Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

NOTICE THAT REQUEST TO DIVIDE APPLICATION

IS INCOMPLETE

Response Required

The USPTO must receive applicant’s response to this notice within 30 days of the issue date below or the request to divide the application will be denied.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this notice.

Issue date:  June 12, 2019

Applicant filed a document on March 29, 2019, in which applicant requested to divide the above-referenced application.  The request to divide cannot be processed until complete information and/or the required fees are submitted.  Applicant has thirty (30) days from the issuance date of this letter to submit a complete request to divide and/or the required fees.  If applicant does not do so within the time period specified, the request to divide will not be processed.

REQUIREMENTS FOR REQUEST TO DIVIDE AN APPLICATION:

SEPARATE SIGNED DOCUMENT RECOMMENDED:  A request to divide an application should be submitted in a document separate from any other document, be identified as a “request to divide the application,” and be properly signed.  37 C.F.R. §2.87(d), (f); TMEP §1110.04.  Applicant is strongly encouraged to use the Trademark Electronic Application System (TEAS) to file a proper request to divide and pay the required fees online, located at http://teasg.gov.uspto.report/gf/spring/nonteas?type=preSelected&id=MSC0RTD.

FEES:  For a request to divide out an entire class or several classes from an application, applicant is required to submit the request to divide fee of $100 for each new application created if the request to divide is filed electronically or $200 for each new application created if the request to divide is filed on paper.  37 C.F.R.§§2.6(a)(19), 2.87(b); TMEP §1110.02.  No separate application filing fee is needed for any new application created. 

However, for a request to divide out some, but not all, of the goods and/or services and/or collective membership organization within a single class, applicant must submit both the request to divide fee of $100 for each new application created if the request to divide is filed electronically or $200 for each new application created if the request to divide is filed on paper, and an application filing fee for each new application created.  37 C.F.R. §2.87(b).  The new application filing fee is calculated as follows:

• if the request to divide is filed on paper, $600 per class for each new application created;
• if the request to divide is filed online using TEAS, $400 per class for each new application created;
• if the request to divide is filed online using TEAS and the original application was filed using TEAS RF, $275 per class for each new application created; or
• if the request to divide is filed online using TEAS and the original application was filed using TEAS Plus, $225 per class for each new application created.

37 C.F.R. §2.6(a)(1)(i)-(iv); TMEP §1110.02.

If a request to divide is filed with a statement of use or extension request, the fees for the statement of use ($100 per class if filed electronically or $200 if filed on paper) and/or extension request ($125 per class if filed electronically or $225 if filed on paper) must also accompany the request to divide.  37 C.F.R. §§2.6, 2.87(b), 2.88(b)(3), 2.88(c)(1), 2.89(a)(2), 2.89(b)(2); TMEP §§1108.02(c), 1109.15, 1110.02.

GUIDELINES FOR SIGNING REQUEST TO DIVIDE:  Where an applicant is not represented by an attorney, the request to divide must be signed by the individual applicant or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner).  In the case of joint applicants, all must sign.  37 C.F.R. §2.193(e)(2)(ii); TMEP §§611.03(b), 611.06 et seq.  Where an applicant is represented by an attorney, the attorney must sign the request to divide.  37 C.F.R. §2.193(e)(2)(i); TMEP §611.03(b).  The proper signatory must personally sign or personally enter his/her electronic signature.  See 37 C.F.R. §2.193(a), (e)(2); TMEP §§611.01(b), 611.02. 

A request to divide an application is generally not considered a proper response to a trademark examining attorney’s Office action and does not relieve an applicant of the duty to respond to any outstanding Office action or to take any other required action.  37 C.F.R. §2.87(e); TMEP §1110.05.

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.  

How to respond.  Click to file a Response to Intent-to-Use (ITU)/Divisional Unit Office action.

Direct questions about this notice to the assigned Intent-to-use staff member below.

/Concetta A. Butler/

Paralegal Specialist

ITU/Divisional Unit

571 272 9494

571 273 9494 (fax)

concetta.butler@uspto.gov

RESPONSE GUIDANCE

·       Missing the response deadline to this letter will cause the request to divide the application to be denied.  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

·       Responses signed by an unauthorized party are not accepted or processed and can cause the request to divide the application to be denied.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.