1110    Request to Divide an Application

37 C.F.R. §2.87  Dividing an application.

  • (a) Application may be divided.  An application may be divided into two or more separate applications upon the payment of a fee for each new application created and submission by the applicant of a request in accordance with paragraph (d) of this section.
  • (b) Fee.  In the case of a request to divide out one or more entire classes from an application, only the fee for dividing an application as set forth in §2.6(a)(19) will be required.  However, in the case of a request to divide out some, but not all, of the goods or services in a class, the applicant must submit the application filing fee as set forth in §2.6(a)(1) for each new separate application to be created by the division, in addition to the fee for dividing an application.
  • (c) Time for filing.  (1) A request to divide an application may be filed at any time between the application filing date and the date on which the trademark examining attorney approves the mark for publication; or during an opposition, concurrent use, or interference proceeding, upon motion granted by the Trademark Trial and Appeal Board.
  • (2) In an application under section 1(b) of the Act, a request to divide may also be filed with a statement of use under §2.88 or at any time between the filing of a statement of use and the date on which the trademark examining attorney approves the mark for registration.
  • (3) In a multiple-basis application, a request to divide out goods or services having a particular basis may also be filed during the period between the issuance of the notice of allowance under section 13(b)(2) of the Act and the filing of a statement of use under §2.88.
  • (d) Form.  A request to divide an application should be made in a separate document from any other amendment or response in the application.  The title "Request to Divide Application" should appear at the top of the first page of the document.
  • (e) Outstanding time periods apply to newly created applications.  Any time period for action by the applicant which is outstanding in the original application at the time of the division will apply to each separate new application created by the division, except as follows:
  • (1) If an Office action pertaining to less than all the classes in a multiple-class application is outstanding, and the applicant files a request to divide out the goods, services, and/or class(es) to which the Office action does not pertain before the response deadline, a response to the Office action is not due in the new (child) application(s) created by the division of the application;
  • (2) If an Office action pertaining to less than all the bases in a multiple-basis application is outstanding, and the applicant files a request to divide out the goods/services having the basis or bases to which the Office action does not pertain before the response deadline, a response to the Office action is not due in the new (child) application(s) created by the division of the application; or
  • (3) In a multiple-basis application in which a notice of allowance has issued, if the applicant files a request to divide out the goods/services having the basis or bases to which the notice of allowance does not pertain before the deadline for filing the statement of use, the new (child) applications created by the division are not affected by the notice of allowance.
  • (f) Signature.  The request to divide must be signed by the applicant, someone with legal authority to bind the applicant (e.g., a corporate officer or general partner of a partnership), or a practitioner who meets the requirements of §11.14, in accordance with the requirements of §2.193(e)(2).
  • (g) Section 66(a) applications - change of ownership with respect to some but not all of the goods or services.  (1) When the International Bureau of the World Intellectual Property Organization notifies the Office that an international registration has been divided as the result of a change of ownership with respect to some but not all of the goods or services, the Office will construe the International Bureau’s notice as a request to divide.  The Office will record the partial change of ownership in the Assignment Services Branch, and divide out the assigned goods/services from the original (parent) application.  The Office will create a new (child) application serial number, and enter the information about the new application in its automated records.
  • (2) To obtain a certificate of registration in the name of the new owner for the goods/services that have been divided out, the new owner must pay the fee(s) for the request to divide, as required by §2.6 and paragraph (b) of this section.  The examining attorney will issue an Office action in the child application requiring the new owner to pay the required fee(s).  If the owner of the child application fails to respond, the child application will be abandoned.  It is not necessary for the new owner to file a separate request to divide.
  • (3) The Office will not divide a section 66(a) application based upon a change of ownership unless the International Bureau notifies the Office that the international registration has been divided.

1110.01   Application May Be Divided

Under 37 C.F.R. §2.87(a), an applicant may divide the application into two or more separate applications upon payment of the applicable fees.  When dividing an application, the applicant preserves the filing date for all the goods/services covered by the application.  See 37 C.F.R. §2.87(b) and TMEP §1110.02 regarding the fees for a request to divide.

