A request to divide must be signed in accordance with the guidelines in TMEP §611.03(b). The ITU/Divisional Unit must ensure that the request to divide is signed by a proper party. See TMEP §§611.06–611.06(h) for more information about persons who have legal authority to bind various types of entities who are not represented by an attorney, §§602-602.03(c) regarding persons who are qualified to represent others before the USPTO in trademark matters, and §§611.05–611.05(c) regarding processing documents signed by an improper party.
Filing a request to divide does not extend the deadline for filing a statement of use or request for an extension of time to file a statement of use.
Any outstanding deadline in effect at the time the application is divided applies not only to the original application, but also to each new application created by the division of the application. 37 C.F.R. §2.87(e). Therefore, if a notice of allowance has issued and a statement of use is due, a statement of use, or request for extension of time to file a statement of use, is due in each separate new application created by the division, unless the following exception applies:
A request to divide must be filed if the applicant files a statement of use before making use of the mark in commerce on all the goods/services specified in the notice of allowance as based on §1(b), unless the applicant deletes the goods/services that are not in use. 37 C.F.R. §2.88(c); TMEP §1109.03.
Requests to divide are given priority in processing over any other document, with one exception: if the applicant submits a request for extension of time to file a statement of use that covers all the goods/services in the application at the same time as or before the request to divide, and the extension request applies to the resulting applications, the extension request will be processed first. This provides the applicant with an extension that applies to all resulting applications without requiring additional fees for extension requests.
When the applicant files a request to divide goods/services that are in use from goods/services that are not yet in use, the USPTO puts the goods/services in use in the newly created (child) application, and retains the goods/services not in use in the original (parent) application. More child applications may later be created from the parent application.
When the applicant files a request to divide goods/services based solely on §44(e) from goods/services that are not yet in use, the USPTO puts the goods/services that are based solely on §44 in a newly created (child) application, and retains the goods/services not in use in the original (parent) application.
If the applicant submits a request to divide along with a statement of use and a request for an extension of time to file a statement of use, and the fees are insufficient to cover all three, the fees will be applied first to the extension request (if there is enough to cover the extension request), second to the statement of use, and last to the request to divide. See TMEP §1108.02(c) regarding fee deficiencies in extension requests, §1109.15(a) regarding fee deficiencies in statements of use, and §1110.02 regarding fee deficiencies in requests to divide.
Filing a request to divide is not a proper response to an Office action and does not relieve an applicant of the duty to respond to any outstanding Office action or to take any other required action.
Any outstanding deadline in effect at the time the application is divided applies not only to the original application, but also to each new application created by the division of the application. 37 C.F.R. §2.87(e). Therefore, if a response to an Office action is due, the response is due in each separate new application created by the division of the application, unless one of the following exceptions applies:
If the applicant files a request to divide goods/services that are subject to a refusal from goods/services that are not subject to a refusal, the USPTO puts the goods/services that are not subject to refusal in the new (child) application, and retains the goods/services that are subject to refusal in the original (parent) application. More child applications may later be created from the parent application.
When a request to divide is filed with a response to an Office action, the response should be entered first, and then the request to divide should be referred to the ITU/Divisional Unit. The ITU/Divisional Unit will process the request and then return the application to regular processing. See TMEP §1110.04 regarding the form and processing of requests to divide.
A request to divide may be filed during an opposition, concurrent use, or interference proceeding, upon motion granted by the Trademark Trial and Appeal Board. 37 C.F.R. §2.87(c). When an application is the subject of a proceeding before the Board, any request to divide must first be referred to the Board for appropriate action. If the Board determines that the request to divide should be granted, the Board will refer the request to the ITU/Divisional Unit with instructions for dividing the application. The ITU/Divisional Unit will process the request and then return the application to regular processing. See TBMP §516.
See TBMP §§1205.02–1205.02(b) regarding the filing of a request to divide filed with or after an appeal.
When the applicant divides an application that includes a claim of priority under §44(d), the separate new (child) application(s) created through the division retain the priority filing date, provided that each new application meets the requirements of §44(d). This is true even if the applicant does not ultimately perfect a §44(e) basis. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.01(c), 806.02(f).
In an application in which the same goods/services have both a §44(e) and §1(b) basis, and a notice of allowance has issued, the applicant, before the deadline for filing a statement of use, may file a request to divide out the goods/services under the §44(e) basis, and also request that the same goods/services remain in the parent application under §1(b).
When an applicant requests division of an application that includes a copy of a foreign registration, the applicant does not have to provide additional copies for each new application created by the division.
If ownership of an international registration changes for some but not all of the goods/services, the USPTO will not divide a §66(a) application unless the International Bureau of the World Intellectual Property Organization (IB) notifies the USPTO that the international registration has been divided. 37 C.F.R. §2.87(g)(3). See TMEP §1110.11(a) for further information about division of a §66(a) application after a partial change of ownership.
In all other situations, a §66(a) applicant may divide a §66(a) application into two or more separate applications, if applicant meets all the requirements of 37 C.F.R. §2.87. See TMEP §§1110.02–1110.06 for further requirements for filing a request to divide.
When ownership of an international registration changes for some but not all of the goods/services for all designated Contracting Parties, the International Bureau of the World Intellectual Property Organization (IB) will create a separate new international registration for the goods/services that have been transferred, and notify the USPTO accordingly. Regs. Rule 27(2).
When the IB notifies the USPTO of the division of an international registration resulting from a change of ownership with respect to some but not all of the goods/services, the USPTO will construe the IB’s notice as a request to divide. The USPTO will record the partial change of ownership in the Assignment Recordation Branch, and divide out the assigned goods/services from the original (parent) application. The USPTO will create a new (child) application serial number, and enter the information about the new application in its automated records. 37 C.F.R. §2.87(g)(1).
To obtain a certificate of registration in the name of the new owner for the goods/services that have been divided out, the new owner must pay the required fee(s) for the request to divide. 37 C.F.R. §§2.6, 2.87(b), (g)(2). The application will be forwarded to the examining attorney to issue an Office action in the new (child) application requiring the new owner to pay the required fees. See TMEP §1110.02 regarding the amount of the fee(s) for a request to divide. If the owner of the child application fails to respond, the child application will be abandoned. The USPTO will not approve the child application for publication or registration until the new owner pays the required divisional fees. It is not necessary for the new owner to file a separate request to divide.
The USPTO will not divide a §66(a) application based upon a change of ownership, unless the IB notifies the USPTO that the international registration has been divided. 37 C.F.R. §2.87(g)(3).
See TMEP §1615.02 regarding division of registered extensions of protection of international registrations and §501.07 regarding assignment of extensions of protection.
See TMEP §§1615–1615.02 regarding division of registrations.
