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Divide a Trademark Application That Faces Partial Trouble

When a trademark application encounters trouble due to issues with some of the applied-for goods and services, the owner can move the clean items into a new application that can progress toward registration. Some trademark applications include a long list of goods and services to protect, and during the application process, the U.S. Patent and Trademark Office will raise issues that only apply to a portion of those goods and services. Filing a Request to Divide can keep the problematic goods and services in one application, while moving the trouble-free items to a new application that can proceed to registration more smoothly. A recent Trademark Trial and Appeal Board (TTAB) ruling showed how a Request to Divide would have created a better solution for the applicant. In In re UST Global (Singapore) Pte. Ltd., 2020 USPQ2d 10435 (TTAB 2020), the TTAB held that if the applicant was required to disclaim exclusive rights in the mark related to at least one good or service applied for in an International Class, because the mark was deemed descriptive of that item, then all good or services in that same Class must also be included in the disclaimer. The TTAB created a rule that a disclaimer applies to the entire Class. To avoid this peril, an applicant can utilize the procedure in 37 CFR §2.87 and move the goods and services not described by the mark into a new application, and the disclaimer will not apply to them. When dividing an application, the new application inherits the same filing priority date as the original application, so this is a more beneficial approach than merely filing a new application for the untainted goods or services.

Ned T Himmelrich
410-576-4171 • nhimmelrich@gfrlaw.com