An applicant may request division of an application for any reason.  For example, in an intent-to-use application, the applicant may wish to proceed to publication or registration with the goods/services on or in connection with which the applicant has used the mark in commerce and retain an active intent-to-use application for any remaining goods/services.

The applicant must file a request to divide if the applicant files an amendment to allege use before making use on all the goods/services for which applicant seeks registration under §1(b), or a statement of use before making use on all the goods/services specified in the notice of allowance for which applicant seeks registration.  37 C.F.R. §§2.76(c), 2.88(c); TMEP §§1104.03(a), 1109.03.

1110.02   Fees for Filing Request to Divide

Request to Divide Out One or More Entire Classes.  With a request to divide out one or more entire classes from an application, only the fee for dividing the application ("divisional fee"), as set forth in 37 C.F.R. §2.6(a)(19), is required.  37 C.F.R. §2.87(b). A divisional fee is required for each new (child) application created by the division of the original (parent) application.  No separate application filing fee is required for any new applications created.

Request to Divide Out Some, But Not All, of the Goods/Services in a Single Class.  A request to divide out some, but not all, of the goods/services in a single class must be accompanied by both:  (1) the divisional fee for each new (child) application created by the division of the original (parent) application (37 C.F.R. §2.6(a)(19)); and (2) an application filing fee for each new separate application created by the division, as set forth in 37 C.F.R. §2.6(a)(1).  37 C.F.R. §2.87(b). The amount of the new application filing fee depends on the method used to file the original application and request to divide, as follows:

  • If the original application was filed through TEAS RF or TEAS Plus and the request to divide is filed through TEAS, then the new application filing fee is the same as the TEAS RF or TEAS Plus application filing fee (37 C.F.R. §§2.6(a)(1)(iii), (iv));
  • If the original application was not filed through TEAS RF or TEAS Plus, and the request to divide is filed through TEAS, then the new application filing fee is the same as the TEAS application filing fee (37 C.F.R. §2.6(a)(1)(ii));
  • If the request to divide is filed on paper, then the new application filing fee is the same as the fee for filing an application on paper (37 C.F.R. §2.6(a)(1)(i)), regardless of how the original application was filed.

The current fee schedule is available on the USPTO website at http://www.uspto.gov.

If the request to divide does not include the required fee(s), the ITU/Divisional Unit will notify the applicant in writing of the deficiency and grant the applicant time to submit the required fees.  The applicant must submit the fee(s) within the time permitted, or the request to divide will be considered abandoned and the application will not be divided.  If the applicant does not submit the necessary fees, the ITU/Divisional Unit will notify the applicant that the request to divide is considered abandoned.

See TMEP §1110.07 regarding the application of fees when an applicant files a request to divide in conjunction with a statement of use and/or request for an extension of time to file a statement of use, but submits insufficient fees.

1110.03   Time for Filing Request to Divide

An applicant may file a request to divide at any time between the filing of the application and the date the examining attorney approves the mark for publication; or during an opposition, concurrent use, or interference proceeding, upon motion granted by the Trademark Trial and Appeal Board. 37 C.F.R. §2.87(c)(1).

A request to divide a §1(b) application may also be filed with a statement of use, or at any time between the filing of a statement of use and the date the examining attorney approves the mark for registration.  37 C.F.R. §2.87(c)(2).

In a multiple-basis application, a request to divide out goods/services having a particular basis may also be filed during the period between the issuance of the notice of allowance and the filing of the statement of use.  37 C.F.R. §2.87(c)(3).

If the USPTO receives a request to divide at any other time, the USPTO will deny the request, and refund any fees submitted with the request.

1110.04   Form and Processing of Request to Divide

A request to divide can be filed either on paper or through TEAS.

