark is highly regarded as a guarantee that products, goods, or services in connection with the mark, conform to a specific set of standards. One well-known example being the USDA Organic certification mark.   Certification marks have been registrable for more than 100 years. Nevertheless, there are relatively few certification marks added to the USPTO register each year.

Certification marks are treated legally as a unique form of trademark. The processes of examination, registration, and provisions for redress when a certification mark is infringed, are all integrated into the trademark statues of the world. However, unlike typical or ‘individual’ trademarks, in virtually all jurisdictions, certification marks only have commercial meaning when they are used by multiple sources, subject to the proprietor’s authorization. Conversely, the proprietor of an ordinary trademark is typically free to decide whether to license his mark to other businesses or reserve it for his own use, but the owner of a certification mark does not and must not use the mark. Otherwise, the certification mark is subject to cancellation. The mark ab initio is for the use of other, multiple sources subject to the proprietor’s authorization. Also unlike “typical” trademarks, the proprietor of the certification mark is obligated not to deny approval for products goods or services that meet stipulated standards. 

What is Certification?

In effect, a certification is an act of vouching for the truth of certain information. To certify is to authenticate or verify in writing, or to attest as being true, or meeting specific criteria. It is statutorily defined as an indication that goods or services which bear the mark have been certified by the mark’s proprietor, meeting standards for quality, accuracy, or other characteristics. 

The history of certification is founded on the concept of regulation and enforced by regulatory institutions. ‘Regulation’ means the process by which governing bodies improve requirements on services, products, and goods. The purpose of such regulation is typically to protect a certain set of values. These values can include the quality of goods, as well as public health or safety. Throughout history, requirements for protecting these values have been issued by a range of governmental levels and organizational bodies that have regulatory powers. Thus, certification marks on products were a functional interplay of regulation and a way to signify meeting certification requirements.  

History of Trademarks 

The first Federal Trademark Act was enacted in 1870 at a time of recovery and rapid economic growth following the Civil War. The Federal Trademark Act and the Act of 1876 was designed to punish counterfeiting of trademarked goods, as well as the sale of counterfeit goods. However, in 1879, the Federal Trademark Act and the Act of 1876 were declared unconstitutional by the U.S. Supreme Court. A comprehensive now trademark law was enacted in 1905, but unlike the original 1870 Act, it did not provide for applications to register based on the proposed use. In fact, intent-to-use applications were only re-introduced into the United States statute in 1989 as a result of an amendment to the Trademarks Act of 1946 (The Lanham Act).

The Lanham Act

The Lanham Act defines a 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 chapter.

The Lanham Act also defines a service mark in a similar manner.  In dealing with trademark licensing, the Lanham Act adopted the concept of a ‘related company’, which is a crucial feature of certification marks. A related company is any person whose use of a mark is controlled by the proprietor of the mark. Unlike a typical trademark, the use of a registered certification mark by a ‘related company’ (or one in the registration process) inures to the benefit of the registrant or applicant, and does not impair the legal validity of the mark or its registration so long as the mark is not used deceptively. 

History of Certification Marks 

Due to the dramatic growth in industrialization, certification marks became a more prominent type of trademark during the early parts of the 20th century. With many having their roots in the guild system, many certification marks emerged as an effective means of controlling and improving industry standards and maintaining the quality or other attributes of goods or services.   However, to discuss all of the industrial, social, and legal factors that influenced the rise of the certification mark in detail are beyond the purview of this article. Nevertheless, it is noteworthy that this period was marked by a significant rise in domestic and international trade and competition. 

The legality of Certification Marks

A certification mark differs from other trademarks as it is used in commerce by a person other than its owner for the purposes of identifying goods or services as being of a particular type. A certification mark is “any word [or] name … used by a person other than its owner … to certify … origin … quality … or other characteristics of such person’s goods or services.” 15 U.S.C. § 1127. “A certification mark is a special creature created for a purpose uniquely different from that of an ordinary trademark or service mark.” 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 19:91 (4th ed.2006).

Certification marks are protected and regulated as a type of trademark under the Lanham Act, but serve a distinctly different function in the marketplace. By definition, a certification mark is a mark used in commerce by a person other than its owner. They are generally owned by trade associations, organizations, or other centralized commercial groups. The owner of the mark establishes standards for certification to identify that goods or products bearing the mark are of a particular type. However, the owner of the certification mark is not permitted to use the mark, and may be canceled if the owner markets services to which the mark attaches or permits use of the mark for purposes other than to certify. See 15 U.S.C. § 1064(5)(B) & (C). The certification mark is only used by third parties to indicate that specific goods or services offered conform to the standards established by the mark’s owner. Further, the owner of must also license use of the mark to anyone whose goods or services have met the standards established for certification. See 15 U.S.C. § 1064.

The owner of a certification mark is also required to monitor and control use of the mark by others strictly. Certification guarantees that goods or services bearing the mark possess specific characteristics, and if the owner fails to enforce the standards set for certification, the mark may be cancelled. See 15 U.S.C. § 1064.

There are three basic categories of certification. The mark may be used to certify: regional or other origin; material, mode of manufacture, quality, accuracy, or other characteristics of the goods or services; or that the work or labor on the goods or services was performed by members of a union or other organization. See 15 U.S.C. § 1127. These categories are not mutually exclusive; the same mark may be used to certify one or more aspects of the goods or services.

The Paleo Foundation Certification Marks

The Paleo Foundation is an organization that is tasked with developing standards, upholding standards, and auditing consumer packaged goods (CPGs) for the purpose of certification.   The Paleo Foundation is the proprietor of a number of trademarks, including: 

• Certified Paleo
• Grain-Free Gluten-Free
• Keto Certified

Like other organizations that are proprietors of certification marks,  the Paleo Foundation must also follow the legal stipulations aforementioned. These requirements must be encompassed within a legal competence, and must have the impartiality of the Paleo Foundation in carrying out the certification.  In summary,  the Paleo Foundation must guarantee the compliance of products within the universal certification standards as set forth by these programs.  The Paleo Foundation must also monitor and control the use of the mark by others strictly.

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