TMEP 1110.11(a): Dividing a §66(a) Application After Change of Ownership with Respect to Some but Not All of the Goods/Services

This is the October 2015 Edition of the TMEP

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1110.11(a)    Dividing a §66(a) Application After Change of Ownership with Respect to Some but Not All of the Goods/Services

When ownership of an international registration changes for some but not all of the goods/services for all designated Contracting Parties, the International Bureau of the World Intellectual Property Organization (“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 the International Registration of Marks under the Madrid Agreement and the Madrid Protocol (2009), 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, and divide out the assigned goods/services from the original (parent) application. The USPTO will create a new (child) application serial number, and enter the information about the new application in its automated records. 37 C.F.R. §2.87(g)(1).

To obtain a certificate of registration in the name of the new owner for the goods/services that have been divided out, the new owner must pay the required fee(s) for the request to divide. 37 C.F.R. §§2.6, 2.87(b), 2.87(g)(2). The application will be forwarded to the examining attorney to issue an Office action in the new (child) application requiring the new owner to pay the required fees. See TMEP §1110.02 regarding the amount of the fee(s) for a request to divide. If the owner of the child application fails to respond, the child application will be abandoned. The USPTO will not approve the child application for publication or registration until the new owner pays the required divisional fees. It is not necessary for the new owner to file a separate request to divide.

The USPTO will not divide a §66(a) application based upon a change of ownership, unless the IB notifies the USPTO that the international registration has been divided. 37 C.F.R. §2.87(g)(3).

See TMEP §1615.02 regarding division of registered extensions of protection of international registrations, and TMEP §501.07 regarding assignment of extensions of protection.