In TEAS, the applicant can file a request to divide directly as part of the TEAS "Allegation of Use" form, but only when the request to divide is limited to the creation of only one child application.  If the applicant wishes to create more than one child application, or if the request to divide is being made in a context other than an "Allegation of Use" scenario, the applicant can still file electronically by doing the following:  (1) choose the "Miscellaneous Forms" offering within TEAS, and (2) select therein the "Request to Divide Application" choice from the list of forms.  A "Request to Divide Registration" offering is also available in the "Registration Maintenance/Renewal/Correction Forms" category.

A paper request to divide should be made in a separate document from any other amendment or response in the application.  The title "Request to Divide Application" should appear at the top of the first page of the document.  37 C.F.R. §2.87(d).

All requests to divide must be immediately referred to the ITU/Divisional Unit for processing, unless the application is the subject of a proceeding before the Trademark Trial and Appeal Board.  See TMEP §1110.09 regarding requests to divide applications that are the subject of a proceeding at the Board.

In pending applications in which a request to divide is filed, the ITU/Divisional Unit will process the request to divide and ensure that the USPTO records reflect current ownership information.  Because the assignment records of the parent application do not appear in the newly created child application, the ITU staff will place a copy of the Trademark Assignment Abstract of Title for the parent application in the trademark records of the child application.  The abstract will be viewable via the Trademark Image Capture Retrieval System ("TICRS") and the Trademark Status and Document Retrieval ("TSDR") portal on the USPTO website at http://tsdr.uspto.gov/.  The assignment information in the parent application will remain accessible via the assignment database on the USPTO website at http://assignments.uspto.gov/assignments.  After the request to divide is processed and the child application is created, any new recordations in the child application will appear in the assignment database.  See TMEP §501.06 regarding partial assignments.

1110.05   Outstanding Time Periods Apply to Newly Created Applications

Any outstanding deadline in effect at the time an application is divided applies not only to the original application, but also to each separate new application created by the division of the application, except in the following circumstances:

  • (1)   If an Office action pertaining to less than all the classes in a multiple-class application is outstanding, and the applicant files a request to divide out the goods, services, and/or class(es) to which the Office action does not pertain before the response deadline, a response to the Office action is not due in the new (child) application(s) created by the division of the application;
  • (2)   If an Office action pertaining to less than all the bases in a multiple-basis application is outstanding, and the applicant files a request to divide out the goods/services having the basis or bases to which the Office action does not pertain before the response deadline, a response to the Office action is not due in the new (child) application(s) created by the division of the application; or
  • (3)   In a multiple-basis application in which a notice of allowance has issued, if the applicant files a request to divide out the goods/services having the basis or bases to which the notice of allowance does not pertain before the deadline for filing the statement of use, the new (child) application(s) created by the division is/are not affected by the notice of allowance.

37 C.F.R. §2.87(e).

1110.06   Signature of Request to Divide

A request to divide must be signed by the applicant, someone with legal authority to bind the applicant (e.g., a corporate officer or general partner of a partnership), or a practitioner who meets the requirements of 37 C.F.R. §11.14 ("qualified practitioner").  37 C.F.R. §§2.87(f), 2.193(e)(2).  The ITU/Divisional Unit must ensure that the request to divide is signed by a proper party.  If the applicant is represented by a qualified practitioner, the practitioner must sign the request to divide.  37 C.F.R. §§2.193(e)(2)(i), 11.18(a).  If the applicant is pro se, the request must be signed by the individual applicant or someone with legal authority to bind a juristic applicant.  37 C.F.R. §§2.193(e)(2)(ii), 11.14(e).  See TMEP §§611.06(a)–611.06(h) for more information about persons who have legal authority to bind various types of entities who are not represented by an attorney, and TMEP §§611.05–611.05(c) regarding processing documents signed by someone other than the applicant or the applicant’s designated qualified practitioner.

1110.07   Dividing an Application when Statement of Use Is Due

Filing a request to divide does not extend the deadline for filing a statement of use or request for an extension of time to file a statement of use.

