Should I choose “one application designating all classes” or “one application per class”?

I’ve decided to file a trademark application after designating multiple classes of goods! In this case, should I designate multiple classes in one application?
Another method is to file multiple applications, one for each class. Each method has its advantages and disadvantages.

This article explains the key points to consider when you wish to register one trademark for multiple classifications.

If you wish to register one trademark in multiple classifications

First, classies are the 45 categories of goods and services offered as a business.
Goods are classified in categories 1 through 34, and services are classified in categories 35 through 45.

If you wish to register one trademark in multiple classes, there are two methods.

(1) Designate multiple classes of goods or services (services) in a single application.
(2) filing multiple applications, one for each category, designating the goods/services in one category.

Advantages and disadvantages of choosing (1)

Advantages
The total cost of the patent stamp fee to be paid to the Patent Office and the fee to be paid to the corresponding agent is less than the cost of filing multiple applications in each class.

If multiple applications are filed for each class, it is necessary to renew the trademark registration for each application.
On the other hand, if you file one application designating multiple classes, you only need to follow one renewal procedure.

Demerit
If, at the examination stage, a reason for refusal is found in one of the multiple classes of designated goods or services, and no reason for refusal is found in the remaining classes of designated goods or services, the registration of the trademark in the class for which there is no reason for refusal may be delayed.
In addition, the application itself may be rejected even if it contains classes that are not grounds for rejection.

Advantages and disadvantages of choosing (2)

Advantages
(1) If there is no reason for refusal for the designated goods or designated services in the designated category, the registration will be granted immediately. Therefore, it may be registered earlier than (1).

Demerit
The fees for patent stamps and fees paid to the agent are the same as the number of trademark applications filed.
Therefore, more costs are incurred than (1).
It is necessary to prepare application documents for each application and deal with amendments, etc. Therefore, more time and effort is required to confirm the matters to be stated and to complete the procedures than in (1) above.

Which should I choose in the end, (1) or (2)?

If you want to reduce costs and simplify the procedures, we recommend Method (1).

On the other hand, if you are aiming for early acquisition of rights due to business plans, etc., we recommend that you choose Method (2).

It is also recommended to conduct a pre-filing survey to determine in advance which categories have a high likelihood of registration and which do not.

This is because it is possible to file applications in classes where it is difficult to obtain trademark rights and classes where trademark rights are expected to be obtained, taking into account the results of research.

I see! So we just need to decide how to file an application based on when we want to obtain trademark rights, our budget, etc.!
Since I want to keep my budget as low as possible, I think I’ll just file one application for multiple classes this time.
If cutting costs is important to you, that would be better.
Thank you! I will consider this depending on how I plan to use the trademark in the future when applying for multiple classifications.

If you have any questions about how to file an application, please contact our office.

Due to the increasing number of trademark applications, it takes approximately 10 to 12 months to receive some type of notice after filing an application.
With this in mind, it is advisable to decide whether to designate the other classes in one application or to file one application for each class.

If you have any concerns about how to file an application due to business plans, etc. or costs, please contact our office!
After hearing your concerns, we can propose a plan for later applications.

supervisor
この記事の監修者:
HARAKENZO WORLD PATENT & TRADEMARK
Osaka Legal Strategy Department General Manager Akinori HACHIYA
, , ,

さあ始めましょう
Amazing DXでカンタン商標出願

詳細のお見積りはもちろん、
はじめての商標登録で不安な方向けに
ご状況に合わせたアドバイスを無料で実施中です。