1615    Division of Registrations

37 C.F.R. §2.171(b)  Partial change of ownership.

  • (1) In a registration resulting from an application based on section 1 or section 44 of the Act, if ownership of a registration has changed with respect to some but not all of the goods and/or services, the owner(s) may file a request that the registration be divided into two or more separate registrations.  The assignment or other document changing title must be recorded in the Office.  The request to divide must include the fee required by §2.6(a)(8) for each new registration created by the division, and be signed by the owner of the registration, someone with legal authority to bind the owner (e.g., a corporate officer or general partner of a partnership), or a practitioner qualified to practice under §11.14 of this chapter, in accordance with §2.193(e)(2) of this chapter.
  • (2)
    • (i) 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 registered extension of protection (parent registration), issue an updated certificate for the parent registration, and publish notice of the parent registration in the Official Gazette.
    • (ii) The Office will create a new registration number for the child registration, and enter the information about the new registration in its automated records.  The Office will notify the new owner that the new owner must pay the fee required by §2.6 to obtain a new registration certificate for the child registration.  It is not necessary for the new owner to file a separate request to divide.
    • (iii) The Office will not divide a registered extension of protection unless the International Bureau notifies the Office that the international registration has been divided.

A registration can be divided only if ownership of the registration has changed with respect to some, but not all, of the goods/services.  37 C.F.R. §2.171(b).  Requests to divide registrations are processed in the Post Registration Section.

See TMEP §1615.01 regarding division of registrations based on applications under §§1 and 44 of the Trademark Act, and TMEP §1615.02 regarding division of registered extensions of protection.

1615.01   Division of Registration Based on Application Under §1 or §44 of the Trademark Act

If ownership of a registration has changed with respect to some but not all of the goods/services, the owner is strongly encouraged to file a request that a registration be divided into two or more separate registrations, to ensure that USPTO records will accurately reflect current ownership information.

A party requesting division of a registration must:  (1) record the change of ownership with the Assignment Recordation Branch of the USPTO; (2) file a request to divide; and (3) pay the fee required by 37 C.F.R. §2.6(a)(8) for each new registration created by the division.  37 C.F.R. §2.171(b)(1).

The request must be signed by the individual owner of the registration, someone with legal authority to bind a juristic owner (e.g. , a corporate officer or general partner of a partnership), or a qualified practitioner.  37 C.F.R. §2.171(b)(1) and 2.193(e)(2); TMEP §611.03(b) .  If the owner is represented by a qualified practitioner, the practitioner must sign.  37 C.F.R. §§2.193(e)(2)(i) and 11.18(a).  If the owner is not represented by a qualified practitioner, the individual owner or someone with legal authority to bind a juristic (e.g., a corporate officer or general partner of a partnership) owner must sign.  37 C.F.R. §§2.193(e)(2)(ii) and 11.14(e).  In the case of joint owners who are not represented by a qualified practitioner, all must sign.  37 C.F.R. §2.193(e)(2)(ii).  If the request does not meet these requirements, the Post Registration staff will issue an Office action granting the party who filed the request six months in which to comply with the requirements of the rule.  If there is no response, the request to divide will be dismissed.

A party who requests division of a registration issued under the old United States classification system ( see TMEP §1401.02 ) must agree to adopt the international classification system for both the parent and child registration.  See TMEP §1609.04 regarding amendment of classification.

Once the registration is divided, the USPTO will:  (1) create a new registration number for the child registration and update the information about the parent and child registration in its automated records; (2) issue a new registration certificate for the child registration and an amended registration certificate for the parent registration; (3) publish notice of both the parent and child registrations in the Official Gazette and scan both the child and amended parent registration certificates into TICRS; and (4) send a registration certificate for the child registration to the new owner.  The USPTO will not send an amended registration certificate for the parent registration to the owner of the parent registration unless the owner submits a request and pays the fee required by 37 C.F.R. §2.6(a)(8).

A registration may be divided more than once.

1615.02   Division of Registered Extension of Protection

When ownership of an international registration changes with respect to some but not all of the goods/services for all designated Contracting Parties, the 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 International Registration , 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, divide out the assigned goods/services from the registered extension of protection (parent registration), issue an updated certificate for the parent registration, and publish notice of the parent registration in the Official Gazette.  37 C.F.R. §2.171(b)(2)(i).

The USPTO will create a new registration number for the child, and enter the information about the new registration into the Trademark database.  The USPTO will notify the new owner that the new owner must pay the fee required by 37 C.F.R. §2.6(a)(8) to obtain a new registration certificate for the child registration.  It is not necessary for the new owner to file a separate request to divide.  37 C.F.R. §2.171(b)(2)(ii).  If the new owner does not respond to the notice, the child registration will remain active, as long as the owner files the necessary maintenance documents, but the USPTO will not issue a new registration certificate for the child registration, or publish notice of the child registration in the Official Gazette .

The USPTO will not divide a registered extension of protection to the United States unless the IB notifies the USPTO that the international registration has been divided.  37 C.F.R. §2.171(b)(2)(iii).

A registration may be divided more than once.

See TMEP §1110.11 regarding division of a pending §66(a) application after ownership has changed with respect to some but not all of the goods/services, and TMEP §501.07 regarding assignment of extensions of protection.