Why File Single Class Instead of Multiclass Trademark Applications?

How do you register a trademark for a lot of goods and services?

Suppose you wish to register a trademark for several goods or services, and those products fall under different USPTO trademark classes. Should you file single class trademark applications? Unlike certain foreign countries, the USPTO allows multi-class trademark applications that can cover a variety of goods and services. So should you file a multiclass application or separate single class applications?

Need to register a trademark for multiple classes of goods or services? Contact US patent and trademark attorney Vic Lin at (949) 223-9623 or email vlin@icaplaw.com to explore how we can help you protect your trademark rights.

Multiclass vs. single class trademark applications

A multiclass trademark application can provide certain efficiencies at the initial filing. For example, the applicant information will be entered only once. Unfortunately, the efficiency of a multiclass application can frequently end after the initial filing.

One major drawback of a multiclass application is the greater risk of an Office Action rejection. The more classes found in an application, the higher the risk that a refusal may apply to at least a subset of the products. If an Office Action is issued in a multiclass application, the entire application is put on hold. An applicant would need to file a Request to Divide in order to register the mark with respect to the allowable products.

Let’s be clear. Whatever goods that would get rejected in a multiclass application would have the same risk of being rejected in a single class application. As far as the objectionable products are concerned, the risk is not lower in a single class application. The difference lies in the allowable products. By filing multiple single class applications, the allowable classes can proceed to registration without delay.

Lesser risk of delay with single class trademark applications

The normal wait time for a USPTO trademark application is bad enough at approximately 8 to 11 months. What inexperienced filers might not realize is that a trademark application can be suspended, often for years, due to a prior-filed application.

In other words, an earlier-filed application for a similar mark can block your trademark application for a ridiculously long time. The fact that you have an earlier date of first use would be futile in arguing against the prior-filed application. Any arguments about earlier trademark use can only be raised in an opposition, and it can take years before a prior-filed application might eventually be eligible to be opposed.

Suppose your trademark covers two classes, one for goods and the other for services. For example, you want to protect cover clothing in 25 and online retail services in Class 35. While it is certainly possible that both classes might get rejected, let’s assume that only the clothing is objectionable. By filing single class trademark applications, only your Class 25 application will be rejected. Your Class 35 application will get approved without delay.

Can a multiclass trademark application end up costing more?

One of the biggest draws of filing a multiclass application is the cost savings, especially at the initial filing. USPTO fees remain the same since they are charged per class, but attorney fees vary widely. Everybody likes the idea of saving money.

What may not be evident upfront is that a multiclass application can end up costing more. Here are some common situations that can lead to higher costs. Suppose one class gets rejected, and you end up having to file a Request to Divide. In addition to the cost, you may have delays in the USPTO processing your divided applications.

Another possibility is when you file an Intent-To-Use application, and the deadline for filing a Statement of Use is approaching. What if you have usage for only a particular class, but not the others? Are you going to file a Statement of Use for one class and delete the classes not in use? Will you file a Request to Divide? What many ITU applicants end up doing is filing an extension across the board for all classes.

Had single class trademark applications been filed, extensions would have been required for only those classes not in use. You can proceed to file a Statement of Use for the one class already in use. This avoids the additional costs of filing extensions or a Request to Divide.

Bottom line: File single class applications

If we had to pick, we would choose single class trademark applications over a multi-class application unless there were compelling reasons that outweighed the latter’s risk of delay and potentially higher costs.

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