TMEP 1904.02(b): Examination of Classification of Goods/Services in §66(a) Applications

October 2017 Edition of the TMEP

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1904.02(b)    Examination of Classification of Goods/Services in §66(a) Applications

In a §66(a) application, the IB controls the classification.  Article 3(2).  The §66(a) application (and any resulting registration) remains part of the international registration, and a change of classification in the United States would have no effect on the international registration.  Any classification change made during examination would ultimately be refused by the IB upon notification of the final grant of protection.

Therefore, in a §66(a) application, the following types of amendments are prohibited:

  • Changing classification (unless such change is to agree with a notice of correction from the IB that specifically changes classification);
  • Adding a class to the application that is not the subject of the request for extension of protection to the United States; or
  • Transferring goods/services between classes in a multiple-class application.

37 C.F.R. §2.85(d);  see TMEP §1401.03(d).

The only instance in which classification in a §66(a) application may be altered is upon the receipt of a correction from the IB.  See TMEP §1904.02(e)(i) regarding IB corrections.

If the classification of a §66(a) application is inadvertently changed during examination, the USPTO will issue corrections to the holder and to the IB.