1205.02 Request to Divide
An applicant may submit a request to divide the application to divide out goods or services within a class, or entire classes prior to, with, or after the filing of a notice of appeal. [ Note 1.] An applicant may wish to submit such a request in a situation where a refusal to register or requirement applies only to certain classes in a multi-class application or to certain goods or services within a class in either a single-class or multi-class application. See TBMP § 1202.05.
Procedures for when a request to divide is filed within six months of the issuance of the appealed final refusal or requirement (i.e., prior to or with the notice of appeal) are discussed below. If a request to divide is submitted after an appeal is instituted, the request should be filed with the Board, rather than directed to the examining attorney or filed through the TEAS system, either electronically through the Board’s ESTTA filing system or by a paper submission. If filing through ESTTA, the applicant should "identify paper" by checking the "Other Motions/Papers" box and identifying the paper as a request to divide. The Board will determine whether to suspend action on the appeal and forward the application to the ITU/Divisional Unit, or defer the processing of the request to divide and continue proceedings in the appeal. Such a determination will be based on such factors as the reason for the request to divide (e.g., if the division will result in the withdrawal of the refusal as to certain of the classes) and the stage of the appeal.
Filing a request to divide via ESTTA is strongly encouraged. See TBMP § 110.09 for more information regarding ESTTA.
NOTES:
1. See generally 37 CFR § 2.87 and TMEP § 1110 regarding requests to divide.
1205.02(a) Request to Divide When Notice of Appeal is Submitted Electronically
If an applicant submits a notice of appeal through the Board’s ESTTA electronic filing system, and submits at the same time or has pending a request to divide, the applicant should not check the "request for reconsideration" box on the ESTTA form unless it has pending or is contemporaneously filing a request for reconsideration/amendment. The request to divide is not considered to be either a request for reconsideration or an amendment. The applicant should file the notice of appeal through the ESTTA system and the contemporaneously or previously filed request to divide through the Trademark Operation’s Trademark Electronic Application System (TEAS) system. The applicant will receive an electronically generated order instituting the appeal, and requesting the applicant to contact the Board paralegal to whom the application has been assigned so that appropriate action can be taken on the request to divide, depending on the circumstances. If the notice of appeal is limited to the classes which the applicant seeks to have divided out of the application, the appeal will be instituted for those classes, proceedings in the appeal will be suspended, and the Board will forward the application to the ITU/Divisional Unit of the Office for action on the request to divide. After the request to divide has been processed the application for which no appeal has been filed will be forwarded to the examining attorney for appropriate action, while the application to which the appeal applies will be returned to the Board. The Board will then resume proceedings in the appeal with respect to that application, and allow the applicant 60 days in which to submit its appeal brief. If the notice of appeal applies to classes in each of the divided applications, both applications will be returned to the Board, which will resume proceedings in the appeal with respect to both applications, and allow the applicant 60 days in which to submit its appeal briefs. [ Note 1.] The Board may also consolidate the appeals. See TBMP § 1214.
If the applicant has pending or is simultaneously filing a request for reconsideration/amendment with the request to divide and the notice of appeal, the applicant should check the appropriate box on the ESTTA form. The electronically generated order instituting the appeal will suspend proceedings in the appeal and remand the application to the examining attorney to consider both the request for reconsideration/amendment and the request to divide. The examining attorney will then forward the application and the request to divide to the ITU/Divisional Unit of the Office for action on the request to divide. After the request to divide has been processed the applications will be sent to the examining attorney, who will then decide the request for reconsideration/amendment in the same procedure that is followed for any request for reconsideration or amendment. See TBMP § 1204 and TBMP § 1205. If registrability is not found on the basis of these documents, the examining attorney will return to the Board the application or applications containing the class or classes for which the appeal has been instituted. As for the application containing the classes for which no timely appeal was filed, unless the examining attorney issues a new final action with respect to that application, the applicant may not subsequently submit a notice of appeal.
NOTES:
1. However, the applicant may not subsequently submit a notice of appeal for any classes for which it had not previously filed a timely notice of appeal.
1205.02(b) Request to Divide When Notice of Appeal is Submitted on Paper
The following information applies when a notice of appeal is filed as a "paper" submission, and a request to divide is also filed. An applicant that files a request to divide or that has pending a request to divide at the time it files its notice of appeal should advise the Board of the request to divide in the notice of appeal.
If the applicant files with the notice of appeal or has pending at the time the appeal is filed only a request to divide, the Board will institute the appeal, suspend proceedings in it, and forward the application to the ITU/Divisional Unit of the Office for action on the request to divide. If the appeal applies to only one of the applications resulting from the division, then after the request to divide has been processed the application for which no appeal has been filed will be forwarded to the examining attorney for appropriate action, while the application to which the appeal applies will be returned to the Board. The Board will then resume proceedings in the appeal with respect to that application, and allow the applicant 60 days in which to submit its appeal brief. If the appeal applies to both applications, the Board will resume action in the appeals with respect to both applications. In the latter situation, the Board may consolidate the appeals.
If the applicant files a request to divide as well as a request for reconsideration/amendment with its notice of appeal (or if these requests are pending with the examining attorney at the time the notice of appeal is filed), the Board will institute the appeal, suspend proceedings in it, and remand the application to the examining attorney to arrange for processing of the request to divide and then to decide the request for reconsideration/amendment in the same procedure that is followed for any request for reconsideration or amendment. See TBMP § 1204 and TBMP § 1205. If registrability is not found on the basis of these documents, the examining attorney will return to the Board the application or applications containing the class or classes for which the appeal has been instituted. As for the application containing the class or classes for which no timely appeal was filed, unless the examining attorney issues a new final action with respect to that application, the applicant may not subsequently submit a notice of appeal.