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[LoveOfIP]

Recently received a rejection for adding two additional classes to a 1(a) application after filing, but before examination, done via preliminary amendment and paid the additional class fees.

The Examiner states we need to delete these added classes. He will not let us do a divisional. I have searched the TMEP for any exceptions to keep these classes in and can find nothing. The Examiner did throw a big "hint" my way and stated something about a new case that addressed this issue? We do not want to lose the filing fee on these two classes and have to start over if there is some possible loophole out there. I cannot find anything in the TMEP to assist and have never been issued this type of office action. I do not feel comfortable filing a Petition to the Director in this matter.
Any guidance is appreciated, thanks!

[Lyza]

Once the application is filed, Applicant is not allowed to add goods and/or services or additional classes to the original filing.  Applicant may amend the goods/services to delete text, or narrow g/s, but may not expand or add wording unless expressly directed by an Examiner.  Protection under registration of a mark for additional goods/services would require the separate filing of a new application. 

Unfortunately, you will most probably lose your filing fees for the post filing additions of classes and g/s.  I found the following at the USPTO in the FAQs:

Can I get a refund of monies paid to the Office?

Not usually. Only money paid by mistake or in excess (that is, paid when not required, or not required in the amount paid) may be refunded. A filing fee will be returned if submitted with a defective application which is denied a filing date. However, once the application receives a filing date, the filing fee will normally not be returned. All requests for refunds should be referred to the Finance Office, or the Examining Attorney assigned.

That doesn't mean you can petition and try to get a refund, only that it's very doubtful you will succeed.  The PTO, like all US government offices, does not like to give back money, unless you are a huge corporation about to go belly up for mis-management.     Hope this helps.

Lyza, IP Paralegal
(not an attorney; don't play one on TV but Dad always wondered where I was headed when he found me talking back to Perry Mason)

[LoveOfIP]

Thank you Lyza. I am still curious to read the new case law he mentioned. I am not sure if it is a TTAB precedent case, but I am curious to read it.

[Marke]

What is the new case to which the examining attorney referred?

[LoveOfIP]

I don't know what the case is, that is what I am asking. He said it was a recently decided case on this type of matter that I could use to argue.

[JSonnabend]

Lyza's post is not entirely correct.  Classes absolutely can be added to an application, and goods and services may be as well.  What an applicant cannot do is broaden the scope of the original ID.

The rejection the OP received appears to be one based on an attempt to broaden the original ID, not add classes per say.

- Jeff

[Lyza]

Thanks, Jeff.  I should have been more specific about no additional classes related to broadening the scope of the description(s) in an application.

Lyza
(still not an attorney but my business is thriving so it personally doesn't matter)

[LoveOfIP]

Thanks Jeff, there might be hope here! Can you give me the TMEP section that allows the addition of classes after filing? I cannot find anything. As I thought, adding classes is not broading the original scope of the original class already filed. The Examiner really has me in a loop here and I don't feel I should have to abandon the added classes and start a new application.

[Marke]

IP-Geek:  See TMEP Section 1403.02(c).

http://tess2.uspto.gov/tmdb/tmep/1400.htm#_T140302c

If the goods/services you sought to add via preliminary amendment are logically encompassed by your original identification of goods/services, you are entitled to add the items regardless whether they fall in additional classes.

[LoveOfIP]

Spot on Marke, I am going to e-mail the Examiner with this specific language and will advise what his interpretation is on it. Thanks!

[LoveOfIP]

The Examiner did not buy my response and considered the TMEP section as misinterpreted, and basically said if you add a classe 30 seconds later after filing a new application, it will not be allowed and is considered expanding the scope. I'd still love to know if anyone out there knows of the recent case that was decided on this type of matter? I am not sure it is a TTAB or court case.

[Marke]

It sounds like the examining attorney's objection isn't that you're attempting to add classes, which is permitted, but rather that your proposed amendment is beyond the scope of the original identification, which is impermissible. 

If your proposed amendment is indeed beyond the scope, then I'm afraid you're out of luck.  There is no recent case that alters this longstanding rule, but if you want to satisfy your curiosity you could simply ask the examining attorney which case he/she was alluding to.

[LoveOfIP]

Actually if you add any class after filing, as opposed to submitting one huge description lumped into one class and letting the Examiner break that class down later and paying the additional fees, it is not allowed. The Examiner unfortunately would not tell me the specific case he was referencing. I wish I knew it just for my own knowledge now.

[Marke]

An applicant may add a class or classes after filing; that's no problem, provided the items in the added classes are (1) properly classified in the added classes; and (2) the items fall within the scope of the original identification of goods.  The issue isn't adding classes; it's whether the goods sought to be added are within the scope of the original identification. 

[Note that this doesn't necessarily apply to Madrid applications, where the PTO has, controversially, taken the position that an indefinite identification is limited to its initial classification -- see http://tess2.uspto.gov/tmdb/tmep/1900.htm#_T190402c ]

[LoveOfIP]

Not according to this Examiner, and I didn't want to risk filing an appeal. You cannot add classes outside the original class after filing, unless at recommendation of Examiner to break down original classes. Filing additional classes is considered going outside the original scope. I was also unable to proceed with filing a divisional for the classes added. It was an expensive error. If you know of any case classes on a successful appeal, I'd greatly appreciate it.