Requirements for Combined or Multiple-Class Applications

In addition to the requirements for a trademark, service

mark, collective mark, or certification mark application (

see

TMEP

§§801-806.01(e)

,

1303.01

,

1304.02

,

1306.02

), a multiple-class application must contain the

following:

(1) Class Designations: For a §1 or §44 multiple-class

application, the class numbers for which registration is sought, and the

goods/services/collective membership organization appropriately classified in each

class.

37 C.F.R. §2.86(a)(1)

,

(b)(1)

. The classes must be set forth in consecutive

numerical order beginning with the lowest number, and the

goods/services/collective membership organization must be listed in association

with their class number.  Setting out the classes and the

goods/services/collective membership organization in tabulated form rather than

narrative form is recommended because it adds clarity.  For a §66(a)

multiple-class application, the classes are assigned by the International Bureau.

37 C.F.R. §2.86(a)(1)

,

(b)(1)

.

(2) Filing Fees: A filing fee for each class.

37 C.F.R. §§2.6(a)(1)

,

2.86(a)(2)

,

(b)(2)

;

see

TMEP

§§810.01

,

1403.05

. See

TMEP §819

regarding additional fees that

may apply for electronically filed §1 or §44 applications submitted on or after

January 18, 2025.

(3) Section 1(a) Application: For an application filed

under §1(a) of the Act:

(a) Dates of use: The dates of first use and

first use in commerce for each class.

37 C.F.R.

§2.86(a)(3)

,

(b)(3)

. If the dates are the same for all the

classes, the dates may be stated once, with the statement that the mark was

first used on said dates in connection with the goods/services/collective

membership organization in all the classes. If the dates of use differ for

different classes, the appropriate dates for each class must be specified

separately. The dates may be set forth in separate clauses, sentences, or

paragraphs, or in tabular form, whichever will give complete information in

the clearest way under the circumstances.

said dates in connection with the goods/services/collective

membership organization in all the classes. If the dates of use differ for

different classes, the appropriate dates for each class must be specified

separately. The dates may be set forth in separate clauses, sentences, or

paragraphs, or in tabular form, whichever will give complete information in

the clearest way under the circumstances.

(b) Specimens: One specimen supporting use of the

mark for each class.

37 C.F.R.

§2.86(a)(3)

,

(b)(3)

. If a single specimen supports multiple

classes, the applicant may so indicate, and the examining attorney need not

require multiple copies of the specimen. The examining attorney should enter

a Note to the File (also referred to as a Public Note or Notation to File)

in the record, indicating which classes the specimen supports.

(4) Section 1(b), 44, or 66(a) Application: For an

application filed under §1(b), §44, or §66(a) of the Act, a statement that the

applicant has a bona fide intention to use the mark in commerce, for a trademark

or service mark, or a statement that the applicant has a bona fide intention, and

is entitled, to exercise legitimate control over the use of the mark in commerce,

for collective or certification marks, for each class.

37 C.F.R.

§2.86(a)(3)

,

(b)(3)

.

See

TMEP §1904.01(c)

regarding the bona fide

intent statement in a §66(a) application.

In a §1(b) application, prior to registration, the

applicant must file an allegation of use under

15 U.S.C.

§1051(c)

or

15 U.S.C.

§1051(d)

that states the mark is in use in commerce on or in

connection with the goods/services/collective membership organization; and includes

dates of use, the filing fee for an allegation of use for each class, and one specimen

evidencing use of the mark for each class.

37 C.F.R.

§2.86(e)

.  See

37 C.F.R.

§2.76

and

TMEP §§1104-1104.11

regarding

amendments to allege use and

37 C.F.R.

§2.88

and

TMEP §§1109-1109.18

regarding

statements of use

erce on or in

connection with the goods/services/collective membership organization; and includes

dates of use, the filing fee for an allegation of use for each class, and one specimen

evidencing use of the mark for each class.

37 C.F.R.

§2.86(e)

.  See

37 C.F.R.

§2.76

and

TMEP §§1104-1104.11

regarding

amendments to allege use and

37 C.F.R.

§2.88

and

TMEP §§1109-1109.18

regarding

statements of use. An applicant may not file an allegation of use until the applicant

has used the mark in connection with all the goods/services/classes in the application,

unless the applicant also submits a request to divide the application under

37

C.F.R. §2.87

.

37 C.F.R.

§2.86(e)

.

Further, an applicant may not claim both §1(a) and §1(b)

for identical goods or services in the same application.

37 C.F.R.

§2.86(c)

.

Additionally, an applicant may not apply for a

certification mark and a trademark, service mark, or collective mark in the same

application.

37 C.F.R. §§2.45(f)

,

2.86(d)

. See

TMEP

§1306.04(f)

for more information on restrictions to

certification marks.