Certification Marks

To register a mark in the United States you have to be actually using the mark to sell stuff.[i]

Unless you want to register a certification mark.

Then you have to show the mark being used by other people and companies. Yup, that’s right. Your registration is based on other people using your mark.

You may not realize it, but certification marks are everywhere. You see the UL mark all the time. It was first used in 1937 and certifies that “representative samplings of the goods conform to the requirements” of Underwriters Laboratory Inc.

The oldest surviving registered certification mark was first used in 1911 and certifies that “the work or labor on goods was performed by a member or members of . . . The International Allied Printing Trades Association.”

A more recent example certifies that the goods bearing the mark “comply with the quality and/or interoperability standards established by Bluetooth Sig, Inc.”

This one is owned by the Consorzio Per La Tutela Del Formaggio Percorino and certifies that “the cheese comes from the regions of Latium and Sardinia and the province of Grosseto (Tuscany) in Italy . . . and satisfies certain quality and production standards.”

The “Good Housekeeping seal of approval” was around a lot when I was a kid. More recent certification marks deal with qualities that consumers consider important now. There are 20 live registrations that certify that goods are organic and 12 to certify that the goods are gluten-free.

Have a look around. What certification marks can you see right now?


[i] You can apply to register a trademark without using it first but you won’t get a registration until you show that you’ve started using it. In order to file an application in the U.S. you need to:

  • be using the trademark in commerce [15 USC Section 1051(1)(a)]; or
  • have “a bona fide intention . . . to use a trademark in commerce” [15 USC Section 1051(1)(b)].

Ugg

The UGG store in Soho.

Deckers Outdoor has 29 U.S. trademark registrations that include the word UGG.

Adnan Oygur challenged those registrations claiming that “ugg” is the generic term for sheepskin boots and, therefore, Deckers should never have been granted registrations.

Mr. Oygur’s evidence included:

  • Documents showing “ugg” is the generic word for sheepskin boots in Australia.
  • Testimony of surfers and surf shop owners from southern California who said they understood “ugg” to refer generically to sheepskin boots.

Deckers presented this evidence:

  • Survey results showing 98% of U.S. boot-buyers thought UGG was a brand and not the generic word for a type of boot.
  • Testimony from a linguistics professor who searched dictionaries and databases and failed to find “ugg” as a generic term for sheepskin boots in the U.S.
  • Testimony of a footwear historian who concluded that “ugg” had no meaning in the footwear trade or among American consumers before Deckers started advertising the UGG brand.
  • The Complete Footwear Dictionary, which identifies 110 types of boots but does not mention “uggs.”
  • Articles published in the U.S. using terms like sheepskin, lambskin, lambswool, and shearling to describe similar boots.

When the court considered all the evidence, it concluded that Deckers gets to keep its registrations because the “primary significance” of UGG to boot buyers in the U.S. was as a brand and not a generic term.

Most trademark owners will never have to hire a footwear historian to keep their trademark rights but, with a brand as valuable as UGG, it’s worth it.

Thanks to Cassandra G. and Rebecca M. for bringing this case to my attention.