1403 Combined or Multiple-Class Applications

37 C.F.R. §2.86. Multiple-class applications.

(a) In a single application for a trademark, service mark, and/or collective mark, an applicant may apply to register the same mark for goods, services, and/or a collective membership organization in multiple classes. In a multiple-class application, the applicant must satisfy the following, in addition to the application requirements of § 2.32 for a trademark or service mark, and § 2.44 for collective marks:
(1) For an application filed under section 1 or 44 of the Act, identify the goods, or services, and/or the nature of the collective membership organization in each international class and/or the nature of the collective membership organization in U.S. Class 200; for applications filed under section 66(a) of the Act, identify the goods, services, and/or the nature of the collective membership organization in each international class assigned by the International Bureau in the corresponding international registration;
(2) Submit the application filing fee required by § 2.6 for each class; and
(3) Include either dates of use and one specimen for each class based on section 1(a) of the Act; or a statement that the applicant has a bona fide intention to use the mark in commerce, for a trademark or service mark, or a statement that the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce, for collective marks, for each class based on section 1(b), 44, or 66(a) of the Act. When requested by the Office, additional specimens must be provided.
(b) In a single application for a certification mark, an applicant may apply to register the same certification mark for goods and services. In such case, the applicant must satisfy the following, in addition to the application requirements of § 2.45:
(1) For an application filed under section 1 or 44 of the Act, identify the goods in U.S. Class A and the services in U.S. Class B; for applications filed under section 66(a) of the Act, identify the goods and services in each international class assigned by the International Bureau in the corresponding international registration;
(2) Submit the application filing fee required by § 2.6 for both classes; and
(3) Include either dates of use and one specimen for each class based on section 1(a) of the Act; or a statement that the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce for each class based on section 1(b), 44, or 66(a) of the Act. When requested by the Office, additional specimens must be provided.
(c) In a single application, both section 1(a) and 1(b) of the Act may not be claimed for identical goods or services.
(d) In a single application based on section 1 or 44 of the Act, goods or services in U.S. Classes A and/or B may not be combined with either goods or services in any international class or with a collective membership organization in U.S. Class 200; and in a single application based on section 66(a) of the Act, a certification mark application may not be combined with goods, services, or a collective membership organization in any international class. See § 2.45(f).
(e) An amendment to allege use under § 2.76 or a statement of use under § 2.88 for multiple classes must include, for each class, the required fee, dates of use, and one specimen. When requested by the Office, additional specimens must be provided. The applicant may not file an amendment to allege use or a statement of use until the applicant has used the mark on or in connection with all the goods, services, or classes, unless the applicant also files a request to divide under § 2.87.
(f) The Office will issue a single certificate of registration for the mark, unless the applicant files a request to divide under § 2.87.

In a single application for a trademark, service mark, and/or collective mark, an applicant may apply for the same mark for a combination of goods, services, and/or a collective membership organization in multiple classes. 37 C.F.R. §2.86(a). Additionally, in a single application for a certification mark, an applicant may apply for the same certification mark for both goods and services in U.S. Classes A and B. 37 C.F.R. §2.86(b). The USPTO calls these types of applications a "combined" or "multiple-class" application.

A multiple-class application may be viewed as a group of applications for registration of one mark in connection with goods, services, or a collective membership organization in particular classes, all combined into one application. Generally, an applicant is in the same position that he or she would have been if they had filed several single-class applications instead. G&W Labs., Inc. v. G W Pharma Ltd., 89 USPQ2d 1571, 1574 (TTAB 2009) .

A multiple-class application must pertain to only one mark, and to only one register. A single certificate of registration will be issued, unless the application is divided. 37 C.F.R. §2.86(f). See TMEP §§1110-1110.11(a) for information regarding requesting to divide an application.

