810.01 Collection of Fees for Multiple Classes
A filing fee is required for each class in a multiple-class application under §1 or §44 of the Trademark Act. 37 C.F.R. §2.86(a)(2), (b)(2). The USPTO has established the following policy to ensure the collection of application filing fees from all applicants on an equitable basis.
In an application under §1 or §44, if the applicant has specifically authorized the USPTO to charge any additional fees to a deposit account, the examining attorney should ask the LIE to charge the fees, and proceed with examination of the application on the merits. If the applicant has not provided a specific authorization to charge an account, the examining attorney should attempt to contact the applicant to secure a written authorization to charge fees to a credit card or deposit account by fax or e-mail.
An authorization to charge a fee to a deposit account must be made in a written document signed and submitted by an authorized person. It cannot be entered by examiner’s amendment unless the record already contains a written authorization, signed and submitted by someone who is authorized to charge fees to the account. See TMEP §405.03 regarding deposit accounts.
If the examining attorney is able to secure a written authorization to charge fees to a credit card or deposit account, the examining attorney should have the LIE charge the necessary fees to the credit card or deposit account and proceed with examination. See TMEP §§810, 1403.02(c), and 1403.06 regarding the amount of the fee for adding classes to an application.
If an authorization to charge fees has not been provided and the examining attorney is unable to secure one, the examining attorney must issue a written Office action noting the deficiency and requiring either payment of the fees or deletion of classes. This policy applies to any application under §1 or §44 of the Trademark Act in which the applicant specifically delineates more than one class and the applicant has paid the fee(s) for less than all the classes. The delineation may be by indicating class numbers or any other means demonstrating a clear intention to seek registration in multiple classes.
In limited circumstances, the examining attorney may advise the applicant that action on the merits of the application is deferred pending receipt of the applicant’s response to the Office action requiring payment of missing fees or deletion of classes. In most cases, the examining attorney should simply act on the merits of the application and require the additional fees. For example, it would be inappropriate to defer action in a pro se application or in other cases where the applicant has in good faith attempted to pay the appropriate fees. Before issuing a letter deferring action until additional fees are paid, the examining attorney must consult with the managing attorney or senior attorney.
The filing fee for a §66(a) application will be sent to the USPTO by the IB, pursuant to the provisions of the Madrid Protocol and the Common Regulations. The examining attorney must not require additional fees during examination. The classification in a §66(a) application may not be changed and additional classes may not be added. 37 C.F.R. §2.85(d). See TMEP §1401.03(d) for further information regarding classification in a §66(a) application.