There are cases where trademark applicants may want or need to divide their Trademark Application. This procedure entails removing one component from the application and subsequently assigning it to an entirely new trademark application. Here are some situations where division may be appropriate and an explanation of the request to divide procedure, related strategic considerations, and the corresponding fees.

When Facing Challenges with One or More Goods/Services Classes:

One situation might be when the trademark application encounters challenges for certain goods or services, yet not for all. An applicant may request to divide the allowable goods and/or services classes, leaving only those refused on the existing application, which generally would put the new application in condition for allowance. Then, the applicant can continue to prosecute the original application through argument and/or amendment, in the hopes of eventually registering everything as originally intended. Similarly, if suspension has been imposed by a USPTO examiner for some, but not all, of the listed goods/services, those not suspended might be divided in order to issue the registration for those goods/services without delay.

Alternative strategies may exist in these situations, so care should be taken prior to division. For example, rather than filing a Request to Divide, an applicant may instead opt to simply abandon the refused Class(es) in situations where registration may be prohibitively difficult (e.g., in a Likelihood of Confusion refusal). While abandonment of a Class through amendment may not be ideal, it may secure all rights possible and/or practical and avoids the additional fees covered below.

When Use in Commerce Among Goods/Services is Inconsistent:

Division may also be advantageous when the mark is used in commerce for a portion of the goods/services at the time of application, but not for all of them. The USPTO enables applicants to file applications under “multiple bases”, that is, applicants can file under both 1(a) Use and 1(b) Intent-to-use designations, and submit evidence of use in only those designated 1(a). In fact, multiple basis applications are perhaps the most common scenario prompting division.

In cases where a multiple basis trademark application meets its initial threshold of viability, an applicant keen on expediting the registration of goods already in commercial use may seek to divide the trademark application. This facilitates the expeditious registration of the goods/service filed under 1(a) and divided from the application into a new one, while retaining the 1(b) goods within the original application.

Overall Timing:

With respect to timing, a Request to Divide can be filed (a) after filing but before USPTO approval for publication (i.e., prior to or during examination or after examination and refusal); (b) during an opposition, concurrent use, or interference proceeding (called a Motion to Divide via TTAB); or (c) between the filing of a statement-of-use and the date of USPTO approval for application registration.

Additional Costs and Strategic Considerations When Dividing a Trademark Application:

Any time a trademark application is divided, the original application is normally denoted as the “Parent Trademark Application,” and the newly established trademark application is referred to as the “Child Trademark Application.” Each submission for a Request to Divide incurs a fee of $100, but also requires payment for the newly filed application(s). Since applicants have already paid this fee for each originally filed class, forethought should be given to whether a more economical strategy might file 1(a) and 1(b) goods/services separately at the outset.

Note: Additional fees may arise in certain situations, so further consideration as to timing of division might be made before proceeding.

Consider, for instance, a scenario of a trademark applicant seeking division within a classification (an applicant may find it necessary to file a 1(a) and a 1(b) intent-to-use for the same Class of goods). For sake of clarity, let’s assume an applicant filed under Class 25 (apparel) for T-shirts the applicant currently sells, but also intends to manufacture and/or sell pants. Such an applicant may file T-shirt evidence of use under 1(a), but not provide specimen for pants under 1(b) since they are not yet for sale. Should a Notice of Allowance issue for the 1(a) T-shirts, the applicant may opt to transfer it to a Child Application, leaving the 1(b) pants in the Parent Trademark application. In such an instance, an additional government filing fee is applicable as explained above (see 37 C.F.R. §2.6(a)(1)).

Continuing the example above, pants filed under 1(b) intent-to-use are now retained in the Parent Trademark Application, but must still satisfy the trademark protocols for requesting extensions of time and/or filing the Statement-of-Use. The USPTO imposes a filing fee of $125 per class in all extension of time requests. Additionally, dividing within a class essentially requires double-paying to receive protection in that class, so some applicants may instead opt to wait to file new applications at the outset and rely on the protection the in-use goods/services classification may provide.

It is also important to note: Following the division of the application, deadlines established by the USPTO must continue to be met. It is pertinent to note that filing a Request to Divide does not confer an extension of the deadline for filing a Statement-of-Use or extension request in the Parent Trademark Application. Additionally, submitting a Request to Divide alone does not constitute a satisfactory response to a Trademark Office Action. It does not absolve the trademark applicant of the obligation to address any outstanding Office Action, encompassing all the matters delineated therein. In circumstances where an Office Action response and a Request to Divide, simultaneous with a Statement-of-Use, are submitted, the USPTO undertakes the processing of the Office Action as a priority. Subsequently, the Request to Divide is forwarded to the Intent-to-Use Division for scrutiny and approval/refusal.

Problems arising from USPTO Responsiveness and Timing:

Taking a step back, to the public and even many attorneys, many processes within the USPTO suffer from unpredictable processing times. From the outside, it often appears that very simple USPTO actions may take an enormous time while other actions may operate very quickly. This unpredictability most likely stems from the USPTO’s queue system. The expeditiousness with which any USPTO action is taken is mainly contingent upon the applicant’s standing in a queue (line). While it isn’t well understood how exactly queues function nor how many queues exist, some USPTO actions are clearly either prioritized in queue or simply queued into a smaller, more efficient, or otherwise faster queue. So many times, the application might not be held up because of a defect or because the examiners are working so hard on an Office Action, but instead because it’s simply waiting in line.

This bears relevance Requests to Divide as the USPTO seemingly accords queue preference to Requests to Divide, but may not “run” the Request first. For instance, when a pending request for an extension of time to submit the Statement-of-Use is submitted simultaneously with the Request to Divide, the time extension request will be addressed first and may cause the application to sit in a lower-priority and/or slower queue. Ultimately, dividing a trademark application may be a strategically wise decision, or at least the only decision capable of preserving the application’s subject matter wholistically.

Conclusion:

In summary, since additional fees, delay in registration, and jeopardy of an application’s subject matter might be critical to protecting your mark, sufficient strategic thought should be dedicated to whether to file multiple basis applications. If an application suffers refusal in one or more Class but is in condition for allowance in at least one other, care should be taken to determine whether those portions refused should be preserved for amendment, argument, or other reconsideration, or whether they should be abandoned.

If you’re unsure whether to file a multi-basis application, have been refused in one Class but not another, are unsure whether a Request to Divide is appropriate, or don’t know how to file one, you may want to hire an experienced Trademark Attorney. If so, please call Grell & Watson Patent and Trademark Attorneys for a free consultation.

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Richard Piercy – Patent Attorney and Trademark Attorney

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The Featured Image above is used with permission and created with a deep learning AI image generator using the prompt “generate an attorney sitting at a desk with a confused look holding two trademark applications above his head, one in each hand.” I hope you appreciate the machine’s artistic choice to give the attorney 4 forearms and 20 fingers.

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