From: Gregg R. Zegarelli, Esq.
Subject: Trademark Monitoring Services

QUESTION:

I have an application for a United States Trademark Registration in process.  I received an Office Action indicating that the mark is available in multiple classes, although I only paid for one class.  What are some of the consequences of choosing multiple classes.

ANSWER:

When you receive an "Office Action" from the Patent and Trademark Office that indicates the mark appears to be registrable, that is great news.   If multiple classes are available, the remaining issue for you is for you to pick (and/or redescribe) the classes of goods or services in which you will use the mark.

Often applications are submitted with payment for one class, although many classes are available.  This will be "flushed out" by the Examining Attorney during the review process.

Choosing multiple classes has some incidental costs down the road. so, you need to think through the effective cost of the decision for more classes.

Even if approved by the PTO, the mark needs to be published for opposition allowing anyone who claims to be injured with the right to challenge the registration.   Assuming that the mark is cleared by the PTO and no one opposes the registration, the mark will be registered or "allowed," depending upon whether the mark was filed as an "actual use" or "intent to use" application. 

Actual use applications that make it through the publication without opposition will usually register in due course.  However, Intent-to-Use application will be "allowed" but not registered.  The reason is that ITU applications still require an actual interstate use for the registration to issue. 

ITU applications have more costs because there are more steps in the process, as follows:

• Each class will have a $100 actual use issue fee upon the interstate use.
• There is a $150 fee per class to extend for each 6 month period if the mark is not used in interstate commerce within the first 6 months after allowance.
• If you use the mark only in some of the classes in the application, you need to "divide" the application to split the application between the classes actually used (that will proceed to registration) and the remaining classes unused (that will pend until a use is claimed).  If you split a use within a class, there is an additional $325 (for example, you claim dinnerware and mugs within the same class, but you only actually use on dinnerware, and you want to preserve mugs).

It is often best to claim as many classes as possible, particularly if you are going to immediately use all of the goods claimed in all classes well before the 6 month deadline after allowance. Otherwise, it is often still the best protection to make the claims, but it can get very expensive when you start dividing and extending a multi-class application.

For every office action, you have 6 months to respond.  Sometimes, because commercialization plans are not implemented, using the full 6 months to respond may actually help, because it extends the processing time.  However, other than that type of strategy, promptly responding will move the application to a registration faster providing the rights sought.

We commonly assist our clients with their mark registration and maintenance strategy.  For more information, contact us at info@zegarelli.com. 

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