Preface
This brief note is not legal advice and is for educational purposes only.
Brief Discussion
When you file a trademark application you need to disclose the goods or services you are providing and a Class that you want to register in. A Class is a grouping of similar goods/services to distinguish it from other goods/services. For example, if there were only one class then registering a trademark for “Ace” would prohibit “Ace” Hardware and “Ace” Towels from each using “Ace”. There currently are 34 International Classes for goods, and 11 International Classes for services – see our Brief Note “Trademark – International Classifications” for more on classes.
Many amateurs and Legal Service Companies that file trademarks often file a single application for a variety of classes which is called a multiple-class application. This is not a problem if there are no office actions and the trademark is allowed to issue for all the different classes. HOWEVER, if a single class has an objection and is held up for any reason, ALL classes are held up as they’re all in a single application. Probably NOT what you want. That is, for the classes that do not have a problem, you’d like them to issue and handle any problem ones separately, not hold up all.
Well, if you run into this situation (more likely with more classes), you can file what’s called a Request to Divide in which you split up the classes into separate applications so that the ones with no problems get issued. (See TMEP §1110.04 regarding the form and processing of requests to divide, and see TMEP 1110.08: Dividing an Application when Response to Office Action Is Due) The original application is the parent and split off ones are children. Note that for any outstanding office action you must reply for all even if divided up (37 C.F.R. §2.87(e)). Best practice is to file a response first and then divide, however if an examiner’s amendment can be entered this order may not need to be retained.
When filing a Request to Divide Application the easiest way is via the Trademark Electronic Application System (TEAS). Don’t forget the divide request fee – currently $100.
Conclusion
When filing for a trademark for multiple classes, file one application per class so that any objections do not hold up the other trademark applications. It does not cost more and in fact will save expenses in the event you would need to file a Request to Divide Application.
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