Why An Applicant Would Divide A Trademark Application
An applicant may request to divide a trademark application at any time from the date of filing the application until the time the Examining Attorney approves the mark for publication. In addition, you may file a motion to divide an application with the Trademark Trial and Appeal Board (the "Board" or "TTAB") during an opposition, concurrent use, or interference proceeding. Lastly, an applicant can file a request to divide with the statement of use or at any time between the filing of the statement of use and the date the Examining Attorney approves the application for registration.
One reason why an applicant may want to divide its application is in a multiple-basis application, an applicant may wish to proceed to publication or registration with those branded goods that applicant has used in commerce, and allow those goods not yet used with the mark, to remain in the original application. Typically, applicants are eager to have their trademarks register, so the benefits of registration can ensue. If this means that filing a request to divide expedites the process for certain goods and/or services, then this may prove worthwhile to certain applicants, depending on the costs involved, and an applicant's prosecution budget. An applicant may request to divide the application for any reason.
A trademark application may be divided into two or more applications. The original application is referred to as the parent application. The newly created application is called the child application. The parent application maintains the original U.S. Serial Number issued by the United States Patent & Trademark Office ("USPTO") when the application was filed. The child application will be issued a new U.S. Serial Number. A fee of $100 is required to file a request to divide.
Additional fees may be required as well. For example, if the applicant receives a Notice of Allowance, and is dividing within a classification, meaning that certain goods or services are moving forward to publication or registration within one class while others in that same class will remain in the parent application, then a new trademark application fee is due as well (as set forth in 37 C.F.R. §2.6(a)(1)). The amount of the new application-filing fee will depend on the method utilized to file the original trademark application. The current trademark fee schedule is available at http://www.uspto.gov.
The goods or services remaining in the parent application will also need to comply with the trademark rules for requesting extensions of time to file the statement of use. When filing a request for an extension of time to file the statement of use, there a fee of $125 per class. If the applicant is simply dividing the application by classes and not by goods, there is no requirement for a new application-filing fee. When the application is divided, any outstanding USPTO deadlines must still be met. Filing a request to divide does not extend the deadline for filing a statement of use or extension request for filing a statement of use. In addition, filing a request to divide is not a proper response to an Office Action, and the applicant must respond to any outstanding Office Action. If a request to divide is filed simultaneously with the statement of use, the response to the Office Action will be processed first, and then the request to divide is directed to the Intent-to-Use Division for processing.
In regards to processing, the USPTO gives priority to requests to divide. The one exception is if there is also a request to extend the time to file the statement of use simultaneously filed, and the extension request applies to the resulting applications. Under this scenario, the extension request would be processed first. Once a request to divide is filed with the USPTO, an applicant can file additional requests to divide in the future. As mentioned above, there are good reasons why a trademark applicant may want to divide an application, if you are considering filing a request to divide or have other trademark related questions, please contact our office for a courtesy consultation.