1403.01 Requirements for Combined or Multiple-Class Applications

In addition to the requirements for a trademark, service mark, collective mark, or certification mark application ( see TMEP §§801-806.01(e), 1303.01, 1304.02, 1306.02), a multiple-class application must contain the following:

(1) Class Designations: For a §1 or §44 multiple-class application, the class numbers for which registration is sought, and the goods/services/collective membership organization appropriately classified in each class. 37 C.F.R. §2.86(a)(1), (b)(1). The classes must be set forth in consecutive numerical order beginning with the lowest number, and the goods/services/collective membership organization must be listed in association with their class number. Setting out the classes and the goods/services/collective membership organization in tabulated form rather than narrative form is recommended because it adds clarity. For a §66(a) multiple-class application, the classes are assigned by the International Bureau. 37 C.F.R. §2.86(a)(1), (b)(1).
(2) Filing Fees: A filing fee for each class. 37 C.F.R. §§2.6(a)(1), 2.86(a)(2), (b)(2); see TMEP §§810.01, §1403.05.
(3) Section 1(a) Application: For an application filed under §1(a) of the Act:
- (a) Dates of use: The dates of first use and first use in commerce for each class. 37 C.F.R. §2.86(a)(3), (b)(3). If the dates are the same for all the classes, the dates may be stated once, with the statement that the mark was first used on said dates in connection with the goods/services/collective membership organization in all the classes. If the dates of use differ for different classes, the appropriate dates for each class must be specified separately. The dates may be set forth in separate clauses, sentences, or paragraphs, or in tabular form, whichever will give complete information in the clearest way under the circumstances.
- (b) Specimens: One specimen supporting use of the mark for each class. 37 C.F.R. §2.86(a)(3), (b)(3). If a single specimen supports multiple classes, the applicant may so indicate, and the examining attorney need not require multiple copies of the specimen. The examining attorney should enter a Note to the File in the record, indicating which classes the specimen supports.
(4) Section 1(b), 44, or 66(a) Application: For an application filed under §1(b), §44, or §66(a) of the Act, a statement that the applicant has a bona fide intention to use the mark in commerce, for a trademark or service mark, or a statement that the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce, for collective or certification marks, for each class. 37 C.F.R. §2.86(a)(3), (b)(3). See TMEP §1904.01(c) regarding the bona fide intent statement in a §66(a) application.

In a §1(b) application, prior to registration, the applicant must file an allegation of use under 15 U.S.C. §1051(c) or 15 U.S.C. §1051(d) that states the mark is in use in commerce on or in connection with the goods/services/collective membership organization; and includes dates of use, the filing fee for an allegation of use for each class, and one specimen evidencing use of the mark for each class. 37 C.F.R. §2.86(e). See 37 C.F.R. §2.76 and TMEP §§1104-1104.11 regarding amendments to allege use and 37 C.F.R. §2.88 and TMEP §§1109-1109.18 regarding statements of use. An applicant may not file an allegation of use until the applicant has used the mark in connection with all the goods/services/classes in the application, unless the applicant also submits a request to divide the application under 37 C.F.R. §2.87. 37 C.F.R. §2.86(e).

Further, an applicant may not claim both §1(a) and §1(b) for identical goods or services in the same application. 37 C.F.R. §2.86(c).

Additionally, an applicant may not apply for a certification mark and a trademark, service mark, or collective mark in the same application. 37 C.F.R. §§2.45(f), 2.86(d). See TMEP §1306.04(f) for more information on restrictions to certification marks.

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 may not be added, and goods/services may not be transferred from one class to another class. 37 C.F.R. §2.85(d); see TMEP §§1401.03(d), 1402.01(c), 1904.02(b), (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. See 37 C.F.R. §2.209(a); TMEP §§405.04, 810.02.

If the applicant designates the classes incorrectly and there are actually no goods, services, or collective membership description in one of the classes designated in a multiple-class application, the fee for that class may be refunded. See 37 C.F.R. §2.209(a).

1403.02(b) Correction of Classification

In an application under §1 or §44 of the Trademark Act, improper classification may 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 by 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 verified by an affidavit or declaration by the applicant. See 37 C.F.R. §2.71(c). See TMEP §903.04 regarding a permissible amendment of dates of use.

