By Heather A. Dunn & Blake W. Jackson

When standards bodies look to protect the marks associated with their standards, they are faced with a dilemma: should they use trademarks or certification marks?  One may think the answer is obvious: “certification” seems to be what standards bodies do, and therefore a standards body should always use certification marks.  But the obvious answer is not always the right one. Some standards bodies find that trademarks better fit their needs.

A standards body develops criteria for products or services provided by others.  Standards bodies also devise instructional materials, such as booklets, programming interfaces or other software.  If the standard is met, then the standards body licenses a mark to the product or service provider to indicate compliance.  The question faced by a standards body is what kind of mark it should establish and license to others.

Most people are familiar with trademarks in their typical role, to indicate the source of goods and services. People know that JetBlue online reservations are provided by JetBlue Airlines and that a can of Coca-Cola comes from The Coca-Cola Company.  In contrast, a certification mark, such as the EnergyStar logo on appliances, indicates a product or service meets an established standard.  Trademarks, however, can also be used to indicate qualities of a product or service – for example, the Oprah’s Book Club logo suggests Oprah Winfrey approves a book; the Council of Better Business Bureaus BBB logo shows a company follows set business practice standards.  Why do two regimes exist for what seems to be a similar function?