Multi Class Trademark Application
The USPTO allows applicants to file a single trademark application that covers numerous classes of goods and/or services. In a multi-class trademark application, the USPTO charges a filing fee for each class.
WHY FILE A MULTI-CLASS APPLICATION?
In some circumstances, filing a single application comprising many classes may be more efficient. The person preparing the application only has to enter the applicant information, the mark, and the correspondent information once with a single application. In addition, just one overseas filing deadline must be scheduled.
A multi-class application can also help the applicant save money by allowing them to pay for only one class at the time of filing. An Office Action will be issued at some point forcing the applicant to either pay for the remaining lessons or have the unpaid classes removed from the application. In some circumstances, where a partial rejection may apply to only one class, filing a multi-class application allows the applicant to delete the rejected class(es) without having to pay for the initial file.
If your products or services fall into more than one category, a multi-class application may be appropriate. Multi-class applications allow you to move particular commodities or services from one class to another with more ease. You may be able to change an item from one class to another without paying additional government costs if you file a multi-class trademark application for software that covers two or three separate classes.
WHAT ARE THE DRAWBACKS OF SUBMITTING A TRADEMARK APPLICATION WITH MULTIPLE CLASSES?
There are some disadvantages to filing a multi-class trademark application. If the filing basis for one or more classes is an Intent-To-Use, filing the Statement of Use for each class might become cumbersome and expensive if not all classes are in use. If an applicant is only ready to file a Statement of Use for one of two classes in a trademark application, the applicant must file a Request to Divide the parent application and request an extension of time for the class that has not yet been used. The candidate can also request time extensions for both classes. In either situation, the applicant will be charged extra to demonstrate usage in one class but not the other.
Due to Office Actions, registering a multi-class mark may take longer. Let’s say an application with three classes receives an Office Action that only affects one of the three classes. The approval of the entire application will be delayed while the applicant attempts to settle a problem with one of the classes, even though the other two are entirely fine.
Having a multi-class registration has several dangers. The more goods or services in a registration, the higher the likelihood of filing an inaccurate renewal stating that all goods/services are still in use. Consider the case of a single registration encompassing thirty goods across three different classes that are renewed with a declaration from the trademark owner saying that the mark has been continually used on all goods when, in fact, two specific products have been discontinued. As a result, the entire registration is at risk of being canceled.
Multi-class trademark registration may also be more vulnerable to a USPTO post-registration audit.
Multi-class applications are not permitted in some foreign countries, such as Mexico. As a result, a multi-class US filing filed abroad may result in many single-class foreign petitions.
WHAT ARE THE BENEFITS OF FILING TWO SINGLE-CLASS APPLICATIONS FOR THE SAME TRADEMARK?
- Costs of single-class trademark applications
When a mark covers multiple classes, filing separate single-class trademark applications for the same mark may be advantageous. The fees charged by the USPTO would be the same as for a multi-class application.
- Showing use or extending time in ITU applications
It would be more manageable and cost-effective to file Statements of Use. A trademark owner who files three single-class applications, for example, can file a Statement of Use for the first class in one application and asks for extensions of time in the other two. This will result in the mark being registered in the first-class sooner, avoiding the need to file any first-class extensions or Requests to Divide.
- Speedy allowance of certain classes
Filing several single-class applications also allows the trademark examining attorney to grant the classes to which he or she has no objections more quickly. Any rejections or objections applied to a specific class will not prevent the other classes from being allowed to file in their respective files.
- Lesser risks in renewing multiple single-class registrations
With single-class registrations, the chances of defective or fraudulent post-registration maintenance are considerably minimized. The validity of the other registrations would not be affected if a trademark owner renews a registration for the first class incorrectly or erroneously. To put it another way, a challenger could only try to invalidate the initial registration, not the others.
IS IT POSSIBLE TO MOVE GOODS OR SERVICES BETWEEN COMPANION SINGLE-CLASS APPLICATIONS?
Yes, goods or services from a single-class application can be transferred to a companion application if the application from which the item is to be deleted was submitted on or before the filing date of the companion application to which the item will be added. This is an exception to the normal rule that you can’t expand the scope of the goods/services’ identity beyond what was originally filed. Though the scope of the companion application to which you are adding the item has been technically expanded, the general scope of the single-class apps has not been expanded. The idea is to submit all single-class applications for the same trademark on the same day.
Because of this flexibility, filing numerous single-class trademark applications may be preferable to filing a multi-class trademark application, especially if Intent-To-Use is a filing basis for any of the classes.