In a §66(a) application, classes may not be added, and goods/services may not 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), 1904.02(b), (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, and the filing fees in effect at the time of the amendment, as follows:

If the original application was filed through TEAS Standard 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 Standard or TEAS Plus application filing fee per class (see 37 C.F.R. §2.6(a)(1)(iii), (iv)).
If the amendment is permitted to be filed on paper, then the fee for adding a class is the same as the fee per class for filing an application on paper (see 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 verify these dates. See 37 C.F.R. §2.71(c). See TMEP §903.04 regarding a 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(a); 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.

1403.03 Dividing of Combined or Multiple-Class Application

A delay in registration of one class in a multiple-class application will mean delay for the entire application. In such a situation, upon payment of the applicable fee, the applicant may file a request to physically divide the original application into separate applications. These new applications are assigned new serial numbers and cross-referenced with the original application. The additional separate applications are given the same filing date as the original application.

The following are examples of situations when an applicant may want to have class(es) divided out into one or more separate applications:

(1) Registration is refused in less than all the classes;
(2) A notice of opposition is filed against goods/services/a collective membership organization in less than all the classes; or
(3) The applicant in a §1(b) application begins using the mark in commerce on goods/services/a collective membership organization in less than all the classes.
(4) The applicant intends to respond to a refusal by amending to the Supplemental Register as to only certain goods/services/classes in the application. See TMEP §§801.02(b), 816.04.

When a multiple-class application is divided, the application is separated or divided into individual applications. See TMEP §§1110-1110.11(a) for information regarding requesting to divide an application.

1403.04 Refusals and Oppositions as to Less Than All the Classes in a Multiple-Class Application

A refusal to register or a requirement may be made for less than all the classes in an application. Whether it is appropriate to make a refusal or requirement with regard to less than all classes must be considered on a case-by-case basis.

When issuing a refusal or requirement pertaining to less than all the classes, the examining attorney must expressly state that the refusal or requirement that applies only to certain class(es), and indicate the class(es) to which the refusal or requirement pertains. If an applicant fails to file a complete response to a refusal or requirement that was expressly limited to certain class(es), the application shall be abandoned only as to those class(es) if it is otherwise in condition for approval for publication. However, if the Office action includes an advisory stating that amendment would require the payment of additional fees because the fee paid is insufficient to cover all the classes, and the applicant fails to file a response, the entire application will be abandoned. 37 C.F.R. §2.65(a). See TMEP §718.02(a).

When an opposition is sustained only as to some of the class(es) in a multiple-class application, the application is returned to the examining attorney. The examining attorney must perform the proper Trademark database transaction to ensure issuance of registration for only the proper class(es).

1403.05 Fees for Action After Filing, Multiple Classes

In a multiple-class application or registration, a fee for each class must be paid when filing an allegation of use or request for extension of time to file a statement of use for applications under §1(b) of the Trademark Act; ex parte appeal to the Trademark Trial and Appeal Board; affidavit or declaration under §8 or §71 of the Act; affidavit of incontestability under §15 of the Act; application for renewal of a registration under §9 of the Act, opposition, or petition for cancellation of a registration under §14 of the Act. 15 U.S.C. §§1051, 1058, 1059, 1063, 1064, 1065, 1141k.

In these situations, when a party submits a fee that does not cover all the classes in the application or registration, the party should state that action is sought only for the number of classes equal to the number of fees submitted, and should specify the classes for which action is being sought. This may avoid an unnecessary inquiry by the USPTO.

See TMEP §1403.02(c) regarding the fee(s) for adding class(es) to an application.

1403.06 Surrender or Amendment in Multiple-Class Registrations

In a multiple-class registration, deletion of less than all the goods or services in a single class constitutes an amendment, whereas deletion of an entire class constitutes a surrender of the registration for cancellation as to the class deleted. 37 C.F.R. §2.172; TMEP §1609.03.

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