TMEP 1609.04: Amendment of Classification

October 2017 Edition of the TMEP

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1609.04    Amendment of Classification

Classification in Registered Extension of Protection Cannot be Amended Under §7

The classification in a registered extension of protection of an international registration to the United States may not be amended under §7 of the Trademark Act. 37 C.F.R. §2.85(d); TMEP §§1401.03(d) and 1609.01(a).  However, the holder of a registered extension of protection may request to amend the registered extension of protection to surrender class(es). See TMEP §1904.13(a).

Amendment of Registration Based on §1 or §44 Application

In a registration that issued based on an application under §1 or §44 of the Trademark Act, the classification may be amended under §7 of the Trademark Act, if the requested international classification is consistent with the current version of the Nice Agreement. 37 C.F.R. §2.85(e)(3).  In such a case, the USPTO will amend the international classification and issue an updated registration certificate with the new classification noted.

The owner of a registration may reclassify registrations from multiple United States classes into a single international classification.  For example, goods in United States classes 21 and 26 often fall into only International Class 9.  Hence, an owner can request an amendment from United States classes 21 and 26 into International Class 9.  If the owner reclassifies any of the goods/services in this manner, the owner must reclassify all the goods/services in the registration to the international classification system. 37 C.F.R. §2.85(e)(3).

The amendment must include the fee required by 37 C.F.R. §2.6 for §7 amendments. 37 C.F.R §2.173(b)(1).