What is a Request to Divide?

When a trademark applicant files a multi-class application, it is mostly about efficiency. However, myriad problems can arise during prosecution of the application that could complicate the registration of mark in all classes at the same time. The process allows for a procedural pivot, which is the division of the application. Here is a breakdown of this process.

What is a Request to Divide?
A request to divide is a formal petition requesting the USPTO to split a single, multi-class or multi-good/service application into two or more separate applications. When the USPTO grants the request, it carves out the specified goods or services into a brand-new child application, which receives a new serial number. The remaining class(es) stay behind in the original parent application. Both applications retain the exact original filing date.

The primary reason to divide an application is strategic. Particularly, it could be easier to have a registration on one class of goods and/or services, and leave the remaining contested class or classes in prosecution.

For example, if an applicant already is using the mark on Class 25 t-shirts, but the Class 9 mobile app is still months away from launch, the app lack of use is holding up the t-shirt registration. A Request to Divide can move the t-shirts to a child application to get registered immediately, while the app stays behind as an intent-to-use until it launches, when the applicant can then file a statement of use showing use of the mark on the app goods.

While a powerful tactical tool, this mechanism should not be used where there are issues affecting the entire application, e.g., a likelihood of confusion refusal against all classes of goods and services, which will not make a registration faster on the only the in-use goods or services.

This blog posting is for informational purposes only. If you have a specific issue or question related to this case, copyright, infringement, or I.P. in general, please contact Yonaxis I.P. Law Group.