T.M.E.P. § 1401.04
Classification Determines Number of Fees

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.

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1401.04 Classification Determines Number of Fees

Extract from 15 U.S.C. 1112. The applicant may apply to register a mark for any or all of the goods or services on or in connection with which he or she is using or has a bona fide intention to use the mark in commerce: Provided, That if the Director by regulation permits the filing of an application for the registration of a mark for goods or services which fall within a plurality of classes, a fee equaling the sum of the fees for filing an application in each class shall be paid, and the Director may issue a single certificate of registration for such mark.

Classification is the basis for determining the number of fees that must be paid. In an application under §1 or §44 of the Trademark Act, fee is required for each class.

In an application under §1 or §44, if the application sets forth goods or services in more than one class and only one fee has been paid, the applicant must either amend the application to restrict the goods or services to a single class or submit a fee for each additional class to prosecute the application as a multiple-class application. The fees for multiple classes must be paid before an examining attorney does an extensive search in a large number of classes. TMEP §810.01.

If, with the original application, the applicant submits fees for more classes than are validly represented in the application, the fees that have been overpaid in error will be refunded.

In a §66(a) application, the amount of the filing fee will be determined by the IB, who will collect the fee and send it to the USPTO pursuant to the provisions of the Madrid Protocol and the Common Regulations Under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to That Agreement (April 1, 2004) ("Common Regs."). The examining attorney will not question the sufficiency of the filing fee in a §66(a) application. The classification in a §66(a) application cannot be changed, and classes cannot be added. See TMEP §1401.03(d) for further information.

1401.04(a) Prior U.S. Classification System

Prior to the adoption of the International Classification in 1973, the U.S. Classification was the primary classification used in the Office. After adoption of the International Classification, the U.S. Classification became a secondary classification system. United States classes are still assigned to all applications by a computerized system. Each international class is coordinated with the U.S. classes that are most frequently associated with it. Neither examining attorneys nor any other Office personnel have the authority or capability of altering these automatically assigned secondary U.S. Classification designations.

1401.04(b) Limiting Goods and Services to the Number of Classes for Which Filing Fees Are Paid

An application may list, in connection with each international class number designated, only goods or services that fall within that class. An applicant may apply to register a mark for any or all of the goods/services on or in connection with which the applicant is using or has a bona fide intent to use the mark in commerce, if the applicant submits a filing fee for each class. See 15 U.S.C. 1112; 37 C.F.R. 2.86(a). An application that includes more than one class of goods or services is called a combined or multiple class application. See TMEP §§1403 et seq.

The applicant should designate only the number of classes for which a filing fee is submitted and should limit the specified goods and services to those within the particular class(es) designated. Thus, if a single filing fee is submitted, the applicant should designate only one class and should limit the goods or services specified in the identification to items in that class.

The examining attorney must require any necessary amendments to ensure that the classification is correct for the specified goods or services. In an application under §1 or §44 of the Trademark Act, if the applicant identifies goods or services that are classified in a greater number of classes than the classes for which filing fees have been paid, the examining attorney must require that the applicant either: (1) pay the additional fees; or (2) amend the identification to restrict the application to the number of classes for which fees have already been paid. See TMEP §§810.01 and 1403.02(c).

In a §66(a) application, the amount of the filing fee will be determined by the IB, who will collect the fee and send it to the USPTO, pursuant to the provisions of the Madrid Protocol and the Common Regs. The examining attorney will not question the sufficiency of the filing fee in a §66(a) application. The classification in a §66(a) application cannot be changed, and classes cannot be added. See TMEP §1401.03(d).