TMEP 1403.05: Refusals and Oppositions as to Less Than All the Classes in a Multiple-Class Application

This is the October 2015 Edition of the TMEP

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1403.05    Refusals and Oppositions as to Less Than All the Classes in a Multiple-Class Application

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.

When issuing a refusal or requirement pertaining to less than all the classes, the examining attorney must expressly state that the refusal or requirement that applies only to certain class(es), and indicate the class(es) to which the refusal or requirement pertains. 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) if it is otherwise in condition for approval for publication. However, if the Office action includes an advisory stating that amendment would require the payment of additional fees because the fee paid is insufficient to cover all the classes, and the applicant fails to file a response, the entire application will be abandoned. 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 application is returned to the examining attorney. The examining attorney must perform the proper database transaction to ensure issuance of registration for only the proper class(es).