Certification marks differ from traditional trademarks. While a trademark identifies the commercial source of a product or service, a certification mark indicates that a product meets certain standards related to quality, geographic origin, or production methods.
Because certification marks indicate compliance with specific criteria, a product may bear its manufacturer's trademark while also displaying a certification mark. The United States Patent and Trademark Office often illustrate this distinction through energy-efficiency labels such as ENERGY STAR, which signal that a product meets standards established by the U.S. Environmental Protection Agency.
Manufacturers and service providers may apply to use certification marks in their marketing and advertising. Because these marks can influence consumer perception, disputes sometimes arise regarding whether a certification mark is valid, how it is used, or whether it has become generic.
Role of Consumer Surveys in Certification Mark Disputes
When these disputes occur, courts and administrative bodies may consider commissioning survey research to understand how relevant consumers interpret the certification mark at issue. Consumer surveys can provide evidence of what a reasonable consumer believes about a product based on its marketing and labeling.
Two types of surveys commonly used in these disputes are secondary meaning surveys and genericness surveys.
Secondary Meaning Surveys
Secondary meaning is attributed to a word, symbol, or other feature when a substantial portion of relevant consumers associate it with a particular source or standard. In certification mark disputes, secondary meaning surveys may examine whether consumers interpret a term as communicating a specific geographic origin or certification.
An example is Luxco, Inc. v. Consejo Regulador del Tequila, A.C., a dispute before the U.S. Trademark Trial and Appeal Board concerning whether the term “tequila” could function as a certification mark in the United States. Consejo Regulador del Tequila (CRT), which regulates tequila production in Mexico, sought to ensure that the term “tequila” would only be used for spirits meeting certain production and geographic requirements. The opposing party argued that the term had become generic.
CRT submitted survey evidence designed to determine whether consumers believed the term “tequila” indicated a particular country of origin. That survey’s results showed that a significant portion of respondents associated tequila with Mexico. The TTAB relied in part on this evidence when rejecting claims that the term was generic.
Genericness Surveys
Genericness surveys are used to determine whether consumers understand a term as the name of a product category rather than as an indicator of a specific source. One common approach is the Teflon survey format, which asks respondents to say whether they believe each of a series of names is a brand name or a common product name.
This type of survey may also be relevant in certification mark disputes. In Bluetooth SIG, Inc. v. FCA US LLC, Bluetooth Special Interest Group alleged that the automaker FCA US LLC improperly used the BLUETOOTH certification mark in advertising vehicle infotainment systems. FCA presented a Teflon-style survey indicating that many consumers viewed “Bluetooth” as a generic term. Bluetooth SIG challenged the survey’s structure, arguing that it did not distinguish between trademarks and certification marks. The court ultimately admitted the survey, concluding that this concern affected the weight of the evidence rather than its admissibility.
Consumer Surveys and Certification Mark Litigation
Certification marks play an important role in communicating information about quality, origin, and production standards. When disputes arise, survey evidence can help courts evaluate how consumers view those marks and whether they function as intended. IMS Legal Strategies is a leader in consumer survey research used in trademark litigation, including matters involving certification marks, genericness, and secondary meaning. Contact IMS for defensible consumer survey research.
