T.M.E.P. § 1403.05
Action After Filing, Multiple Classes

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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1403.05 Action After Filing, Multiple Classes

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. If appropriate, the examining attorney should indicate the class(es) to which the refusal or requirement pertains and that the refusal or requirement does not pertain to the remaining class(es).

If an applicant fails to file a complete response to a refusal or requirement that was expressly limited to certain class(es), the application shall be abandoned only as to those class(es). 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 file is returned to the examining attorney. The examining attorney should perform the proper TRAM transaction to ensure issuance of registration for only the proper class(es).

1403.05(a) Fees for Action After Filing, Multiple Classes

In a multiple-class application or registration, a fee for each class must be paid when filing an amendment to allege use, statement of use, or request for extension of time to file a statement of use for applications under §1(b) of the 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, opposition and petition for cancellation of a registration. 15 U.S.C. §§1051, 1058, 1059, 1063, 1064, 1065 and 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 Office.

1403.05(b) Surrender or Amendment in Multiple-Class Registrations

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.