Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE 88OPEN CONSORTIUM LTD.
Serial No. 74/133,771
July 27, 1993
Richard M. Lucash of Lucash, Gesmer & Updegrove for applicant.
Kathleen M. Vanston
Trademark Examining Attorney
Law Office 3
(Kathryn A. Dobbs, Managing Attorney)
Before Rooney, Seeherman and Hanak
Opinion by Hanak
88Open Consortium, Ltd. (applicant) seeks to register 88OPEN COMPATIBILITY CERTIFIED and design in the form shown below as a certification mark which when "used by persons authorized by the certifier [applicant], certifies that the goods are designed and manufactured to conform to technical specifications established by the certifier [applicant] for the purpose of enabling such goods to operate on or with computers, computer circuit boards, and peripheral equipment for computers, manufactured and designed to comply with corresponding specifications also established by the certifier [applicant]." The application was filed on January 28, 1991 with a claimed first use as a certification mark at least as early as July 30, 1990. Applicant has disclaimed the words COMPATIBILITY CERTIFIED.
The Examining Attorney refused registration pursuant to Section 4 of the Lanham Trademark Act of 1946 "because the applicant has registered the virtually identical mark as a trademark, service mark and collective membership mark." (Examining Attorney's brief page 1). More particularly, the Examining Attorney notes that applicant owns six existing registrations, three of which are for 88OPEN in typed form and three of which are for 88OPEN and design in the form shown below.
The Examining Attorney notes that the applicant has registered 88OPEN in typed form and 88OPEN and design in the form shown immediately above as (1) a trademark for manuals pertaining to electronic industry technical standards and specifications; (2) a service mark for promoting the interests and concerns of computer hardware and software vendors; and (3) a collective membership mark for indicating membership in an organization of vendors of electronics products.
The Examining Attorney states that Section 4 of the Lanham Trademark Act of 1946 provides that "certification marks ... shall be registrable ... except ... when used so as to represent falsely that the owner ... makes or sells the goods or performs the services on or in connection with which the mark is used. As a consequence, the owner of a certification mark (certifier) cannot use the identical mark as a service mark or a trademark on or in connection with any goods or services that the certifier markets or performs." (Examining Attorney's brief pages 3-4). In support of her position, the Examining Attorney cites In re Florida Citrus Commission, 160 USPQ 495 (TTAB 1968) and In re Monsanto Co., 201 USPQ 864 (TTAB 1978).
*2 Of course, the Examining Attorney recognizes that the mark of the pending application is not identical to either of the two marks which applicant previously registered as trademarks, service marks and collective membership marks. However, it is the Examining Attorney's position that "because the wording 'compatibility certified' is descriptive, consumers are less likely to focus upon and recall it, leaving 88OPEN as the dominant portion of the [applied for] mark. 88OPEN is identical in substance to both sets of registered marks, namely 88OPEN in typed form and 88OPEN and design." (Examining Attorney's brief page 5).
The applicant fully concurs with the Examining Attorney that a certification mark may not be "identical or substantially or virtually identical" to an existing trademark, service mark or collective membership mark owned by the applicant. (Applicant's brief page 3). However, relying on examples cited by this Board in Monsanto, applicant argues very strenuously that its applied-for mark 88OPEN COMPATIBILITY CERTIFIED and design is not identical, substantially identical or virtually identical to either of the two marks which applicant previously registered as trademarks, service marks and collective membership marks.
In Monsanto, this Board stated that there was nothing in the Lanham Trademark Act of 1946 which precludes "a person from selling goods and services and also engaging in a certification program" provided that the two activities are identified by "separate and distinct marks." 201 USPQ at 869. The Board went on to note that its use of the phrase "separate and distinct marks" was intended "to eliminate the use of the identical mark or substantially or virtually identical marks that create the same general impression and therefore the same general recollection as both trademarks and certification marks." 201 USPQ at 869.
However, the Board was careful to state that it was permissible for a person to utilize the identical designation as both a trademark and as a certification mark provided that when the identical designation was used as a certification mark, it was used in a "different setting" such that it would be recognized as a certification mark and not as a trademark. 201 USPQ at 869. The Board noted that it would be perfectly permissible to utilize the designations GOOD HOUSEKEEPING and PARENTS MAGAZINE both as trademarks for publications and as certification marks provided that when used as certification marks, these designations were used with "wording denoting certification such as 'Approved by', 'Tested by', etc." 201 USPQ at 869. Indeed, the Board went on to note that the applicant in Monsanto had, through its evidence, provided an example of an acceptable use of the identical designation (i.e. TEFLON) as a trademark for synthetic fibers or sheets and as a certification mark for goods made with these synthetic fibers or sheets in that in the latter case the designation TEFLON was accompanied by the words "Du Pont approved finish."
*3 It is applicant's position "that the words COMPATIBILITY CERTIFIED [in applicant's certification mark] are as strong or even stronger in differentiating a certification mark from a trademark than the examples given" in Monsanto (e.g., "Tested by" and "Approved by"). (Applicant's brief page 6).
We concur. The mark which applicant now seeks to register is clearly not substantially or virtually identical to either of the two marks which it previously registered as trademarks, service marks and collective membership marks. More importantly, the words COMPATIBILITY CERTIFIED in applicant's present mark clearly serve to inform those seeing the mark that it is functioning as a certification mark. We also note that applicant's present mark contains a circular design feature not found in either of applicant's two other marks, and that this circular design feature gives applicant's present mark an appearance of a seal (i.e. a seal of approval), thus further accentuating its certification function.
The Examining Attorney's contentions that COMPATIBILITY CERTIFIED is descriptive and that 88OPEN is the dominant portion of applicant's present mark are correct, but are misplaced. These contentions would, of course, be very relevant if the issue were one of likelihood of confusion pursuant to Section 2(d) of the Lanham Trademark Act of 1946. However, the issue in this case is not one of likelihood of confusion. Rather, the issue is whether consumers would recognize applicant's present mark as a certification mark, and in this regard, the fact that the words COMPATIBILITY CERTIFIED are descriptive only adds to, and certainly does not subtract from, accentuating the certification feature of applicant's present mark. In this regard, we note that the suggested words in Monsanto (i.e. "Approved by" and "Tested by") are likewise descriptive.
Finally, the Examining Attorney has expressed concern that the activities which applicant renders under its certification mark are too close to the goods and activities which applicant renders under its trademarks, service marks and collective membership marks. It is the Examining Attorney's position that "applicant is authorizing use of the mark to certify certain characteristics of computer software while using the substantially identical registered marks on computer-related goods and services." (Examining Attorney's brief page 7).
However, a review of the Monsanto case and the Trademark Manual of Examining Procedure demonstrates that the Examining Attorney's concern is without merit. In Monsanto, this Board cited with approval the concurrent use of TEFLON as a trademark on synthetic fibers or sheets and "TEFLON Du Pont approved finish" as a certification mark on goods coated with those identical synthetic fibers or sheets. Obviously, TEFLON coated products and TEFLON coatings are just as closely related, if not more closely related, than the present applicant's certification services and goods and services identified by its prior registrations.
*4 Moreover, Section 1306.04 of the Trademark Manual of Examining Procedure states that "organizations may perform services for their members, and sell various goods to their members and others, as well as conduct programs wherein they certify characteristics or other aspects of goods or services, especially of kinds which relate to the main purpose of the association." (Emphasis added). In the real world, it is unlikely that a company which sells goods or services would, if it offers certification services at all, offer such services for goods or services totally unrelated to those which it sells. A company that sells computers is hardly going to be certifying dairy products.
Members, Trademark Trial and Appeal Board