516 Motion to Divide Application or Registration
An application that is the subject of an inter partes proceeding before the Board may be divided into two or more separate applications upon motion granted by the Board, and payment of the required fee. [ Note 1.]
For example, if an application that is the subject of an opposition includes multiple classes, not all of which have been opposed, the applicant may file a motion to divide out the unopposed classes. If applicant seeks to divide out an entire class or classes, a fee for dividing the application must be submitted for each new application to be created by the division. [ Note 2.]
Similarly, if an application which is the subject of an opposition includes more than one item of goods, or more than one service, in a single class, and the opposition is not directed to all of the goods or services, the applicant may file a motion to divide out the unopposed goods or services. [ Note 3.] Applicant must submit both a fee for dividing the application, and an application filing fee, for each new application to be created by the division. [ Note 4.]
In both cases, when the motion to divide is granted, notification is sent to the USPTO’s ITU/Divisional Unit for processing of the divisional request. After the applications have been divided, each new application created by the division will be forwarded to issue or, in the case of an intent to use application filed under Trademark Act § 1(b), 15 U.S.C. § 1051(b), for issuance of a notice of allowance. The Board will be notified when division of the original application containing the opposed classes has occurred, and the original application will remain the subject of the opposition proceeding. [ Note 5.]
Any request to divide an application that is the subject of a Board inter partes proceeding will be construed by the Board as a motion to divide, and every other party to the proceeding will be allowed an opportunity to file a brief in opposition thereto. Nonetheless, the circumstances under which the Board will deny a request to divide are extremely rare.
A registration that is the subject of an inter partes proceeding before the Board may be divided into two or more separate registrations upon motion granted by the Board, and payment of the required fee, when ownership has changed with respect to some, but not all, of the goods and/or services. [ Note 6.]
For further information concerning division of an application, see TMEP § 1110.
NOTES:
1. 37 C.F.R. § 2.87. Cf. In re Little Caesar Enterprises Inc., 48 USPQ2d 1222, 1223-24 (Comm’r 1998) (regarding request to divide filed during pendency of request to extend time to oppose but prior to commencement of opposition).
2. See 37 C.F.R. § 2.87(a) and 37 C.F.R. § 2.87(b).
3. Cf. Spirits International B.V. v. S. S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi, 99 USPQ2d 1545, 1547, n.3 (TTAB 2011) (if applicant believes opposer’s objection to registration is limited to some, but not all, of the goods in a single class, applicant could avail itself of the divisional procedure to avoid the opposition being sustained against the entire class, should opposer prevail).
4. See 37 C.F.R. § 2.87(a) and 37 C.F.R. § 2.87(b).
5. See Drive Trademark Holdings LP v. Inofin, 83 USPQ2d 1433, 1436 n.10 (TTAB 2007).