What is a request to divide a trademark application?
We tend to think of trademark applications as “all or nothing,” that a mark is either allowed or rejected. There are times when a trademark application can get more complicated especially when multiple goods or services are involved. A request to divide will split an original trademark application into two or more applications where each resulting application contains a subset of the original goods or services [see TMEP 1110].
When is a request to divide appropriate?
A request to divide may make a great deal of sense under certain circumstances:
- partial refusal of the mark as applied only to certain goods or services;
- a suspension has been applied to only certain goods/services;
- applicant seeks to argue against likelihood of confusion where a subset of the goods/services might be more distinguishable;
- applicant is ready to show use of the mark on less than all of the goods/services identified in the application;
- multiple filing bases are involved; or
- application is subject to a TTAB opposition.
There may also be strategic considerations for dividing out certain goods or services from the original application, such as factors concerning trademark rights of third parties. For example, would certain goods or services carry a higher risk of opposition or cancellation?
What happens when goods or services are divided?
A subset of the original identification of goods or services will remain in the original application which may be considered a parent application retaining the original application number. A new application number will be assigned to each child application resulting from the request to divide.
Depending upon the status and outstanding issues involved in the parent application, a request to divide may lead to several different outcomes. For example, the parent application may be allowed while the child application is rejected. Another example may be the allowance of a Statement of Use in one application while the other application may require an extension of time to file such evidence of use.