[E-trademarks] Office Action Asserting Goods/Services in More Classes

[Pamela Chestek]

What if you respond "the applicant is seeking registration in the number 
of classes in which the listed goods and services fall" and point out 
that you don't know which ones they think are not listed in the proper 
class?

I'd love to know more about how they are reaching their conclusion too. 
In the service classes in particular, the classification is tricky. In 
some cases it depends on the subject matter of the services.

Pam

Pamela S. Chestek
Chestek Legal
300 Fayetteville Street
Unit 2492
Raleigh, NC 27602
pamela at chesteklegal.com
(919) 800-8033
www.chesteklegal.com

On 7/3/2024 6:20 AM, Orvis PC via E-trademarks wrote:
> We received an office action with no details. It says the "application 
> identifies goods and/or services in at least 7 classes; however, 
> applicant submitted the fees for only 5 classes."
>
> There is no support. No assertion that 'this thing' could be multiple 
> classes.
>
> The office action says "Applicant may respond to this issue by 
> satisfying one of the following" (1) specifying the number of classes 
> for which registration is sought or (2) deleting classes.
>
> This feels improper. Any comments on successfully responding so that 
> the examiner does what examiner's have done for the over 20 years I 
> have been practicing (e.g., laying out what good could be in multiple 
> classes)?
>
> If not, can the PTO restrict you to a particular number of classes if 
> you respond that applicant is seeking registration for N classes?
>
> Thanks!
>