Classification Determined by World Intellectual Property Organization in §66(a) Applications

37 C.F.R.  Section 66(a) applications and registered extensions of

protection.

In an application under section 66(a) of the Act or

registered extension of protection, the classification cannot be changed from the

classification assigned by the International Bureau of the World Intellectual

Property Organization, unless the International Bureau corrects the

classification.  Classes cannot be added, and goods or services cannot be

transferred from one class to another in a multiple-class application.

In an application under §66(a) of the Trademark Act,

15 U.S.C. §1141f(a)

,  i.e., a request for protection of an

international registration to the United States pursuant to the Protocol Relating to

the Madrid Agreement Concerning the International Registration of Marks (Madrid

Protocol), the International Bureau of the World Intellectual Property Organization

(IB) controls classification. Madrid Protocol Article 3(2).  The IB classifies the

goods and services in the appropriate classes of the

International

Classification of Goods and Services for the Purposes of the Registration of

Marks

in effect at the time international registration is filed at the

IB. Subject to the conformity of the international application with other applicable

requirements, the international registration will be issued in accordance with the

classification and grouping that the IB considers to be correct.

Regulations

Under the Protocol Relating to the Madrid Agreement Concerning the International

Registration of Marks

, Rule 12(9). The USPTO will be notified of the

edition of the Nice Agreement used and it will be listed in the request for extension

of protection.

See

TMEP §§1401.10(a)

,

1402.01(c)

.

The §66(a) application (and any resulting

registration) remains part of the international registration, and a change of

classification in the United States would have no effect on the international

registration

rks

, Rule 12(9). The USPTO will be notified of the

edition of the Nice Agreement used and it will be listed in the request for extension

of protection.

See

TMEP §§1401.10(a)

,

1402.01(c)

.

The §66(a) application (and any resulting

registration) remains part of the international registration, and a change of

classification in the United States would have no effect on the international

registration.  Therefore, the international classification of goods and/or services

in a §66(a) application

cannot be changed

from the classification given

to the goods or services by the IB, even if the IB’s classification of goods or

services in the §66(a) application is different from the classification set forth in

the ID Manual.  Classes may not be added, and goods or services may not be

transferred from one class to another in a multiple-class application.

37 C.F.R. §2.85(d)

.

Accordingly, if the mark in a §66(a) application

appears to be a certification or collective membership mark, the USPTO

will

not

reclassify it into United States Class A, B, or 200.  However, the

applicant must comply with all other United States requirements for certification and

collective membership marks, regardless of the classification chosen by the IB. See

TMEP

§§1304

et seq.

, regarding collective membership marks,

§§1306

et seq.

regarding certification marks, and

§1904.02(d)

regarding §66(a) applications for these types of marks. See

TMEP

§1904.02(c)(v)

regarding the effect of indicated classes in

registered extensions of protection and published applications under §66(a).

For purposes of

identification

of

goods or services, the examining attorney will examine a §66(a) application according

to the same standards of specificity used in examining applications under §1 and §44

of the Trademark Act.  That is, the examining attorney must follow the procedures set

forth in the TMEP and identify the goods or services in accordance with the ID Manual

guidance in effect on the filing date of the request for extension of protection

examining attorney will examine a §66(a) application according

to the same standards of specificity used in examining applications under §1 and §44

of the Trademark Act.  That is, the examining attorney must follow the procedures set

forth in the TMEP and identify the goods or services in accordance with the ID Manual

guidance in effect on the filing date of the request for extension of protection. See

TMEP §1904.01(b)

concerning the filing date

of a request for extension of protection of an international registration to the

United States.

See also

TMEP

§§1401.10(a)

,

1904.02(c)

.

With respect to certification marks, the

identification of goods or services in a certification mark application under §66(a)

must describe the goods and/or services of the party who will receive the

certification, not the activities of the certifier/owner of the certification mark.

In such an application, the goods or services that are certified may be identified

less specifically than in an application for registration of a trademark or service

mark. Sufficient information must be provided to enable a comparison of goods or

services and analysis of trade channels in regard to possible likelihood-of-confusion

scenarios. If the certification program is limited to specific items of goods or

services, for example, wine, wooden doors, or forensic accounting services, then the

identification in the application must also reflect this level of specificity. See

TMEP §1306.02(c)

regarding identification

of goods and services of authorized users in certification mark applications.

See

TMEP §1402.01(c)

regarding the identification and

classification of goods and services in a §66(a) application and

§1904.02(b)

regarding the examination of classification of

goods and services in a §66(a) application.