REQUEST TO DIVIDE A TRADEMARK APPLICATION: THE BASIC PROPOSITION
Occasionally, it may make strategic sense for an applicant to Divide its Trademark Application. Fundamentally, Dividing a trademark application removes, but does not eliminate, the designated portion of the application and assigns it to an entirely new trademark application. This may be an appropriate action when the trademark application has been rejected for some of the goods/services but not all of them; if a suspension has been issued by a USPTO examiner for some, but not all of the listed goods/services; and when the mark is used in commerce for some of the goods/services but not all (the application contains both 1(a) and 1(b) designations). Indeed, one of the most common scenarios warranting this procedural move is when the applicant has originally filed a multiple-basis application. The multiple-basis application permits an applicant to submit a trademark application with goods/services that the applicant has already used in commerce, while simultaneously including goods/service not yet In Use, under the 1(b) intent-to-use.
In the event that the trademark application meets its initial burden of viability, an applicant who is anxious to register the goods already in use in commerce may request to divide the trademark application and expedite the registration of the goods based on 1(a) while leaving the 1(b) goods in the original application. An applicant maintains the right to request to divide a trademark application at any point, starting from the date of the initial submission of the application up until the time the examining attorney renders an approval of the mark for publication to the Official Gazette.
THE MECHANICS OF DIVIDING A TRADEMARK APPLICATION
In the event that a trademark based on multiple bases is in fact divided, the original application is henceforth referred to as the “Parent Trademark Application” and the newly created trademark application, with the divided-out class, is referred to as the “Child Trademark Application”. The astute reader may very well be wondering, which application retains the original Serial Number issued by the USPTO? The original United States Serial Number issued by the United States Patent & Trademark Office (USPTO) is maintained by the Parent application, and the ensuing Child application will be issued a new United States Serial Number. Every filing for a Request to Divide costs $100.
ADDITIONAL FEES WHEN DIVIDING A TRADEMARK APPLICATION
Unsurprisingly, there are occasionally more subtle demands for additional fees required by the USPTO when dividing a trademark application. Consider for example the nuanced case of a trademark applicant who seeks to divide within a classification (an applicant may be need to file a 1(a) and a 1(b) intent-to-use for the same Class of goods). When a Notice of Allowance is issued for that the 1(a) portion of that particular Class, the applicant may move it to a Child Application while leaving the 1(b) in the Parent Trademark application. Here, there will again be an additional government filing fee. (see 37 C.F.R. §2.6(a)(1)). The amount of the new application-filing fee is contingent upon on the basis used in the original trademark application.
Any goods or services filed as a 1(b), intent to use, that now remain in the Parent Trademark Application must still satisfy the base-line trademark rules for requesting extensions of time allowances (to file the Statement-of-Use). Remember, the USPTO charges a filing fee of $125 per class in all extension of time requests. There is no additional fee when the applicant is dividing the application by classes and not by goods. When the application is divided, deadlines assigned by the USPTO must still be met. Filing a Request to Divide does not extend the deadline for filing a Statement-of-Use or extension request.
OFFICE ACTIONS AND REQUESTS TO DIVIDE
Filing a Request to Divide is not a satisfactory response to a Trademark Office Action. Dividing an application does not eliminate the trademark applicant’s responsibility to respond to any outstanding Office Action (and indeed ALL of the issues contained within an Office Action). When responding to an Office Action and filing a Request to Divide simultaneously with a Statement- of-Use, the USPTO processes the Office Action first, and then the Request to Divide is forwarded to the Intent-to-Use Division for review.
USPTO RESPONSIVENESS AND TIMING
Perhaps one of the most bewildering aspects of the entire Trademark process is the seeming unpredictability of processing times. What is less commonly known is that the USPTO generally operates according to a queue system – depending on where the applicant “stands” in the line, his/her request will be processed sooner or later.
As this pertains to our current discussion, the USPTO will very often give priority to Requests to Divide. There is one exception; a pending request to extend the time to file the Statement-of-Use filed simultaneously with the Request to Divide will result in the time extension request being addressed first. Ultimately, dividing a trademark application may make strong strategic sense, and there are three opportunities for an applicant to Request to Divide a trademark application:
- Between the time the application is filed and the United States Patent and Trademark Office (USPTO) approves the mark for publication.
- During an opposition, concurrent use, or interference proceeding, an applicant may file a motion to divide an application with the Trademark Trial and Appeal Board (TTAB).
- Between the filing of a statement-of-use and the date the USPTO approves the application for registration.
REQUEST TO DIVIDE FORM REQUIRES A SIGNATURE
The USPTO is a body that places supreme importance on formality. Trademark applicants who seek to divide a trademark application must submit the request form along with a signature of someone who has legal, binding authority on the applicant. This might very well be the owner of the mark, a corporate officer, or a general partner of the company which owns the trademark. Similarly, if a US Attorney represents an applicant, the trademark attorney is permitted to sign the request to divide. If the request to divide form is not signed by the appropriate authority, the USPTO will reject the application.