Multi-Class Application Requirements are included in Office Actions when your applied-for goods or services could fit within additional Classes – and you haven’t paid for those additional Classes!
So, what does this mean?
As background, there are 45 Classes for Goods and Services.
Suppose in your initial application, you submitted the wording “Clothing” in Class 25. And you only paid for one class.
Well, clothing is a broad term, and fits within multiple classes. For instance, it could mean “t-shirts” in Class 25. Or it could mean “Doll clothing” in Class 28.
So, that’s a problem. The USPTO might recommend two potential classes, like Class 25: Clothing, namely, t-shirts, and Class 28: Doll clothing.
Or, let’s say you applied for the following two goods, all in Class 25: T-shirts, doll clothing. And you only paid for one class.
Well, “doll clothing” should have been placed in Class 28. So, that’s a problem, too. The USPTO will respond by showing how these goods are in two different classes.
In these cases, where the wording of my goods or services could fit within multiple classes, and I haven’t paid for the additional class or classes, the USPTO will issue Multi-Class Application Requirements.
What this basically means is that your application actually falls within multiple classes, and you have some decisions to make.
Specifically, you need to decide whether you want to add – and pay for – another Class.
So, in this case, let’s say I do want to include “doll clothing” in Class 28.
Well, I can’t just add another Class without fulfilling all the requirements for that Class.
First, I would have to pay an additional fee for adding Class 28.
Second, if I’m already selling or providing those goods or services, I would also have to provide proof in my Response.
For instance, if I’m already selling doll clothing, and I hadn’t already provided a specimen - or proof - in the initial application that showed I’m selling doll clothing with my trademark, I would now need to provide that specimen in my Response. You can review the video on Specimens for appropriate specimens.
But if you’re not already selling or providing those goods or services, you wouldn’t need to provide that proof at this point. So, if I’m not yet selling doll clothing, I wouldn’t provide that proof at this stage - although eventually you will have to do so in order to get a registered trademark.
But what if I don’t actually want to include “doll clothing” in my application?
That’s totally fine!
You would just move forward then with the Class or Classes you already paid for. You would just want to make sure that you respond by correcting the issue.
So, in the first example, which had broad language of “clothing” in class 25, you’d want to make sure to respond with more specific examples of “Clothing” that only fits within Class 25, such as t-shirts. Other more specific examples could include jeans or pants. That way, there’s no more language that could also fit within Class 28 in your response, such as doll clothing.
Now let’s discuss the second example, where you included “t-shirts; doll clothing” in Class 25, even though “doll clothing” should have been in Class 28.
If you don’t want to add and pay for Class 28, you’d simply delete that problematic wording from your application. So, you’d delete “doll clothing”, and move forward with the remaining language in Class 25 of t-shirts!
To recap, Multi-Class Application Requirements occur when your goods or services could fall into an additional Class or Classes that you hadn’t paid for.
You now have a choice.
You can add the recommended Class or Classes, and pay extra fees for each added Class. In that case, remember that if you’re already providing or selling the goods or services, you’d need to also respond with Specimens – or Proof – showing that you’re selling the goods or services specified in the additional class.
Or, you can decide that you don’t want to add any additional Classes! In that case, you want to respond with an amended identification of goods or services that only specifies goods or services in the applied-for class, and doesn’t fit within additional Classes. You can also simply delete the problematic wording altogether.
You can also review the “Amended Classification and Identification of Goods and Services” video or “Amended Identification of Goods and Services” video for more tips.
