When filing a trademark application it is important to properly identify the goods and services and to understand the trademark rules pertaining to classification found in the Trademark Manual of Examining Procedure ("TMEP"). Different rules will apply depending on what filing basis is indicated for your goods and services. Please refer to our webpage entitled, Determining Which Filing Basis Is Appropriate For Your U.S. Trademark Application for more information on this topic. In a trademark application filed under §1 or §44 of the Trademark Act, if the applicant does not properly designate a class number, the United States Patent and Trademark Office ("USPTO") will do so. Upon examination of an application under §1 or §44, the examining attorney will recommend an amendment of the identification of goods and/or services to fit under the class selected by the applicant if the identification does not broaden the scope of the original goods or services or will require an amendment in the classification. In fact, the examining attorney may amend or correct the classification through an examiner's amendment.
However, if an application is filed under §66(a) (meaning a holder of an international registration seeks trademark protection in the U.S.) of the Trademark Act, different rules for classifications will apply. An international registration may be obtained through the international registration system that is administered by the International Bureau ("IB") of the World Intellectual Property Organization ("WIPO") in Geneva, Switzerland. The Protocol Relating to the Madrid Agreement concerning the International Registration of Marks ("Madrid Protocol") is an international treaty that allows trademark owners to seek registration in any of the member countries that have joined the Madrid Protocol. The Madrid Protocol became effective in the U.S. on November 2, 2003. When a holder of an international trademark registration requests protection in the U.S., the U.S. refers to it as a 66(a) application. The remainder of this page will address 66(a) applications and identifications.
In a trademark application under 66(a) of the Trademark Act the IB controls classification. The classification cannot be changed from the classification assigned by the IB, unless the IB directly corrects the classification, see TMEP 1401.03(d). Classifications cannot be added and goods and services cannot be transferred from one class to another class in a multiple class application. However, the USPTO has the discretion to determine the particularity required to clearly identify the goods and services in an international registration.
A common scenario is that the USPTO finds the identification of goods and services indefinite, but within the scope of the classification. If this occurs, the Examining Attorney will require an amendment of the identification wording that remains within the scope of the class. For example, if the identification in the international registration were "consultation services" in class 36, this would be considered too broad, and would perhaps need a more narrow description such as financial consultations.
A less common scenario is that the identification is indefinite and there appears to be no goods or services within the scope of the identification as currently worded within the classification. If this occurs, the applicant has to submit an acceptably definite identification. This will require the amended wording to be within the scope of the original goods and services. Once the applicant amends the language of the identification and the U.S. Examining Attorney finds it acceptable, the amendment replaces any previous identification of the goods and/or services in the extension request, and restricts the scope of goods and/or services to the amended id.
In yet a third scenario, if the U.S. Examining Attorney believes there is an error in classification, he or she may suggest that the applicant contact the IB to request correction of the international registration. The applicant would then need to obtain a copy of its request for correction to the IB, and provide it to the U.S. Examining Attorney in order to properly request the U.S. prosecution be suspended while this issue is resolved. An applicant may also appeal the final identification requirements to the Trademark Trial and Appeal Board, see TMEP §1501.01 (for matters that may be appealed). The Madrid Protocol requires that the goods and services of the international application be classified according to the Nice Agreement. Since the IB uses the edition of the Nice Agreement that is in effect at the time the international registration is sought, the classes and descriptions should be relevant only to the specific goods and services identified in the international registration. In other words, the IB's identification should not be relied upon for precedential value in any later filed application. If you have questions, regarding an identification in a 66(a) application or in another trademark application, please feel free to contact the firm.