Can you file a multi-class trademark application in the US?
Yes, the USPTO allows applicants to file a single trademark application covering goods and/or services spanning multiple classes. The USPTO filing fee is charged for each class in a multi-class trademark application.
Why file a multi-class application?
In certain cases, it might be more efficient to file a single application containing more than one class. With a single application, the one preparing the application has to enter only once the applicant information, the mark and the correspondent information. Also, only one foreign filing deadline needs to be docketed.
A multi-class application can also preserve cash flow by enabling the applicant to pay for only a single class at the initial filing. An Office Action will eventually be issued requiring the applicant to either pay for the remaining classes or delete the unpaid classes from the application. In certain cases where a partial rejection may potentially be applied to only a particular class, filing a multi-class application enables the applicant to delete the rejected class(es) without ever having to pay for the initial filing.
A multi-class application may make sense if your goods or services could fall under a couple of different classes. Multi-class applications provide more flexibility in moving certain goods or services from one class to another. For example, if you file a multi-class trademark application for software covering two or three different classes, you may be able to move an item from one class to another without paying additional government fees.
What are pitfalls of filing a multi-class trademark application?
A multi-class trademark application may have certain drawbacks. If an Intent-To-Use is the filing basis for one or more classes, filing the Statement of Use for each class can get complicated and expensive if not all classes are in use. Suppose an applicant is ready to file the Statement of Use for only one of two classes in a trademark application, the applicant would need to file a Request to Divide the parent application and extend the time for the class not yet in use. Alternatively, the applicant can file extensions of time for both classes. In either case, the applicant will pay more fees to show usage in one class but not the other.
It may take more time to register a multi-class mark due to Office Actions. Suppose an application containing three classes receives an Office Action raising an issue with only one of the three classes. The allowance of the entire application will be delayed as the applicant seeks to resolve the issue with the one class even though the other two classes are perfectly acceptable.
Maintaining a multi-class registration carries certain risks. The greater the number of goods or services in a registration, the higher the likelihood of filing an inaccurate renewal stating that all goods/services are still in use. Suppose a single registration containing thirty goods spanning three different classes, for example, is renewed with a declaration by the trademark owner stating that the mark has been continuously used on all the goods when in fact two particular products are no longer in use. This makes the entire registration vulnerable to cancellation.
A multi-class trademark registration may also carry a greater risk of a post registration audit by the USPTO.
Certain foreign countries, such as Mexico, do not permit multi-class applications. Accordingly, the foreign filing of a multi-class US filing may ultimately lead to multiple single-class foreign applications.
What are advantages of filing separate single-class applications for the same mark?
Costs of single-class trademark applications
When a mark covers multiple classes, it may be to the applicant’s advantage to file separate single-class trademark applications for the same mark. The USPTO fees would be no greater than that of a multi-class application.
Showing use or extending time in ITU applications
Filing Statements of Use would be more manageable and cost-effective. For example, a trademark owner who files three separate single-class applications can file a Statement of Use in one application for the first class and file requests for extensions of time in the other two applications. This will lead to an earlier registration of the mark in the first class and avoid the necessity to file any extensions for the first class or Requests to Divide.
Speedy allowance of certain classes
Filing multiple single-class applications also enables a speedier allowance of the classes to which the trademark examining attorney has no objections. Any rejections or objections applied to a particular class will not hold up the allowance of the other classes which have been separated into their own filings.
Lesser risks in renewing multiple single-class registrations
The risks of any faulty or fraudulent post-registration maintenance are greatly reduced with single-class registrations. To the extent a trademark owner renews a registration for the first class inaccurately or falsely, the validity of the other registrations would still be intact. In other words, a challenger could seek to invalidate only the first registration, but not the others.
Can goods or services be moved between companion single-class applications?
Yes, goods or services from one single-class application may be moved to a companion application if the application from which the item is to be deleted was filed on or before the filing date of the companion application to which the item will be added. [See TMEP 1402.08]. This is an exception to the general rule that you cannot broaden the original scope of the identification of the goods/services as initially filed. Though you are technically broaden the scope of the companion application to which you are adding the item, the overall scope of the totality of the single-class applications has not been broadened. The key is to file all the single-class applications for the same mark on the same filing date.
This flexibility can make the filing of multiple single-class applications more desirable than filing a multi-class trademark application, especially if Intent-To-Use is a filing basis for any of the classes.
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