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Intellectual Property Protection for Certification Organizations

By Richard Bar, Esq., Partner, GKG Law

Credentialing organizations have unique intellectual property issues that do not apply to other non-profits. First, they have to protect the name of their credential from competitors and non-certified individuals. Second, they need to protect their credentialing examinations from people who want to compromise the security of the exam. An unprotected certification mark or a compromised examination can destroy the value of a credential.  However, many credentialing organizations are not aware of the best way to protect these assets.

All federally registered trademarks are registered with the United States Patent and Trademark Office (the “USPTO”).  The term “trademark” is often used to describe any mark that promotes a service or product. In actuality, there are several different types of marks.  A “trademark” is a mark used to promote a product (i.e., Kleenex); a “service mark” is used to promote a service (i.e., JiffyLube); and a “collective mark” is owned by a collective, whose members use the mark to: (i) distinguish their goods and services from non-members; and (ii) indicate membership in the group (i.e., AAA Member). There also is a fourth type of mark known as a “certification mark”.  A certification mark is different than a typical trademark, because it is owned by the certifying body but used by certified individuals (i.e., CAE). In essence, certified individuals are granted a revocable license to use the certification mark.  Additionally, a certification mark indicates that a product or service meets an established standard.

Federal certification mark registration has several benefits.  Registration creates a legal presumption that the registrant is the owner of the mark.  Additionally, it gives the registrant the ability to bring an infringement action in federal court.   However, many organizations are either unaware of this type of mark, or confuse certification marks with collective membership marks. If a certification mark is improperly registered as a collective membership mark, the mark may be cancelled.  Improper registration will therefore make it difficult for an organization to protect the credential from infringers. Therefore, in order to create value and maintain the integrity of a certification, organizations must make sure that their credentials are properly registered as certification marks with the USPTO.

Test security also is a constant concern for certification organizations.  Even the most secure tests can be compromised and exploited. Federal copyright registration has several benefits. A copyright registration puts people on notice that the organization owns the examination and gives the organization the right to obtain statutory damages from the infringer.  The copyright owner is also eligible for court costs and attorneys’ fees in addition to any damage award.

The U.S. Copyright Office (the “Copyright Office”) has a special secure test registration process to ensure that an exam remains protected. While the Copyright Office usually requires an owner to deposit a complete copy of the copyrighted work, it does not require a complete copy of a secure test.  Instead, a representative of the organization must make an appointment with the Copyright Office and bring a copy of the certification test with her.  The Copyright Office then will review the application and exam materials.  Once this review is complete, the Copyright Office will only take the first and last page of the exam as a deposit, therefore, ensuring the security of the test material.

A certification organization’s credentials and examinations are two of its most important assets.  It is, therefore, imperative that each organization know how to properly protect this intellectual property against infringers.

Richard Bar is a Principal of GKG Law, P.C. in Washington D.C.  Mr. Bar has been practicing law for more than 30 years.  He is outside General Counsel to more than 50 tax-exempt organizations with a specific focus on the representation of credentialing bodies.  He is a frequent speaker and author.  You can contact Mr. Bar directly at rbar@gkglaw.com

Categorized in: Regulatory Power