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].
Why file a request to divide?
A request to divide may make sense when certain goods or services are ready to proceed to allowance while others are not. Here are some common scenarios that may warrant a request to divide:
- 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?
Partial refusal applied to only certain goods or services
Sometimes a trademark examining attorney may issue a partial refusal against a portion of the goods or services in your your trademark application. A partial refusal means that the examining attorney is rejecting a certain subset of your goods/services. As a result, the remaining goods or services which have not been rejected will be held unless you delete the rejected goods or prevail against the partial refusal.
If you choose to argue against the rejection, the entire application will be delayed unless and until the refusal is withdrawn. A request to divide can speed up the registration for the allowed goods or services while you argue against the refusal in a separate application.
Partial refusals are more common in multi-class trademark applications where a refusal is being applied to only a first class, but the second and subsequent classes. This is one of the reasons why our firm prefers to file single-class applications as opposed to a multi-class application.
Use on some goods or services (with remaining non-used goods/services)
In a trademark application based only on intent-to-use, the applicant must eventually show usage on all the goods or services that remain in the ITU application. A request to divide may make sense in a multi-class application where at least one entire class is not yet in use. This allows the applicant to file use evidence in one class while extending time for the non-used class(es) in a separate application.
Non-used and used goods or services in the same class
You can file a request to divide an application containing only a single class of goods or services, but it gets expensive. Costs will be much higher than the multi-class scenario described above.
For example, suppose your application contains only a single class where some goods are in use and others are not yet in use. You will need to file the following:
- A request to divide: Total cost of $950, including our $500 flat rate and $450 USPTO fees ($100 request to divide fee + $350 initial filing fee);
- Statement of Use for used goods – Total cost of $500 for one class, including our $400 flat rate and $100 USPTO Statement of Use fee; and
- Extension of Time for non-used goods – Total cost of $500 for one class, including our $375 flat rate and $125 USPTO 6-month extension fee.
As the above example shows, dividing up a single class can amount to $1,950 plus additional costs when the applicant is ready to file the Statement of Use for the non-used goods.
In a scenario where you have both used and non-used goods in the same class, it may be more cost-effective to file a 6-month extension of time which would cost only $500 with our firm. This would be particularly appropriate if the mark will be used on the current non-used goods in the near future (e.g., in approximately 6 months).
What happens when goods or services are divided?
A subset of the original identification of goods or services will remain in the original application called the “parent application” which retains 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.
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