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 Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol), the International Bureau of the World Intellectual Property Organization (IB) controls classification. Madrid Protocol Article 3(2). 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 at the IB. 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. Regulations Under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, 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. See TMEP §§1401.10(a), 1402.01(c).

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 or services by the IB, even if the IB’s classification of goods or services in the §66(a) application is different from the classification set forth in the ID Manual. Classes may not be added, and goods or services may not 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, §§1306 et seq. regarding certification marks, and §1904.02(d) regarding §66(a) applications for these types of marks. See 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 or services in accordance with the ID Manual guidance in effect on the filing date of the request for extension of protection. See TMEP §1904.01(b) concerning the filing date of a request for extension of protection of an international registration to the United States. See also TMEP §§1401.10(a), 1904.02(c).

With respect to certification marks, the identification of goods or services in a certification mark application under §66(a) must describe the goods and/or services of the party who will receive the certification, not the activities of the certifier/owner of the certification mark. In such an application, the goods or services that are certified may be identified less specifically than in an application for registration of a trademark or service mark. Sufficient information must be provided to enable a comparison of goods or services and analysis of trade channels in regard to possible likelihood-of-confusion scenarios. If the certification program is limited to specific items of goods or services, for example, wine, wooden doors, or forensic accounting services, then the identification in the application must also reflect this level of specificity. See TMEP §1306.02(c) regarding identification of goods and services of authorized users in certification mark applications.

See 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.