Any outstanding deadline in effect at the time the application is divided applies not only to the original application, but also to each new application created by the division of the application.  37 C.F.R. §2.87(e).  Therefore, if a notice of allowance has issued and a statement of use is due, a statement of use, or request for extension of time to file a statement of use, is due in each separate new application created by the division, unless the following exception applies:

  • In a multiple-basis application, if the applicant files a request to divide out the goods/services having the basis or bases to which the notice of allowance does not pertain before the deadline for filing the statement of use, the new (child) application(s) created by the division are not affected by the notice of allowance.  37 C.F.R. §2.87(e)(3); TMEP §1110.05.

A request to divide must be filed if the applicant files a statement of use before making use of the mark in commerce on all the goods/services specified in the notice of allowance as based on §1(b), unless the applicant deletes the goods/services that are not in use.  37 C.F.R. §2.88(c); TMEP §1109.03.

Requests to divide are given priority in processing over any other document, with one exception: if the applicant submits a request for extension of time to file a statement of use that covers all the goods/services in the application at the same time as or before the request to divide, and the extension request applies to the resulting applications, the extension request will be processed first.  This provides the applicant with an extension that applies to all resulting applications without requiring additional fees for extension requests.

When the applicant files a request to divide goods/services that are in use from goods/services that are not yet in use, the USPTO puts the goods/services in use in the newly created (child) application, and retains the goods/services not in use in the original (parent) application.  More child applications may later be created from the parent application.

When the applicant files a request to divide goods/services based solely on §44(e) from goods/services that are not yet in use, the USPTO puts the goods/services that are based solely on §44 in a newly created (child) application, and retains the goods/services not in use in the original (parent) application.

If the applicant submits a request to divide along with a statement of use and a request for an extension of time to file a statement of use, and the fees are insufficient to cover all three, the fees will be applied first to the extension request (if there is enough to cover the extension request), second to the statement of use, and last to the request to divide.  See TMEP §1108.02(c) regarding fee deficiencies in extension requests, TMEP §1109.15(a) regarding fee deficiencies in statements of use, and TMEP §1110.02 regarding fee deficiencies in requests to divide.

1110.08   Dividing an Application when Response to Office Action Is Due

Filing a request to divide is not a proper response to an Office action and does not relieve an applicant of the duty to respond to any outstanding Office action or to take any other required action.

Any outstanding deadline in effect at the time the application is divided applies not only to the original application, but also to each new application created by the division of the application.  37 C.F.R. §2.87(e).  Therefore, if a response to an Office action is due, the response is due in each separate new application created by the division of the application, unless one of the following exceptions applies:

  • (1) If the Office action pertains to less than all the classes in a multiple-class application, and the applicant files a request to divide out the goods, services, or class(es) to which the Office action does not pertain before the response deadline, a response to the Office action is not due in the new (child) application(s) created by the division of the application.
  • (2) If the Office action pertains to less than all the bases in a multiple-basis application, and the applicant files a request to divide out the goods/services having the basis or bases to which the Office action does not pertain before the response deadline, a response to the Office action is not due in the new (child) application(s) created by the division of the application.

37 C.F.R. §2.87(e)(1)-(2).

If the applicant files a request to divide goods/services that are subject to a refusal from goods/services that are not subject to a refusal, the USPTO puts the goods/services that are not subject to refusal in the new (child) application, and retains the goods/services that are subject to refusal in the original (parent) application.  More child applications may later be created from the parent application.

When a request to divide is filed with a response to an Office action, the response should be entered first, and then the request to divide should be referred to the ITU/Divisional Unit.  The ITU/Divisional Unit will process the request and then return the application to regular processing. See TMEP §1110.04 regarding the form and processing of requests to divide.

