1205.02(a) Request to Divide When Notice of Appeal is Submitted Electronically
When an applicant submits a notice of appeal through ESTTA, 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 ESTTA and the contemporaneously or previously filed request to divide through TEAS. 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.