Trademark owners have the option to file one trademark application per class of goods or services or file one trademark application with all the goods and services used in connection with the mark.
What is a Multiple Class Trademark Application
The United States Patent and Trademark Office (USPTO) follows the international trademark classification system. The international trademark classification system separates goods and services into forty five different “Classes.” Each class of goods and services try to keep related goods all in one class. For example, clothing and shoes are in Class 25 and legal services are in Class 45.
Many trademarks are used in connection with goods and/or services in more than one Class. When a trademark owners use a trademark in multiple Classes and apply for a trademark application, they can choose to file one application that covers all the goods and/or services they use the trademark in connection with. Conversely, a trademark owner can elect to file a separate trademark application for each Class of goods or services.
For example, beer is in Class 32 and restaurant services, such as a bar, are in Class 43. So a brewery that sells beer and has an attached restaurant (brew pub), can file one trademark application in Class 32 for beer and one application in Class 43 for its brew pub; or it can file one multi-class trademark application in Classes 32 and 43.
Lastly, the cost for filing a trademark application is $225 per Class of goods or services. So in the example above, file two applications would cost $450. Filing one multi-class application would also cost $450 because each Class of goods and services costs $450.
Trademark registration for MAJOR LEAGUE BASEBALL in ten different Classes of goods
Benefits of a Multi-Class Trademark Application
Since the costs are the same because owners are charged per class of goods or services rather than per trademark application, whether to file multiple applications or a multi-class application comes down to several other factors. There are several benefits to filing a multi-class trademark application rather than filing individual applications for each Class of goods or services used in connection with the mark.
Simplicity of One Application
Filing only one multi-class trademark application makes the application process easier. The trademark application is given one application number, assigned to only one Examining Attorney, and all communication with the USPTO is cut in half (or more depending on how many Classes are applied for).
When a trademark owner, or their trademark attorney, files an application, it is assigned a serial number and given to an Examining Attorney for review. Tracking only one application is easier than multiple applications.
For example, there is only communication between the USPTO and the trademark owner, or their trademark lawyer, for one trademark application. For every application filed, the amount of communication, documents and more will double or triple or quadruple depending on how many applications are filed. Keeping track of multiple applications can be a lot, especially for people who file their trademark application pro se, i.e. without trademark counsel.
Only One Renewal Date
After a trademark registers, the trademark owner, or their trademark attorney, needs to file maintenance and renewal documents between years five and six and nine and ten. Another benefit to filing one multi-class application rather than multiple single application trademark applications is there is only one renewal date to keep track of after the mark registers.
Keeping track of multiple renewal dates is more difficult than only keeping track of one date. This is especially true for trademark owners without trademark counsel tracking the renewal dates and deadlines.
Trademark Attorney Fees may be Less
Although the costs of filing a multi-class trademark application or individual applications for each Class of goods or services is the same at the USPTO, trademark attorneys may charge for each application they file regardless of how many classes are in the application. In other words, a trademark lawyer may charge a flat fee price per application filed regardless if it is for multiple classes or one class. Therefore, it may cost less to have a trademark lawyer file one multi-class application rather than multiple applications.
Drawbacks of a Multi-Class Trademark Application
Despite the several benefits of filing a multi-class application, in many situations it is more practical to file a one trademark application for each individual class of goods or services. Generally, large companies with in-house trademark counsel prefer the approach of filing one trademark application per trademark per class of goods or services. This creates larger trademark portfolios, which are harder to manage. However, for a large company with in-house counsel managing the trademark portfolio and all the renewals, it is easier to manage a larger trademark portfolio.
Intent to Use Classes
Often times, trademark owners begin using their trademark in connection with one Class of goods or services with plans to expand use of their mark into additional classes. Trademark owners can file applications based on “use in commerce,” in part, and “intent to use,” in part, in a trademark application. However, when one whole class of goods or services is based on an intent to use, it makes more sense to file a separate application for that Class because the class filed based on an intent to use will delay the whole application from becoming registered. The trademark application filing basis can determine how to file.
One Class Stops Whole Application
Another issue with filing a multi-class application rather than individual applications for each Class of goods or services is because if the Examining Attorney finds an issue with one class listed in the application, the whole application will be delayed for registration. For example, the Examining Attorney may issue an Office Action due to a misclassification of goods or services based on one class. The issuance of an Office Action can delay an application for months. The more Classes in an application, the more likely something in the application will be wrong and an Office Action will be issued.
Renewals Need Specimen for Each Class
One last issue with a multi-class trademark application is come renewal time, the trademark owner must submit a specimen for each class of goods and services and confirm current use for all the identified goods and service. When an application has many different Classes of goods to services, the renewal process can be bogged down by trying to get proper specimens for one Class or confirm use of all the identified goods or services in a Class.
If multiple applications are filed, a trademark owner, or their counsel, can file early for trademark registrations that are clearly in use for all the identified goods and a specimen is readily available. Then the trademark owner and their trademark counsel can spend more time searching down the relevant specimen and confirming what services are still in use in connection with the mark.
Do you have any questions about multi-class trademark applications? Or whether a multi-class application is right for you, contact us today.