## Facts

- Underwriters Laboratories Inc. (UL) is a nonprofit testing and certification entity that owns federally registered “UL” certification marks indicating products comply with UL safety standards.
- Midwest Plastic Fabricators, Inc. (Midwest) manufactured PVC electrical conduit and fittings and participated in UL’s listing and follow-up service program to use UL certification marks.
- UL’s program required pre-listing testing of product samples, a written agreement limiting use of the mark to compliant products, ordering labels through UL from authorized sources, and ongoing manufacturer quality controls.
- UL conducted periodic inspections and required correction or removal of the mark when tests showed noncompliance.
- Midwest petitioned to cancel two UL certification-mark registrations, alleging (i) UL used the marks for non-certification purposes and (ii) UL failed to adequately control use, citing claimed “self-ordering,” instances of misuse, and counterfeiting in the marketplace.
- The Trademark Trial and Appeal Board denied cancellation, finding no misuse and adequate control; Midwest appealed.

## Issues

1. Whether UL used its certification marks for purposes other than certification, warranting cancellation under the Lanham Act.
2. Whether UL failed to exercise adequate control over use of its certification marks such that the marks were invalid or subject to cancellation.

## Decision

- The Federal Circuit affirmed the denial of Midwest’s cancellation petition.
- The court held the TTAB did not clearly err in finding UL did not misuse its certification marks for non-certification purposes.
- The court held the TTAB did not clearly err in finding UL exercised sufficient control over authorized use of the marks, and isolated misuse or counterfeiting did not establish loss of control.

## Legal Principles

- A certification mark owner must maintain reasonable control over use of the mark to ensure it reliably indicates compliance with the certifier’s standards; absolute prevention of all misuse is not required.
- Isolated instances of counterfeiting or unauthorized use do not, by themselves, prove inadequate control or abandonment when the owner investigates and takes corrective or enforcement action.
- Charging fees and operating a licensing, inspection, and follow-up program is consistent with legitimate certification-mark use when the mark is used to signify compliance with articulated standards.
- In a cancellation proceeding, the petitioner bears the burden to prove statutory grounds for cancellation; appellate review of the TTAB’s factual findings is for clear error.

## Conclusion

The court sustained UL’s certification-mark registrations because the record supported the TTAB’s findings that UL’s marks were used in a certification capacity and were governed by a testing, inspection, and enforcement system providing reasonable control despite occasional third-party misuse.


Midwest Plastic Fabricators, Inc. v. Underwriters Laboratories Inc., 906 F.2d 1568 (Fed. Cir. 1990)