1401.03 Designation of Class
In an application for registration of a mark, the applicant should designate the international class number(s) that are appropriate for the identified goods and/or services whenever the information is known. 37 C.F.R. §2.32(a)(7). See TMEP §1401.02(a) for the international classification schedule with explanatory notes.
In an application under §1 or §44, incorrect classification will be corrected by amendment. See TMEP §1401.03(b).
1401.03(a) Designation of Class by Applicant Normally Initially Accepted in Applications Under §§1 and 44
Sometimes, a product could be classified in more than one class. Some products are classified differently depending on the type of material of which the product is composed, or a particular use of the product. For example, plastic statuettes are in Class 20 while glass statuettes are in Class 21; reagents for research purposes are in Class 1 while reagents for medical use are in Class 5. Generally, in applications under §1 or §44 of the Trademark Act, prior to their assignment to an examining attorney, the USPTO retains the class number designated by the applicant, in the absence of any information clearly contradicting that classification. The applicant may be asked for further clarification for classification of goods of this type during the examination of the application. If the wording in the identification is broad enough to encompass more than one class, amendment will be required. See In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541 (Fed. Cir. 2007) ("chronographs" held indefinite because it includes both time recording devices in Class 9 and watches in Class 14). Also, if the examining attorney determines that the class designated by the applicant is incorrect, the examining attorney will require reclassification.
1401.03(b) Designation of Class by USPTO When Class Number Is Not Designated or Is Inaccurate in Application Under §1 or §44
In an application under §1 or §44 of the Trademark Act, if the applicant does not designate a class number(s), the USPTO will do so. If the class number(s) indicated by the applicant is clearly wrong (e.g., goods are classified in a service class), the USPTO will change the classification, either prior to or during examination.
Upon examination, the classification must be amended if the class numbers are incorrect. When the examining attorney requires or recommends an amendment of the identification of goods and/or services that would necessitate an amendment of the classification, the examining attorney should also require the applicant to amend the classification.
If an incorrect class number was designated by the Pre-Examination Section, and the examining attorney must issue an Office action, he or she must also inform the applicant of the correct class number for the identified goods and/or services, and require amendment of the classification. If it is unnecessary to issue an Office action, the examining attorney must ensure that the correct classification is entered into the electronic records of the USPTO.
The examining attorney may amend or correct classification through an examiner’s amendment, without prior authorization by the applicant. Groening v. Missouri Botanical Garden, 59 USPQ2d 1601 (Comm’r Pats. 1999). See TMEP §707.02.
Before approving an application for publication, the examining attorney must check to make sure that the properly assigned class is reflected in the electronic records of the USPTO.
1401.03(c) Failure to Classify May Delay Action in Applications Under §§1 and 44
The applicant should make an initial effort at classification, using the Alphabetical List of goods and services. In an application under §1 or §44 of the Trademark Act, when an application and fee is filed for a single class, but the identification lists a large number of items that obviously involve many classes, the examining attorney will require the applicant to properly classify the items. Class designations must be determined and fees for multiple classes must be paid before an examining attorney does an extensive search in a large number of classes. See TMEP §810.01.
1401.03(d) Classification Determined by World Intellectual Property Organization in §66(a) Applications
37 C.F.R. §2.85(d) Section 66(a) applications and registered extensions of protection.
In an application under section 66(a) of the Act or registered extension of protection, the classification cannot be changed from the classification assigned by the International Bureau of the World Intellectual Property Organization, unless the International Bureau corrects the classification. Classes cannot be added, and goods or services cannot be transferred from one class to another in a multiple-class application.
In an application under §66(a) of the Trademark Act, 15 U.S.C. §1141f(a), i.e., a request for protection of an international registration to the United States pursuant to the Madrid Protocol, the International Bureau of the World Intellectual Property Organization ("IB") controls classification. Article 3(2) of the Protocol. The IB classifies the goods and services in the appropriate classes of the International Classification of Goods and Services for the Purposes of the Registration of Marks in effect at the time international registration is filed. Subject to the conformity of the international application with other applicable requirements, the international registration will be issued in accordance with the classification and grouping that the IB considers to be correct. Common Regulations under the Madrid Agreement and Protocol, Rule 12(9). The USPTO will be notified of the edition of the Nice Agreement used and it will be listed in the request for extension of protection.
The §66(a) application (and any resulting registration) remains part of the international registration, and a change of classification in the United States would have no effect on the international registration. Therefore, the international classification of goods and/or services in a §66(a) application cannot be changed from the classification given to the goods/services by the IB, even if the IB’s classification of goods/services in the §66(a) application is different from the classification set forth in the ID Manual. Classes cannot be added, and goods or services cannot be transferred from one class to another in a multiple-class application. 37 C.F.R. §2.85(d).
Accordingly, if the mark in a §66(a) application appears to be a certification or collective membership mark, the USPTO will not reclassify it into United States Class A, B, or 200. However, the applicant must comply with all other United States requirements for certification and collective membership marks, regardless of the classification chosen by the IB. See TMEP §§1304 et seq., regarding collective membership marks, TMEP §§1306 et seq. regarding certification marks, and TMEP §1904.02(d) regarding §66(a) applications for these types of marks. See also TMEP §1904.02(c)(v) regarding the effect of indicated classes in registered extensions of protection and published applications under §66(a).
For purposes of identification of goods or services, the examining attorney will examine a §66(a) application according to the same standards of specificity used in examining applications under §§1 and 44 of the Trademark Act. That is, the examining attorney must follow the procedures set forth in the TMEP and identify the goods/services in accordance with the ID Manual whenever possible. See TMEP §§1904.02(c) et seq.
See also TMEP §1402.01(c) regarding the identification and classification of goods and services in a §66(a) application and 1904.02(b) regarding the examination of classification of goods and services in a §66(a) application.