T.M.E.P. § 1401.03
Designation of Class

Executive summary:

This document contains one section of the Trademark Manual of Examining Procedure (the "TMEP"), Fourth Edition (April 2005). This page was last updated in June 2007. You may return to one either the section index, or to the key word index. If you wish to search the TMEP, simply use the search box that appears on the bottom of every page of BitLaw--be sure to restrict your search to the TMEP in the pop-up list.

For more information on trademark law, please see the Trademark Section of BitLaw.

Previous Section (§1401.02) | Next Section (§1401.04)

1401.03 Designation of Class

In an application for registration of a mark, the applicant or the applicant's attorney should designate the international class number(s) that are appropriate for the identified goods or services whenever the information is known. 37 C.F.R. 2.32(a)(7). See TMEP §1401.02(a) for the international classification schedule with explanatory notes.

In an application under §1 or §44, incorrect classification will be corrected by amendment. See TMEP §1401.03(b).

1401.03(a) Designation of Class by Applicant Normally Accepted in Applications Under §§1 and 44

Sometimes a product could be classified in more than one class. Some products are classified differently depending on the type of material of which the product is composed. For example, plastic statuettes are in Class 20 while glass statuettes are in Class 21. Generally, in applications under §1 or §44 of the Trademark Act, the Office will presume that the class number designated by the applicant or the applicant's attorney is correct in the absence of any contradictory information. The applicant may be asked for further clarification for classification of goods of this type during the examination of the application.

1401.03(b) Designation of Class by Office When Class Number Is Not Designated or Is Inaccurate in Application Under §1 or §44

In an application under §1 or §44 of the Trademark Act, if the applicant does not designate a class number(s), the Office will do so. If the class number(s) indicated by the applicant is clearly wrong (e.g., goods are classified in a service class), the Pre-Examination Section of the Office will change the classification. The filing receipt for the application will indicate the class number(s) that have been designated.

Upon examination, the classification must be amended if the class numbers are incorrect. When the examining attorney requires or recommends an amendment of the identification of goods or services that would necessitate an amendment of the classification, the examining attorney should also require that the classification be amended.

If an incorrect class number was designated by the Pre-Examination Section, the examining attorney must inform the applicant of the correct class number for the identified goods or services and require amendment of the classification.

Amendment or correction of classification may be done through an examiner's amendment, without prior authorization by the applicant or the applicant's attorney. Groening v. Missouri Botanical Garden, 59 USPQ2d 1601 (Comm'r Pats. 1999). See TMEP §707.02.

Before approving an application for publication, the examining attorney should check to make sure that the properly assigned class is reflected in the electronic records of the Office.

1401.03(c) Failure to Classify May Delay Action in Applications Under §§1 and 44

The applicant should make an initial effort at classification, using the Alphabetical List of Goods and Services. In an application under §1 or §44 of the Trademark Act, when an application and fee is filed for a single class, but the identification lists a large number of items that obviously involve many classes, the examining attorney will require the applicant to properly classify the items. Class designations must be determined and fees for multiple classes must be paid before an examining attorney does an extensive search in a large number of classes. TMEP §810.01.

1401.03(d) Classification Determined by World Intellectual Property Organization in §66(a) Applications

In an application under §66(a) of the Trademark Act, i.e., a request for protection of an international registration to the United States pursuant to the Madrid Protocol, the International Bureau of the World Intellectual Property Organization ("IB") controls classification. Article 3(2) of the Protocol. The §66(a) application (and any resulting registration) remains part of the international registration, and a change of classification in the United States would have no effect on the international registration. Therefore, the international classification of goods/services in a §66(a) application cannot be changed from the classification given to the goods/services by the IB, even if the IB's classification of goods/services in the §66(a) application is different from the classification set forth in the USPTO's Acceptable Identification of Goods and Services Manual.

Accordingly, if the mark in a §66(a) application appears to be a certification or collective membership mark, the USPTO will not reclassify it into U.S. Class A, B or 200. However, the applicant must comply with all other U.S. requirements for certification and collective membership marks, regardless of the classification chosen by the IB. See TMEP §§1304 et seq. and 1306 et seq.

For purposes of identification of goods/services, the examining attorney will examine a §66(a) application according to the same standards of specificity used in examining applications under §1 and §44 of the Trademark Act. That is, the examining attorney must follow the procedures set forth in the TMEP §and identify the goods/services in accordance with the USPTO's Manual of Acceptable Identification of Goods and Services (see TMEP §1402.04) whenever possible.

See also TMEP §§1402.01(c) and 1902.07(c)(i).