TMEP 1403.01: Requirements for Combined or Multiple-Class Applications

October 2017 Edition of the TMEP

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1403.01    Requirements for Combined or Multiple-Class Applications

In addition to the requirements for a trademark, service mark, collective mark, or certification mark application ( see TMEP §§801-806.01(e), 1303.01, 1304.02, 1306.02), a multiple-class application must contain the following:

  • (1) Class Designations: For a §1 or §44 multiple-class application, the class numbers for which registration is sought, and the goods/services/collective membership organization appropriately classified in each class. 37 C.F.R. §2.86(a)(1), (b)(1). The classes must be set forth in consecutive numerical order beginning with the lowest number, and the goods/services/collective membership organization must be listed in association with their class number.  Setting out the classes and the goods/services/collective membership organization in tabulated form rather than narrative form is recommended because it adds clarity.  For a §66(a) multiple-class application, the classes are assigned by the International Bureau. 37 C.F.R. §2.86(a)(1), (b)(1).
  • (2) Filing Fees: A filing fee for each class. 37 C.F.R. §§2.6(a)(1), 2.86(a)(2), (b)(2); see TMEP §§810.01, 1403.06.
  • (3) Section 1(a) Application: For an application filed under §1(a) of the Act:
    • (a) Dates of use: The dates of first use and first use in commerce for each class. 37 C.F.R. §2.86(a)(3), (b)(3). If the dates are the same for all the classes, the dates may be stated once, with the statement that the mark was first used on said dates in connection with the goods/services/collective membership organization in all the classes. If the dates of use differ for different classes, the appropriate dates for each class must be specified separately. The dates may be set forth in separate clauses, sentences, or paragraphs, or in tabular form, whichever will give complete information in the clearest way under the circumstances.
    • (b) Specimens: One specimen supporting use of the mark for each class. 37 C.F.R. §2.86(a)(3), (b)(3). If a single specimen supports multiple classes, the applicant may so indicate, and the examining attorney need not require multiple copies of the specimen. The examining attorney should enter a Note to the File in the record, indicating which classes the specimen supports.
  • (4) Section 1(b), 44, or 66(a) Application: For an application filed under §1(b), §44, or §66(a) of the Act, a statement that the applicant has a bona fide intention to use the mark in commerce, for a trademark or service mark, or a statement that the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce, for collective or certification marks, for each class. 37 C.F.R. §2.86(a)(3), (b)(3).

In a §1(b) application, prior to registration, the applicant must file an allegation of use under 15 U.S.C. §1051(c) or 15 U.S.C. §1051(d) that states the mark is in use in commerce on or in connection with the goods/services/collective membership organization; and includes dates of use, the filing fee for an allegation of use for each class, and one specimen evidencing use of the mark for each class. 37 C.F.R. §2.86(e).  See 37 C.F.R. §2.76 and TMEP §§1104-1104.11 regarding amendments to allege use and 37 C.F.R. §2.88 and TMEP §§1109-1109.18 regarding statements of use. An applicant may not file an allegation of use until the applicant has used the mark in connection with all the goods/services/classes in the application, unless the applicant also submits a request to divide the application under 37 C.F.R. §2.87. 37 C.F.R. §2.86(e).

Further, an applicant may not claim both §1(a) and §1(b) for identical goods or services in the same application. 37 C.F.R. §2.86(c).

Additionally, an applicant may not apply for a certification mark and a trademark, service mark, or collective mark in the same application. 37 C.F.R. §§2.45(f), 2.86(d). See TMEP §1306.04(f) for more information on restrictions to certification marks.