NOTE TO THE FILE
SERIAL NUMBER: 88081415
DATE: 11/19/2019
NAME: dmeiners
NOTE:
Good morning Ms. Tannen,
Thank you for your email and I hope you are well.
I have copied and pasted the relevant TMEP Section below for your convenience.
The order of filing a response and request to divide does not matter as long as the response for the parent application is submitted prior to the six (6) month deadline.
If the response and request are filed together, the USPTO will enter the response first and then the request to divide will be forwarded to the Divisional Unit.
I hope this helps!
1110.08 Dividing an Application when Response to Office Action Is Due
Filing a request to divide is not a proper response to an 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.
Any outstanding deadline in effect at the time the application is divided applies not only to the original application, but also to each new application created by the division of the application. 37 C.F.R. §2.87(e). Therefore, if a response to an Office action is due, the response is due in each separate new application created by the division of the application, unless one of the following exceptions applies:
· (1) If the Office action pertains to less than all the classes in a multiple-class application, and the applicant files a request to divide out the goods, services, or class(es) to which the Office action does not pertain before the response deadline, a response to the Office action is not due in the new (child) application(s) created by the division of the application.
· (2) If the Office action pertains to less than all the bases in a multiple-basis application, and the applicant files a request to divide out the goods/services having the basis or bases to which the Office action does not pertain before the response deadline, a response to the Office action is not due in the new (child) application(s) created by the division of the application.
If the applicant files a request to divide goods/services that are subject to a refusal from goods/services that are not subject to a refusal, the USPTO puts the goods/services that are not subject to refusal in the new (child) application, and retains the goods/services that are subject to refusal in the original (parent) application. More child applications may later be created from the parent application.
When a request to divide is filed with a response to an Office action, the response should be entered first, and then the request to divide should be referred to the ITU/Divisional Unit. The ITU/Divisional Unit will process the request and then return the application to regular processing. See TMEP §1110.04 regarding the form and processing of requests to divide.
Have a wonderful day,
Deborah Meiners
/Deborah Meiners/
Attorney Advisor
Law Office 110
(571) 272-8993
DISCLAIMER: Please note that all relevant e-mail communications will be placed in the official application record. See TMEP §§705.02, 709.06.
Although a trademark examining attorney may provide explanations pertaining to refusal(s) and/or requirement(s) issued in a particular case, the trademark examining attorney may not provide legal advice or statements about an applicant’s rights. See TMEP §§705.02, 709.06.
E-mail or telephone may not be used to request an advisory opinion as to the likelihood of overcoming a refusal or requirement. Applicant is advised to file a formal response for consideration of arguments regarding any refusal or requirement. See TMEP §§ 304.01 and 304.02.
E-mail may not be used to file applications for registration of marks, responses to Office actions, pre- or post-publication amendments to an application, changes of correspondence address, appointments or revocations of attorneys, attorney withdrawal requests, petitions, documents required by statute to show use of a mark in commerce or to request an extension of time to show such use, and post-registration maintenance documents or proposed amendments. These documents may be filed electronically using TEAS. Responses to Office actions sent via e-mail will not be accorded a date of receipt. 37 C.F.R. §2.62(c).
From: Tannen, Ilene B. <IBTannen@JonesDay.com>
Sent: Monday, November 18, 2019 5:20 PM
To: Meiners, Deborah <Deborah.Meiners@uspto.gov>
Subject: US Appl. No. 88/081,415 for the mark CDG (stylized) in Classes 9, 14, 18, 24, 25 and 26
Dear Ms. Meiners,
On June 3, 2019 you issued a suspension notice in connection with the subject application due to a prior pending application. The prior pending application as well as the prior cited registration are only with respect to Class 25
In addition to the prior pending application, you maintained and continued the requirement for a definite and properly classified identification of goods.
At this point in time while the application is in suspension, we would like to submit a response regarding the identification of goods and a request to divide the application to divide Class 25 out of the subject application and put it in a new application. Once the identification of goods in all the other classes are properly amended, those classes can proceed forward to acceptance and publication. Accordingly, I’d like to know the proper procedure for proceeding. Do we submit a response to amend the goods description first and then submit a request to divide the application or should we divide the application first and then submit a response regarding the amendments to the identification of goods?
I look forward to hearing back from you.
Regards,
Ilene
Ilene B. Tannen (bio)
Of Counsel