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

This is the October 2015 Edition of the TMEP

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1401.03(a)    Designation of Class by Applicant Normally Initially 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, or a particular use of the product. For example, plastic statuettes are in Class 20 while glass statuettes are in Class 21; reagents for research purposes are in Class 1 while reagents for medical use are in Class 5. Generally, in applications under §1 or §44 of the Trademark Act, prior to their assignment to an examining attorney, the USPTO retains the class number designated by the applicant, in the absence of any information clearly contradicting that classification. The applicant may be asked for further clarification for classification of goods of this type during the examination of the application. If the wording in the identification is broad enough to encompass more than one class, amendment will be required. See In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541 (Fed. Cir. 2007) (“chronographs” held indefinite because it includes both time recording devices in Class 9 and watches in Class 14). Also, if the examining attorney determines that the class designated by the applicant is incorrect, the examining attorney will require reclassification.