Trademark applications are final, meaning adding additional classes to a trademark is not possible once the application has been filed. Therefore, anyone in the process of preparing a trademark application should consider all relevant classes that should be added before applying. Trademark owners who want to add additional classes to an existing trademark may need to file a new trademark application. For more information on trademarks and other intellectual property matters, contact the intellectual property attorneys of War IP Law at (202) 800-3754.
Filing a New Trademark Application to Add More Goods and Services
While it may sound like a disappointment that new classes cannot be added to an existing trademark, filing a new trademark application is normal for expanding businesses. The nature of a trademark could expand to include additional goods and services that could not have feasibly been included in the original application. When this happens, it is often necessary to file a new application with additional classes that help to fully protect the intellectual property of the trademarked brand. This would create a separate trademark better tailored to the needs of the business.
However, it is not possible to add additional goods and services to a registered trademark. It is important to carefully consider which classes best suit the trademark and make sure everything relevant is included before filing the application. Otherwise, the trademark could lack crucial protections.
Multi-Class Trademark Applications
Trademark applicants also have the option to incorporate several classes into the same application. A particular trademark could involve several different goods and services that fall into multiple official United States Patent & Trademark Office (USPTO) classes. The USPTO has designated 34 classes for goods and 11 for services. Trademarks that include goods and services from multiple classes may be eligible for a multi-class trademark.
Each class will have its own fee, so multi-class trademark applications are more expensive than their single-class counterparts. However, only a payment for a single class must be made at the time of filing. For some businesses, these extra fees are worth it to offer full protection for the intellectual property of the company.
Benefits of a Multi-Class Trademark Application
While a multi-class trademark application may not be the best option for all trademark applicants, certain types of companies may benefit from using this option. Here are a few of the possible perks of filing a multi-class application:
- Adding additional classes to a trademark application consolidates the various necessary trademarks into a single application, which can help simplify the process.
- Maintain higher cash reserves since only one single class must be paid for at filing.
- Specific goods and services initially included in one class can be moved to another one more easily.
You can learn more about whether your business could benefit from a multi-class trademark by discussing your options with one of the experienced trademark lawyers at War IP Law.
Potential Cons of Multi-class Trademarks
Multi-class trademark applications can also cause headaches for the applicant. Here are a few of the potential difficulties that could come with filing one of these applications:
- In multi-class trademarks where one or more classes were filed on the basis of “intent-to-use”, filing a statement of use for each class can be cumbersome. For example, if the applicant wants to file a statement of use for only one of two classes, they would be required to file a request to divide the main application or extend the time limit for the unused class. This can be time-consuming and expensive.
- Issues can arise if the office receiving the application finds an issue with one of the classes, even if all of the other classes are in order.
- Higher risk of inaccurate renewal if one or more of the classes is no longer in use.
- Potentially a higher likelihood for a post-registration USPTO audit.
These potential pitfalls could be enough to sway some applicants from considering the multi-class option, but it will make more sense for others. An experienced intellectual property lawyer can help applicants determine whether they should consider a multi-class application.
When to Consider Separate Single-class Applications
Trademark applicants also may have the option to file multiple single-class applications for the same trademark. This would be no more expensive in USPTO fees than a multi-class application, as both types set fees for each class.
Some of the potential benefits of opting for multiple single-class applications include:
- Statement of use simplified – Filing a Statement of Use for several separate single-class applications can prevent some of the possible complications of multi-class applications, as there would be no need to file an extension of request to divide.
- Each class stands alone – The use of several single-class applications allows each class to stand on its own merit, so one class being denied will not set back the acceptance of other classes that have been filed separately.
- Less risk – There may be less risk that the entire trademark application could be invalidated due to just one class no longer being in use. Even if one class is found to be inaccurate, the others will not be affected.
Additionally, goods and services included in one of several single-class applications can be moved to another application if the application where the class will be moved from was filed on or before the second application. Those who are considering filing multiple single-class applications should do so on the same filing date to prevent complications.
How an Intellectual Property Attorney Can Help With Trademark Concerns
Trademark law is a complicated legal field and it is normal for businesses to struggle with trademark concerns. For many applicants, an experienced intellectual property lawyer may be able to help with the process. An experienced intellectual property attorney can help determine whether a multi-class or multiple single-class trademark application makes more sense for the client and assist with all matters related to the application process.
The team of intellectual property lawyers at War IP Law are prepared to help clients add classes to a trademark application, file new applications to replace old ones, and all other trademark-related concerns. Call our office today at (202) 800-3754 with any intellectual property legal concerns you may have.