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[Marke]

I think there has either been a miscommunication between you and the examining attorney about just what the nature of his/her objection is, or this examining attorney is horribly misinformed. 

If you're sure you haven't misunderstood the examining attorney's position, you should contact his/her law office's managing attorney or senior attorney to discuss the issue.  You can find the names and phone numbers for the various law offices here (scroll down a little bit):  http://www.uspto.gov/teas/contactUs.htm 

The bottom line is that if it's a Section 1(a) application and the goods you propose to add are within the scope of the original identification, you may add those goods even if they are properly classified in additional classes (and, of course, you satisfy the requirements for any additional classes -- filing fees, specimens of use, dates of use, etc.).  If the examining attorney says otherwise, he/she is dead wrong and you should speak to the managing attorney or senior attorney in that law office.

[JSonnabend]

Marke is absolutely correct (although you can start by calling the examiner directly before going over his/her head).  My money is on a misunderstanding by the poster of the examiner's position, though.  This isn't one examiners get wrong on the law, although they sometimes misunderstand the facts.

- Jeff

[LoveOfIP]

I did clearly understand the issue, many calls and e-mails to the Examiner, and he was not going to budge on it. I do believe it was wrong, but already deleted the classes and refiled as new application, as I was getting nowhere with this Examiner and didn't want to appeal. 

I know I got ripped off on this one, but without any concrete evidence I could not dispute his continued refusals. I wish someone in the postings could have given me a stronger citation, but thank you to all for the efforts.

[JSonnabend]

IP-Geek, could you share with us the ID's, both the original as filed and the one you wanted to add?

- Jeff

[LoveOfIP]

Thanks Jeff. I have also heard that you cannot add goods classes to a service application, and vice versa. All classes were 1(a). What do you think? I am sure this situation is going to come up for someone else down the road, and it is expensive to lose these filings fees.

Here is the original class 45:
Providing a social networking website for entertainment purposes

Classes that were added via preexam amendment, and were refused:

Class 25: Clothing, namely, T-shirts, short-sleeved T-shirts, long-sleeved T-shirts, Sweatshirts, Jersey Shirts, Polo Shirts, Hats, Baseball caps, Bandanas

Class 16: Printed materials, namely, magazines, flyers, bumper stickers, signs, posters, manuals, maps, road maps

[JSonnabend]

Like I said earlier, I think the OP has misunderstood the examiner's position.  The proposed amendments to the ID expand the scope of the ID beyond the originally filed ID.  It's besides the point the the classes are different.  You've added clothing and printed materials, neither of which fall within the original ID's scope, which was a website.

Do you understand the issue?  Website+Clothing+Printed Materials > Website.

And you didn't "lose" any filing fees, because filing fees are charged on a per class basis.  Three applications each having one class cost exactly the same as one application having three classes. 

[edit]Ah, strike that last point, I see you paid for the new classes.  The lesson here is the danger (and often extra expense) of filing applications on your own.  Better to have an attorney handle the matter, IMO.[/edit]

- Jeff

[LoveOfIP]

Not sure I understood, so you now agree with the Examiner? I am still not clearly understanding the last posting.

Filing fees of $550 were lost, because the two added classes (16 & 25) had to be deleted and a new application filed for them in order for the original application to proceed, hence paying the $550 for the two classes in the new application.

[JSonnabend]

I have agreed all along with what I suspected to be the examiner's position.  You cannot amend your ID to make it broader than the originally filed ID.  You have clearly done that.

If you want to post the serial number, I will gladly review the examiner's comments and let you know where I think your misunderstanding likely lies.  Examiners don't get this issue wrong, in my experience.

- Jeff

[Marke]

IP-Geek,

Your issue was never about adding classes; rather, it was a "beyond the scope" issue, as Jeff said.  That is, your original identification specified a social networking website and you sought to add clothing and printed materials, both of which being beyond the scope of a social networking website.

See T.M.E.P. Section 1402.06:  http://tess2.uspto.gov/tmdb/tmep/1400.htm#_T140206