Certification Marks: Legal Challenges

Owner Implementation and Monitoring of Certification Programs, and Licensee Qualification and Use of Marks

Recording of a 90-minute premium CLE webinar with Q&A

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Conducted on Wednesday, July 11, 2012

Recorded event now available

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Course Materials

This CLE course will prepare counsel to certification mark owners with best practices for implementation and monitoring of certification mark programs and provide guidance to counsel for mark licensees on effectively managing such marks.


Consumers and government agencies require substantiation that products and services meet certain standards, such as whether they are energy efficient or produced in the United States. The relevant businesses and industries seek to obtain marks that establish standards for certification.

Certification mark owners must comply with numerous requirements to implement a mark program. They must then establish and carry out a plan to monitor the use and application of the certification mark.

The marks, which may not be used by their owners, must be licensed to those goods and services that meet the requirements for certification. Mark licensees must ensure their effective use of the mark and compliance with certification standards.

Listen as our authoritative panel of trademark counsel examines the unique IP challenges of implementing and monitoring certification programs and offers best practices for overcoming those challenges. The panel will also address the relationship between the certifying organization and the certified party, including effective use and promotion of certification marks.



  1. Copyright Issues for Certification Standards and Secured Testing
    1. Protecting Unpublished Secured Exams and Question Banks
    2. Protecting Published Materials such as Inactive Exams, Exam Preparation Materials, and Industry Standards
    3. Enforcement Practices and Challenges
  2. Trademark Issues for Certification Programs
    1. Selecting and Effective Use of Mark
    2. Limitations on Use of Mark
    3. Special Requirements For U.S. and Foreign Registrations Applications
    4. Policing Infringement and False Advertising
    5. Role of Certified Parties In Enforcement
  3. Certified and Certifier Relations
    1. Application and Licensing Process
    2. Auditing Programs
    3. Challenges By Failed Licensees and Others


The panel will review these and other key questions:

  • What requirements must be met to prepare for and implement a certification mark program?
  • What are the key steps to properly monitor certification mark programs?
  • What must potential licensees do to obtain the use of the mark?

Following the speaker presentations, you'll have an opportunity to get answers to your specific questions during the interactive Q&A.


B. Brett Heavner
B. Brett Heavner

Finnegan Henderson Farabow Garrett & Dunner

Mr. Heavner's practice covers all aspects of trademark and unfair competition law, with a particular focus on...  |  Read More

Margaret A. Esquenet
Margaret A. Esquenet

Of Counsel
Finnegan Henderson Farabow Garrett & Dunner

She focuses on all aspects of copyright law. Her practice includes advising clients regarding registration, licensing,...  |  Read More

Dorn, Susan
Susan E. Dorn

General Counsel
U.S. Green Building Council & Green Building Certification Institute

A nationally recognized expert in legal and governance issues for non-profits, Ms. Dorn joined the organization in 2009...  |  Read More

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