Certification Marks: The Tie That Binds Scotch Whisky, The International Ladies Garment Worker’s Union and A Rated R Motion Picture – Trademark

“Like the owner of the mark, it is the responsibility of the owner of the certification mark to monitor and control the use of the mark. The owner of the certification mark may have the most difficult task because he is required to control the third-party compliance with standards.

Learn to play the saxophone / I just play what I feel / Drink SCOTTISH WHISKEY All night long. – Deacon Blues, Copyright 1977 – Walter Becker and Donald Fagan

If Steely Dan had recorded Deacon Blues now instead of 1977, those lyrics may have gotten them in trouble.

First, there is no e in the
whiskey who comes from Scotland or Japan and Canada. The e in whiskey is reserved for whiskey from the United States and Ireland. That being said, different regions have different standards and laws to regulate whis key or whis ky production and to ensure that the standards and quality of alcoholic beverages from Scotland, Canada, Japan, Ireland, etc. be protected.

Scotch Whiskey is the most exported food/drink product in the UK. Scotch whisky, distilled primarily from barley, tends to age longer than other regional whiskies, giving it a deeper, richer flavor. Scotch whiskey is produced in five major regions – Cambelltown, the Highlands, the Lowlands, Speyside and Islay – and the whiskeys from each of these regions have their own unique style and characteristics.

Whiskey without e comes from Scotland. Sorry Steely Dan, you made a mistake. Hopefully the Scotch Whiskey in the song was distilled according to the rules above.

So how does the consuming public know that the expensive bottle of Scotch they bought in a liquor store or the drink they ordered in a restaurant is from the Lowlands, Speyside or Cambelltown? How does the Scotch Whiskey Association (the “SWA”) protect against distillers not from the Highlands or Islay who call their products Scotch Whisky?

On June 21, 2022, SWA obtained Certification markregistration for SCOTCH WHISKEY with the United States Patent and Trademark Office (USPTO) for whiskey produced in Scotland to specific standards, namely:

The certification mark, as used or intended for use by persons authorized by the certifier, certifies or is intended to certify that the goods/services supplied originate in Scotland and have met the standards set out in the Scotch Whiskey Regulations 2009 and the Scotch Whiskey Technical File.

Understanding Certification Marks

Whereas SCOTCH WHISKEY indicates that the alcoholic beverage is a whiskey of Scotland conforms to the standards of the Scotch Whiskey Association,
this the certification mark does not identify the manufacturer, nor does this mark belong to any entity that manufactures
SCOTCH WHISKEY.

So what is its purpose?

A Certification mark is a name, symbol and/or logo used by groups (associations, unions, organizations, professional groups, etc.) to show that the product or service to which it relates conforms to industry or associations. A
Certification mark can be used to indicate that a product claiming to be from a region actually comes from that region (Roquefort cheese). A Certification markcan be used to indicate that a product is in fact made with the materials it claims to be (Oldest boy). A certification mark can be used to ensure that certain standards that a product boasts are true (Energy efficient, 100% recycled). A certification mark can be used to help parents decide if they want to take their children to see a certain movie (The grading system).

The goal of a Certification mark is therefore
certify and not to own Where indicate the source.

The message one Certification mark transmits is that the goods or services with which it is used have been either examined, inspected or verified in some way by an entity that did not manufacture the goods or provide the services. A certification mark appearing on goods or services indicates that the product or services conform to industry or association standards established by trade groups, manufacturers, unions, etc.

Examples of characteristics or objectives for Certification marks to understand:

  • Security

  • Quality

  • Morality

  • Manufacturing method

  • Precision

  • Geographic origin

Companies that are able to use a certification mark to prove that their products or services meet industry standards are in a better position than those that are unable to use a certification mark, because a Certification allows entities to assure consumers that purchased goods or services are industry approved. . A consumer who buys an industry-approved product or service can rest a little easier.

Obtaining a certification mark

An application for a certification mark with the United States Patent and Trademark Office (“USPTO”) is similar to the process of applying for a trademark or service mark. However, unlike a trademark or service mark application, an application for certification mark does not require the goods or services to be classified under the Nice Classification System. SCOTCH WHISKEY is therefore not registered in class 33 but rather in class
A. A certification mark can only be in
Class A for goods or Class B for benefits.

In addition, the request must include

(i) A statement that the particular characteristic, quality, method of manufacture, material, geographical region and/or the like is or is intended to be certified by the mark:

“The certification mark, as used or intended for use by persons authorized by the certifier, certifies or is intended to certify that the goods/services provided have…” (Trademark Examination Procedure Manual (“TMEP” §1306.03(a))

In other words, how the mark is used for what it is, i.e., ORGANIC, from idaho, inspected in
compliance with.

(ii) A statement that the applicant is
not engaged in the production or marketing of the goods or services to which the mark is applied, except to advertise or promote the recognition of the certification program of the goods or services which meet the applicant’s certification standards. (TMEP §1306.03(c)).

(iii) A copy of the certification standards that users of the mark are expected to follow. It can be just that, a list of standards or instruction manuals, policies, etc. These need not be originally written, but may instead be copies of government regulations, trade standards, or the like.

(iv) A statement that the applicant controls the use of the mark.

The fact a certification mark quite different from the declaration of use of the mark as used Where intended to be usedon the particular goods/services covered by the mark.

The trademark applicant claims use Where intended use of the markwhile the applicant for the certification mark asserts that they are do not use or do not intend to use the brand.

Certification Marks and Trademarks

The difference between a trademark and a certification mark is that a trademark identifies the source of the product or service to distinguish it from other products or services in similar or related industries while certification mark certifies that the products or services conform to the standards.

However, like the owner of the mark, it is up to the owner of the certification mark to monitor and control the use of the mark. The owner of the certification mark may have the most difficult task since he is responsible for monitoring the compliance of third parties with the standards. The owner of the certification mark is advised to prepare additional documents such as guides, teaching materials and recommendations for users of the mark to ensure that the mark is used correctly. The user of a certification mark who does not comply with the rules may have the right to use the mark revoked.

A few caveats

  • The owner of a certification mark cannot license the mark. Since the owner of the certification mark must retain control over the conformity of users of the mark, no waiver of control can be authorized.

  • The owner of the certification mark may only use the mark for certification purposes. Any other use dilutes the meaning and purpose of a certification mark.

  • The certification mark owner must enter into agreements with users to maintain the standards and quality of the products/services.

  • The owner of the certification mark may not sell any product bearing the mark alone. THIS DOES NOT MEAN THAT THE SAME ENTITY WHICH HOLDS A CERTIFICATION MARK IS PREVENTED FROM REGISTERING A
    DIFFERENT BRAND FOR A PRODUCT THAT IT MANUFACTURES OR A SERVICE THAT IT RENDER.

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Previously posted in IPWatchdog

The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.

Michael O. Stutler