TMEP 1402.08: Moving Goods and Services Between Companion Applications

This is the October 2015 Edition of the TMEP

Previous: §1402.07(e) | Next: §1402.09

1402.08    Moving Goods and Services Between Companion Applications

If an applicant has filed separate applications to register the same mark, the applicant may, in a limited situation, amend to move items of goods or services from one application to another, if the application from which the item is to be moved was filed on or before the filing date of the application to which it is to be moved. Such an amendment will be permitted only if some of the goods/services in one application should be classified in a different class and the companion application includes that class. If the companion application does not include that class, the proper recourse is for the applicant to file a request to divide. See TMEP §§1110-1110.11(a).

Moving goods/services between applications in this way may only be done if neither of the marks involved has been approved for publication in the Official Gazette. Moreover, items of goods/services can be moved between applications only in applications filed under §1 or §44 of the Trademark Act. The applicant cannot amend to move items of goods/services to or from a §66(a) application.

The applicant must file a separate amendment for each application, that is, a request to delete specified goods/services in the application from which they are to be moved, specifying the serial number of the application to which they should be added, and an amendment in the application to which those goods/services are to be added, specifying the serial number of the application from which they are to be moved. The examining attorney(s) must ensure that the USPTO automated records are updated to reflect the changes in both applications.

An applicant may file a request to move all the goods/services from one application to another, if the applicant meets the requirements set forth above. The USPTO will construe such a request as a request to expressly abandon the application from which the goods/services are moved. If the request to move all the goods/services is granted, and no goods or services remain in the application from which the goods/services are moved, the USPTO will abandon the application. The USPTO will not refund the application filing fee. See TMEP §718.01 regarding express abandonment.