T.M.E.P. § 1615.02
Division of Registered Extension of Protection

Executive summary:

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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.65.01 (2004).

To obtain a new certificate(s) of registration of the extension of protection in the United States in this situation, the new owner(s) must:

(1) file a request to divide with the USPTO, and

(2) 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). No application filing fee pursuant to 37 C.F.R. 2.6(a)(1) is required.

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 record the partial change of ownership in the Assignment Services Division, 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.

The USPTO will create a new registration number for the child, and enter the information about the new registration in its automated records. However, the USPTO will not issue a new registration certificate for the child registration or publish notice of the child registration until the assignee submits a request to divide under 37 C.F.R. 2.171(b), and pays the required fee.

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.

A registration may be divided more than once.

See TMEP §1110.08 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.