TMEP 1304.02(d): Classification

October 2017 Edition of the TMEP

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1304.02(d)    Classification

Section 1 and §44 Applications. In applications under §1 or §44 of the Trademark Act, collective membership marks are classified in U.S. Class 200. 37 C.F.R. §6.4. United States Class 200 was established as a result of the decision in Ex parte Supreme Shrine of the Order of the White Shrine of Jerusalem, 109 USPQ 248 (Comm’r Pats. 1956). Before this decision, there was no registration of membership insignia on the theory that all collective marks were either collective trademarks or collective service marks. Some marks that were actually membership marks were registered under the Trademark Act of 1946 as collective service marks, and a few were registered as collective trademarks. That practice was discontinued upon the clarification of the basis for registration of membership marks and the creation of U.S. Class 200.

Section 66(a) Applications. A §66(a) application may indicate that the mark is a "Collective, Certificate or Guarantee Mark" or the identification may indicate that the mark is intended to indicate membership. In such cases, the examining attorney will require the applicant to clarify for the record the type of mark for which it seeks protection. The examining attorney must also require the applicant to comply with the requirements for the particular type of mark, i.e., collective trademark, collective service mark, collective membership mark, or certification mark. See TMEP §§1303–1303.02(b) regarding collective trademarks and collective service marks, TMEP §§1304–1304.03(c) regarding collective membership marks, and TMEP §§1306–1306.06(c) regarding certification marks.

If a §66(a) applicant indicates that the mark is a collective membership mark, the USPTO will not reclassify it into U.S. Class 200 because the classification of such applications may not be changed from that assigned by the International Bureau of the World Intellectual Property Organization ("IB"). TMEP §§1401.03(d), 1904.02(b). However, the examining attorney must ensure that the applicant complies with all other U.S. requirements for collective membership marks. See TMEP §§1304–1304.03(c).