What is a Request to Divide a Trademark Application?

A Request to Divide is filed with the United States Patent and Trademark Office (USPTO) for the purpose of dividing specific products and/or services into one or more separate trademark applications.  In other words, the owner of a trademark application can essentially remove products/services from its current application (called the “parent” application) and place them into one or more new applications (called the “child” applications).  The child applications retain the same filing date as the parent application, but each one receives a new serial number.  After a Request to Divide is granted, each child application is treated independently from one another and from the parent application.

Why Would You File a Request to Divide?

A Request to Divide can be filed for any reason whatsoever.  But as a practical matter, you would really only consider submitting such a request under one of the following circumstances:

• You’ve received a trademark office action indicating that the Trademark Examining Attorney is refusing registration of your mark for some of the products and/or services listed in your trademark application.  In that case, you could file a Request to Divide to remove from the application the products/services to which the refusal doesn’t pertain and place them into a new application.  The child application will then be published for opposition, or the mark in the child application will be approved for registration on the Supplemental Register (as the case may be).  You can then attempt to overcome the refusal to register your mark for the products/services remaining in the parent application.
• A trademark opposition was filed against your trademark application, but the opposition only pertains to some of the products and/or services listed in your trademark application.  In that case, you could file a Request to Divide to remove from the application the products/services to which the opposition doesn’t pertain and place them into a new application.  The USPTO will then issue the Notice of Allowance for the child application, or the mark in the child application will be approved for registration on the Principal Register (as the case may be).  You can then continue defending the opposition for the opposed products/services in the parent application.
• You have a single class trademark application and the Notice of Allowance has issued, but you only have use of the mark in connection with some of the products or services listed in your application.  In that case, you could file a Request to Divide as part of the Statement of Use to remove from the application the products or services for which there is use and place them into a new application.  Assuming the Statement of Use is accepted, the mark in the child application will be approved for registration on the Principal Register.  You would also need to file an Extension of Time to file the Statement of Use for the products or services remaining in the parent application.
• You have a multiple class trademark application and all classes are currently based on Section 1(b) (intent-to-use).  The Notice of Allowance has issued, but you only have use of the mark in connection with some of the classes listed in your application.  In that case, you could file a Request to Divide as part of the Statement of Use to remove from the application the classes for which there is use and place them into a new application.  Assuming the Statement of Use is accepted, the mark in the child application will be approved for registration on the Principal Register.  You would also need to file an Extension of Time to file the Statement of Use for the remaining classes in the parent application.
• You have a multiple class trademark application and some of the classes are currently based on Section 1(b) (intent-to-use).  The Notice of Allowance has issued, but you don’t yet have use of the mark in connection with the Section 1(b) classes.  In that case, you could file a Request to Divide to remove from the application the classes that are not based on Section 1(b) and place them into a new application.  The mark in the child application will be approved for registration on the Principal Register.  You would also need to file an Extension of Time to file the Statement of Use for the Section 1(b) classes in the parent application.

How Do You File a Request to Divide?

The way in which you file a Request to Divide depends on the circumstances of your trademark application:

• If you want to file a Request to Divide at any time prior to your trademark application being approved for publication, you should use the “Request to Divide Application” form and electronically file it through the TEAS system.
• If your application is currently the subject of a trademark opposition, you should file the Request to Divide with the Trademark Trial and Appeal Board (TTAB).
• If the Notice of Allowance has issued and you’re filing the Statement of Use, the Request to Divide should be filed as part of the Statement of Use on the same form.
• If the Notice of Allowance has issued but you’re not filing the Statement of Use, you should use the “Request to Divide Application” form and electronically file it through TEAS.

How Much Does It Cost?

The cost of filing a Request to Divide depends on two factors:

• The number of child applications created by the Request to Divide.  The more child applications that are created, the more fees you will need to pay.  However, in the vast majority of cases, you will only need to create one child application to accomplish your objectives.  It is exceedingly rare that you would need to divide a trademark application in a manner that would result in multiple child applications.
• Whether the Request to Divide is removing entire classes from your application and placing them in a new application, or whether the Request to Divide is removing only certain products/services from your application and placing them in a new application.  In the first instance, you only have to pay the divisional fee charged by the USPTO.  In the latter instance, you have to pay the divisional fee and a new application filing fee for each child application created by the division.

Is There Any Time You Cannot File a Request to Divide?

There are certain time periods in the trademark registration process during which you may not file a Request to Divide:

• After the date on which your application is approved for publication (applicable if no products/services are based on Section 1(b))
• Between the date on which your application is approved for publication and the date on which the Notice of Allowance issues (applicable if some of your products/services are based on Section 1(b))
• If your application is solely based on Section 1(b) and the Notice of Allowance has issued, you may not file a Request to Divide before filing the Statement of Use.

How Can I Help You?

I’m experienced US trademark attorney Morris Turek.  If you need to file a Request to Divide but are wary of doing it yourself, I would be glad to help you properly prepare and submit it in a timely fashion.  You may reach me at (314) 749-4059, through email at morris@yourtrademarkattorney.com, or by filling out the contact form located near the bottom of this page.  I look forward to hearing from you soon.