1403.02 Amendment of Combined or Multiple-Class Application

An application under §1 or §44 of the Trademark Act may be amended during prosecution to delete, correct, or add classes, when appropriate.

In a §66(a) application, classes may be deleted, but classes cannot be added, and goods/services cannot be moved to another class. 37 C.F.R. §2.85(d). See TMEP §§1401.03(d), 1402.01(c), and 1904.02(b) and (c).

1403.02(a) Deletion of Classes

An applicant may delete a class or classes and prosecute the application only in the remaining class or classes. Normally, the filing fee is not refunded when a class is deleted. 37 C.F.R. §2.209; TMEP §§405.04 and 810.02.

If the applicant designates the classes incorrectly and there are actually no goods in one of the classes designated in a multiple class application, the fee for that class may be refunded.

1403.02(b) Correction of Classification

In an application under §1 or §44 of the Trademark Act, improper classification can be corrected by switching goods/services by amendment from one to another of the classes originally set forth, or by changing the class designations, as long as the number of classes is not increased.

The examining attorney may correct classification through an examiner’s amendment, without prior authorization by the applicant. See TMEP §707.02. Correction of classification after publication for opposition does not require republication. See TMEP §1505.03(b).

When more than one item of goods or services is listed in a class, the specimen and dates of use given do not necessarily apply to all the items listed. If the item to which the specimen and/or dates pertain is removed from the identification by amendment, the applicant must submit a new specimen and/or dates of use for that class. If the new dates differ from the dates originally set forth, the additional dates must be supported by an affidavit or declaration by the applicant. 37 C.F.R. §2.71(c). See TMEP §903.04 regarding permissible amendment of dates of use.

In a §66(a) application, classes cannot be added, and goods/services cannot be transferred from one class to another in a multiple-class application. 37 C.F.R. §2.85(d). See TMEP §§1401.03(d), 1402.01(c), and 1904.02(b) and (c).

1403.02(c) Addition of Classes

In an application under §1 or §44 of the Trademark Act, class(es) may be added if any of the items originally recited are properly classified in class(es) not originally indicated. The applicant must pay an additional fee for each new class.

The amount of the fee varies depending on the method used to file the original application and the amendment adding classes, as follows:

If the original application was filed through TEAS RF or TEAS Plus and the amendment is filed through TEAS (either as a voluntary amendment or a response to an examining attorney’s Office action) or entered by examiner’s amendment, then the fee for adding a class is the same as the TEAS RF or TEAS Plus application filing fee per class (37 C.F.R. §§2.6(a)(1)(iii), (iv)).
If the original application was not filed through TEAS RF or TEAS Plus, and the amendment is filed through TEAS or entered by examiner’s amendment, then the fee for adding a class is the same as the TEAS application filing fee per class (37 C.F.R. §2.6(a)(1)(ii)).
If the amendment is filed on paper, then the fee for adding a class is the same as the fee per class for filing an application on paper (37 C.F.R. §2.6(a)(1)(i)), regardless of how the original application was filed.

The current fee schedule is available on the USPTO website at http://www.uspto.gov.

If dates of use for a class that is added are different from dates previously set forth, the applicant must submit an affidavit or declaration under 37 C.F.R. §2.20 to support the dates. 37 C.F.R. §2.71(c). See TMEP §903.04 regarding permissible amendment of dates of use.

An additional specimen that is not identical to a specimen originally filed must be supported by an affidavit or declaration attesting to its use as of an appropriate date. 37 C.F.R. §2.59; TMEP §904.05.

If an intent-to-use application is amended to add class(es), the applicant must submit, for each added class, the basic application fee and fees for the allegation of use (i.e., either the amendment to allege use or the statement of use), and any extension request(s) granted in the interim. This applies even if the classes are added after the amendment to allege use or statement of use is filed, or the extension request(s) is granted.