T.M.E.P. § 1110.04
Dividing an Application When Statement of Use is Due

Executive summary:

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1110.04 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 extension of time to file a statement of use in response to a Notice of Allowance.

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(b). Therefore, if a statement of use is due, the statement of use (or request for extension of time to file a statement of use) is due in each new application created by the division unless the following exception applies: In a multi-basis application, if the applicant files a request to divide out the basis or bases to which the Notice of Allowance does not pertain before the deadline for filing the statement of use, the new applications created by the division are not affected by the Notice of Allowance.

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, 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 paper, with one exception: If the applicant submits a request for an extension of time to file a statement of use 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 that are in use from goods that are not yet in use, the Office puts the goods in use in the newly created (child) application, and retains the goods not in use in the original (parent) application. More child applications may later be created from the parent file.

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 and 1109.15(a) regarding fee deficiencies in statements of use, and TMEP §1110.02 regarding fee deficiencies in requests to divide.