1902.07(c)(i) Classification of Goods/Services
If the IB finds an irregularity in classification, it will make a proposal and send it to both the applicant and the USPTO. The notice will state whether any additional fees are due. Common Reg. 12(1). The USPTO will neither respond to the notice on behalf of applicant nor advise the applicant as to how to reclassify the goods/services.
If an irregularity notice indicates that the failure to resolve the irregularity will result in the abandonment of the international application, the applicant must respond and/or pay the necessary fees to avoid abandonment. If the irregularity notice merely indicates that “if no response, WIPO proceeds,” the applicant need not respond if applicant agrees to the proposal by WIPO.
The applicant cannot send its response directly to the IB. The applicant must submit the response through the USPTO. The IB must receive the response within 3 months of the date of the IB notification. 37 C.F.R. §7.14(b); Common Reg. 12(2). See TMEP §1902.07(f) regarding responses to notices of irregularity submitted through the USPTO.
An MPU trademark specialist will review the applicant’s response, but only to ensure that the response consists solely of an amendment to classification and that no amendments to the identification of the goods or services have been proposed. So long as the only proposed change is to classification, and such change in classification does not expand the listing of goods/services to exceed the scope of the underlying basic application or registration, the USPTO will forward it to the IB and notify the applicant accordingly. See TMEP §1902.07(c)(ii) regarding proposed amendments to the identification of goods/services.
If additional fees are due as a result of reclassification of goods/services, the applicant must pay the fees directly to the IB in Swiss currency. See TMEP §1903.02 for further information about the payment of fees to the IB.
Under Article 3(2), the IB controls classification and has the final say on classification of goods/services. The IB may modify, withdraw, or maintain its proposal after reviewing the applicant’s response. Common Reg. 12.
See also TMEP §1401.03(d).