# TMEP § 1401.03(d): Classification Determined by World Intellectual Property Organization in §66(a) Applications

> Federal · Agency guidance · In force

URL: https://www.frixlaw.com/law-library/statutes/TMEP_S1401.03(d)

## Section

- **Citation:** TMEP § 1401.03(d)
- **Heading:** Classification Determined by World Intellectual Property Organization in §66(a) Applications
- **Jurisdiction:** Federal
- **Kind:** Agency guidance
- **Status:** In force
- **Text as of:** August 14, 2026
- **Source:** Compiled text
- **Location:** USPTO TMEP / Chapter 1400 - Classification and Identification of Goods and Services / TMEP § 1401.03(d)

## Text

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.

## Nearby sections

- [TMEP § 1401.01 Statutory Authority](https://www.frixlaw.com/law-library/statutes/TMEP_S1401.01.md)
- [TMEP § 1401.02 International Trademark Classification Adopted](https://www.frixlaw.com/law-library/statutes/TMEP_S1401.02.md)
- [TMEP § 1401.02(a) Headings of International Trademark Classes](https://www.frixlaw.com/law-library/statutes/TMEP_S1401.02(a).md)
- [TMEP § 1401.02(b) Short Titles for International Trademark Classes](https://www.frixlaw.com/law-library/statutes/TMEP_S1401.02(b).md)
- [TMEP § 1401.02(c) International Alphabetical List](https://www.frixlaw.com/law-library/statutes/TMEP_S1401.02(c).md)
- [TMEP § 1401.03 Designation of Class](https://www.frixlaw.com/law-library/statutes/TMEP_S1401.03.md)
- [TMEP § 1401.03(a) Designation of Class by Applicant Normally Initially Accepted in Applications Under §§1 and 44](https://www.frixlaw.com/law-library/statutes/TMEP_S1401.03(a).md)
- [TMEP § 1401.03(b) Designation of Class by USPTO When Class Number Is Not Designated or Is Inaccurate in Application Under §1 or §44](https://www.frixlaw.com/law-library/statutes/TMEP_S1401.03(b).md)
- [TMEP § 1401.03(c) Failure to Classify May Delay Action in Applications Under §§1 and 44](https://www.frixlaw.com/law-library/statutes/TMEP_S1401.03(c).md)
- [TMEP § 1401.03(d) Classification Determined by World Intellectual Property Organization in §66(a) Applications](https://www.frixlaw.com/law-library/statutes/TMEP_S1401.03(d).md)
- [TMEP § 1401.04 Classification Determines Number of Fees](https://www.frixlaw.com/law-library/statutes/TMEP_S1401.04.md)
- [TMEP § 1401.04(a) Prior United States Classification System](https://www.frixlaw.com/law-library/statutes/TMEP_S1401.04(a).md)
- [TMEP § 1401.04(b) Limiting Goods and Services to the Number of Classes for Which Filing Fees Are Paid](https://www.frixlaw.com/law-library/statutes/TMEP_S1401.04(b).md)
- [TMEP § 1401.05 Criteria on Which International Classification Is Based](https://www.frixlaw.com/law-library/statutes/TMEP_S1401.05.md)

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Source: Frix Law Library, https://www.frixlaw.com/law-library/statutes/TMEP_S1401.03(d). Check the current official text before relying on it. Not legal advice.