Should I File a Multi-Class Federal Trademark Application?
The United States Patent and Trademark Office (USPTO) allows trademark applicants to include several goods and/or services spanning multiple classes on a single trademark application submission. There are both advantages and disadvantages to including multiple classes within one trademark application; Fundamentally, the key question an applicant must ask him/herself is what am I ultimately planning to sell under the banner of my trademark? Remember, one does not broadly own the categorical and exclusive right to a trademark; instead, a person’s right to a trademark is limited specifically to the goods services sold under the banner of the trademark. When submitting a trademark application to the USPTO, it is critical to balance the competing interest of covering all goods/services which are necessary to encompass the Brand without spending an excessive amount on government fees for classes of goods services which will never be actualized. This article will consider some of the more important aspects of this deliberation.
WHAT ARE THE ADVANTAGES OF FILING A MULTI-CLASS APPLICATION
Suppose for the moment that you are only in the business of selling “Clothing”, but you are confident that in the next six months or so, your brand will also expand into the sale of “Watches”. Well, in this instance, it might very well be prudent to file a single application that includes both the “Clothing” Class and the “Watch” Class of Goods (rather than simply covering the Clothing Class which you are presently selling). Here, you will file the Clothing Class as a 1(a) Use in Commerce status and the Watch Class as a 1(b) Intent to Use.
Filing a multi-class application can save you money down the line. While the USPTO allows for multiple classes of goods/services to be submitted along with the filing of the initial application, the USPTO does not allow an applicant to add additional Classes once the Application is already submitted. Thus, it very often makes sense to simply file more goods/services in the beginning and if at a later point in time it becomes apparent that you no longer need those goods/services, you can simply delete them from the application.
WHAT ARE THE DISADVANTAGES OF FILING A MULTI-CLASS APPLICATION
While there are many advantages to filing a Multi-Class trademark application, there are drawbacks as well.
First, assume you are filing your multi-class trademark application on an intent-to-use basis. What if you’re ready to file a Statement of Use for one class out of five classes that are listed in your application? Then, you’ll have to file a Request to Divide the application and potentially apply for deadline extensions. This can all get cumbersome and expensive pretty quickly.
It also may take longer for you to register a trademark with more than one class of goods or services identified in the application. Let’s say the trademark examining attorney approves use of your mark with one class of goods, but not the other two in your application. The entire application would be held up until the issues surrounding the one class are resolved. Again, this makes things complicated and potentially expensive.
Maintaining a multi-class trademark registration may also expose you to greater risk of trademark cancellation. For example, let’s say that your mark has 25 goods spanning 4 Classes. That’s a lot to keep track of. It’s possible that at the trademark renewal stage of the process you state that the mark has been continuously used on all goods, but one or two goods have been discontinued. The USPTO can cancel your entire trademark due to that oversight.
Also, certain foreign countries don’t allow trademark applications with goods and services spanning multiple Classes. If you know that you’re going to file your mark in a foreign country, be sure to find out if they allow multi-Class applications first. If they don’t then it makes sense for you to file multiple Single-Class applications in the U.S. as well in foreign countries.
HOW MANY CLASSES ARE THERE AND WHAT ARE THEY?
There are quite literally millions of goods/services in the Market and principally, Trademark Classes are an efficient and organized why for the USPTO to manage these goods/services so that an Application can be more readily categorized and evaluated. Trademark Classes allow the USPTO to quickly assess the appropriate fees ($350.00/CL for TEAS Standard Application and $250.00/C” for TEAS Plus Application) and compare and contrast the goods/services provided in a new application against those covered by existing applications. Because there are so many goods/services available to business owners, these Classes are by design flexible and malleable, allowing certain goods/services (certainly in the Food category) to flow between multiple Classes.
According to the Trademark Manual of Examining Procedure (TMEP), the following are the currently available 45 Classes of Goods/Services;
- Cosmetics and cleaning preparations
- Lubricants and fuels
- Metal goods
- Hand tools
- Electrical and scientific apparatus
- Medical apparatus
- Environmental control apparatus
- Musical instruments
- Paper goods and printed matter
- Rubber goods
- Leather goods
- Non-metallic building materials
- Furniture and articles not otherwise classified
- Housewares and glass
- Cordage and fibers
- Yarns and threads
- Fancy goods
- Floor coverings
- Toys and sporting goods
- Meats and processed foods
- Staple foods
- Natural agricultural products
- Light beverages
- Wines and spirits
- Smokers’ articles
- Advertising and business
- Insurance and financial
- Building construction and repair
- Transportation and storage
- Treatment of materials
- Education and entertainment
- Computer and scientific
- Hotels and restaurants
- Medical, beauty and agricultural
- Personal and legal
SHOULD I SUBMIT SEPARATE SINGLE-CLASS APPLICATIONS FOR THE SAME TRADEMARK?
There are advantages to filing separate single-class applications with the USPTO.
If you submit your trademark application on an intent-to-use basis, then it would be simpler to file Statements of Use and deadline extension requests. There’s no need to divide the application before you do any of that.
And, if an examining attorney approves the mark on one class of goods, but not the others, the approved application can move forward while you work on resolving the issues with the other applications. Remember, Trademark Office Actions cover the entire application and applications with multiple classes cannot be “divided out” of the trademark application to respond to the issues presented in the office action.
Finally, there’s lower risk when renewing multiple single class registrations. It’s much easier to keep track of which products or services are still in market when it comes time to submit renewal documents.
CAN I STILL TRANSFER GOODS OR SERVICES FROM ONE SINGLE-CLASS REGISTRATION TO ANOTHER?
Yes, goods or services from one single-class trademark registration may be transferred to a companion registration. Please note that in order to do this, the registration that contains the to-be-deleted item must have been filed on or before the registration that the item will be transferred to. Ideally, of course, you want to submit multiple single-use applications for the same trademark on the same day.
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