TMEP 1615.02: Division of Registered Extension of Protection

October 2017 Edition of the TMEP

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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/classes for all designated Contracting Parties, the IB will create a separate new international registration for the goods/services/classes that have been transferred, and notify the USPTO accordingly. See the IB’s Guide to International Registration, 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/classes, the USPTO will construe the IB’s notice as a request to divide.  The USPTO will update Office records to reflect the change in ownership, divide out the assigned goods/services/classes from the registered extension of protection (parent registration), and publish notice of the parent registration in the Official Gazette. 37 C.F.R. §2.171(b)(2)(i). The USPTO will issue an amended registration certification for the parent registration upon payment of the fee required by 37 C.F.R. §2.6(a)(8).

The USPTO will create a new registration number for the child, and enter the information about the new registration into the Trademark database.  The USPTO will notify the new owner that the new owner must pay the fee required by 37 C.F.R. §2.6(a)(8) to obtain a new registration certificate for the child registration.  It is not necessary for the new owner to file a separate request to divide. 37 C.F.R. §2.171(b)(2)(ii).  If the new owner does not respond to the notice, the child registration will remain active, as long as the owner files the necessary maintenance documents, but the USPTO will not issue a new registration certificate for the child registration, or publish notice of the child registration in the Official Gazette.

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. 37 C.F.R. §2.171(b)(2)(iii).

A registration may be divided more than once.

See TMEP §1110.11 regarding division of a pending §66(a) application after ownership has changed with respect to some but not all of the goods/services/classes, and TMEP §501.07 regarding assignment of extensions of protection.