1110.09   Dividing an Application Subject to a Proceeding at Trademark Trial and Appeal Board

A request to divide may be filed during an opposition, concurrent use, or interference proceeding, upon motion granted by the Trademark Trial and Appeal Board.  37 C.F.R. §2.87(c).  When an application is the subject of a proceeding before the Board, any request to divide must first be referred to the Board for appropriate action.  If the Board determines that the request to divide should be granted, the Board will refer the request to the ITU/Divisional Unit with instructions for dividing the application.  The ITU/Divisional Unit will process the request and then return the application to regular processing.  See TBMP §516.

See TBMP §§1205.02–1205.02(b) regarding the filing of a request to divide filed with or after an appeal.

1110.10   Dividing a §44 Application

When the applicant divides an application that includes a claim of priority under §44(d), the separate new (child) application(s) created through the division retain the priority filing date, provided that each new application meets the requirements of §44(d).  This is true even if the applicant does not ultimately perfect a §44(e) basis.  See 37 C.F.R. §§2.35(b)(3)-(4); TMEP §§806.01(c), 806.02(f).

In an application in which the same goods/services have both a §44(e) and §1(b) basis, and a notice of allowance has issued, the applicant, before the deadline for filing a statement of use, may file a request to divide out the goods/services under the §44(e) basis, and also request that the same goods/services remain in the parent application under §1(b).

When an applicant requests division of an application that includes a copy of a foreign registration, the applicant does not have to provide additional copies for each new application created by the division.

1110.11   Dividing a §66(a) Application

If ownership of an international registration changes for some but not all of the goods/services, the USPTO will not divide a §66(a) application unless the International Bureau of the World Intellectual Property Organization ("IB") notifies the USPTO that the international registration has been divided.  37 C.F.R. §2.87(g)(3).  See TMEP §1110.11(a) for further information about division of a §66(a) application after a partial change of ownership.

In all other situations, a §66(a) applicant may divide a §66(a) application into two or more separate applications, if applicant meets all the requirements of 37 C.F.R. §2.87.  See TMEP §§1110.02–1110.06 for further requirements for filing a request to divide.

1110.11(a)   Dividing a §66(a) Application After Change of Ownership with Respect to Some but Not All of the Goods/Services

When ownership of an international registration changes for some but not all of the goods/services for all designated Contracting Parties, the International Bureau of the World Intellectual Property Organization ("IB") will create a separate new international registration for the goods/services that have been transferred, and notify the USPTO accordingly.  See the IB’s Guide to the International Registration of Marks under the Madrid Agreement and the Madrid Protocol (2009), Para. B.II.67.01.

When the IB notifies the USPTO of the division of an international registration resulting from a change of ownership with respect to some but not all of the goods/services, the USPTO will construe the IB’s notice as a request to divide.  The USPTO will record the partial change of ownership in the Assignment Recordation Branch, and divide out the assigned goods/services from the original (parent) application.  The USPTO will create a new (child) application serial number, and enter the information about the new application in its automated records.  37 C.F.R. §2.87(g)(1).

To obtain a certificate of registration in the name of the new owner for the goods/services that have been divided out, the new owner must pay the required fee(s) for the request to divide.  37 C.F.R. §§2.6, 2.87(b), 2.87(g)(2).  The application will be forwarded to the examining attorney to issue an Office action in the new (child) application requiring the new owner to pay the required fees.  See TMEP §1110.02 regarding the amount of the fee(s) for a request to divide.  If the owner of the child application fails to respond, the child application will be abandoned.  The USPTO will not approve the child application for publication or registration until the new owner pays the required divisional fees.  It is not necessary for the new owner to file a separate request to divide.

The USPTO will not divide a §66(a) application based upon a change of ownership, unless the IB notifies the USPTO that the international registration has been divided.  37 C.F.R. §2.87(g)(3).

See TMEP §1615.02 regarding division of registered extensions of protection of international registrations, and TMEP §501.07 regarding assignment of extensions of protection.

1110.12   Division of Registrations

See TMEP §§1615–1615.02 regarding division of registrations.