1403 Combined or Multiple-Class Application

37 C.F.R. §2.86 Application may include multiple classes.

(a) In a single application, an applicant may apply to register the same mark for goods and/or services in multiple classes. The applicant must:
(1) Specifically identify the goods or services in each class;
(2) Submit an application filing fee for each class, as set forth in §2.6(a)(1); and
(3) Include either dates of use (see §§2.34(a)(1)(ii) and (iii)) and one specimen for each class, or a statement of a bona fide intention to use the mark in commerce on or in connection with all the goods or services specified in each class. The applicant may not claim both use in commerce and a bona fide intention to use the mark in commerce for the identical goods or services in one application.
(b) An amendment to allege use under §2.76 or a statement of use under §2.88 must include, for each class, the required fee, dates of use, and one specimen. The applicant may not file the amendment to allege use or statement of use until the applicant has used the mark on all the goods or services, unless the applicant files a request to divide. See §2.87 for information regarding requests to divide.
(c) The Office will issue a single certificate of registration for the mark, unless the applicant files a request to divide. See §2.87 for information regarding requests to divide.

1403.01 Requirements for Combined or Multiple-Class Application

Goods and/or services that fall in more than one class may be included in one application, called a "combined" or "multiple-class" application.

A multiple-class application may be viewed as a group of applications for registration of a mark in connection with goods or services in each class, combined into one application. Each class of goods or services must be considered separately. See G&W Laboratories, Inc. v. G W Pharma Ltd., 89 USPQ2d 1571 (TTAB 2009).

A multiple-class application may pertain to only one mark, and to only one register. A single certificate of registration will be issued, unless the application is divided. See TMEP §§1110 et seq. regarding division of an application.

A multiple-class application must contain the following:

(1) The class numbers for which registration is sought, and the goods or services appropriately classified in each class. The classes must be set forth in consecutive numerical order beginning with the lowest number, and the goods or services must be listed in association with their class numbers. Setting the classes and the goods or services out in tabulated form rather than narrative form is desirable because it usually adds clarity. 37 C.F.R. §§2.32(a)(6) and (7).
(2) A filing fee for each class. 37 C.F.R. §§2.6(a)(1), 2.32(d), and 2.86(a)(2). See TMEP §§810.01 and 1403.06.
(3) The dates of first use and first use in commerce for each class, in an application under §1(a) of the Act. 37 C.F.R. §2.86(a)(3). If the dates are the same for all classes, the dates may be stated once, with the statement that the mark was first used on said dates on the goods or services 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.
(4) One specimen supporting use of the mark on goods or services in each class, in an application under §1(a) of the Act. 37 C.F.R. §2.86(a)(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.
(5) Only one drawing may be included, because there may be only one mark per application. See TMEP §807.01.

Prior to registration, an intent-to-use applicant must file an allegation of use under 15 U.S.C. §1051(c) or 15 U.S.C. §1051(d) which: states that the applicant is using the mark in commerce on or in connection with the goods or services; includes dates of use and a filing fee for each class; and includes one specimen evidencing use of the mark for each class. 37 C.F.R. §2.86(b). See 37 C.F.R. §2.76 and TMEP §§1104 et seq. regarding amendments to allege use, and 37 C.F.R. §2.88 and TMEP §§1109 et seq. regarding statements of use.

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 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 Plus application filing fee per class (37 C.F.R. §2.6(a)(1)(iii)).
If the original application was not filed through 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.

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 or services in less than all the classes; or
(3) The applicant in a §1(b) application begins using the mark in commerce on goods or services 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) and 816.04.

When a multiple-class application is divided, the application is separated or divided into individual applications. See TMEP §§1110 et seq. for information about dividing an application.

1403.04 Combined or Multiple-Class Marks in Official Gazette

The marks in multiple-class applications appear in the Official Gazette in a separate section from the marks in single-class applications. Therefore, it is necessary to look in more than one place in the Official Gazette to make a complete review of published marks.

1403.05 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 database transaction to ensure issuance of registration for only the proper class(es).

1403.06 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, and 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 amount of the fee(s) for adding class(es) to an application.

1403.07 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.