TMEP § 1403
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 they 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.
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:
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.
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).
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).
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).
In an application under Trademark Act §1 or §44, 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 the filing fee for each new class and any applicable additional fees. See TMEP §819.02 and §819.03 for information regarding when the insufficient information fee and free-form text ID fee applies to added classes for electronically filed §1 or §44 applications submitted on or after January 18, 2025.
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:
The current fee schedule is available on the USPTO website at https://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 application filing 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. For electronically filed intent-to-use applications submitted on or after January 18, 2025, the applicant must also submit any applicable additional fees. See TMEP §819.02 and §819.03 for information regarding the insufficient information fee and free-form text ID fees.
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).
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:
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.
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 will 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).
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.
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.