ADDITIONAL INFORMATION FOR POST-NOTICE OF ALLOWANCE PROCESS

 

1. Dividing an application

After the Notice of Allowance (NOA) has issued, you may file a request to divide the application if you want some of the goods/services to remain based on §1(b), intent to use (ITU), and other goods/services are ready to move forward to registration. The goods/services moving forward to registration are always placed in the newly created child application. The ITU goods/services remain in the original application, called the parent application.

There is a $100 fee for each newly created application when dividing an application and if you are dividing within a class, you also must pay the application filing fee.

Instead of filing a request to divide, you may delete those goods/services that you are not using or no longer have a bona fide intention to use. See information below on deleting goods/services.

The following is information about the most common scenarios for filing a request to divide after the NOA has issued.

Scenario 1: Application is based on §1(b), intent to use, and you want to file a statement of use for only some of the goods/services in the application.

Use the TEAS statement of use form at http://www.uspto.gov/teas/eTEASpageB2.htm and check the radio button for filing a Request to Divide as part of this Allegation of Use. Carefully review all instructions so that you correctly identify the goods/services/classes for which you are filing the statement of use.

You will also need to file a request for extension of time to file a statement of use for the goods/services/class(es) that are based on intent to use, if due. You can file the extension request first if you would like it to cover all of the goods/services in the application.

Scenario 2: Application is mixed-basis; some goods/services are based on §1(b), intent to use, and other goods/services are based on §1(a), use in commerce and/or §44(e), a foreign registration.

After the NOA issues, you can request to divide the goods/services/class(es) that are already based on either §1(a), use in commerce, or §44(e), a foreign registration, so they can move forward to registration. To do this you would need to use the Request to Divide Application form available on the website at http://www.uspto.gov/teas/eTEASpageF.htm.

A child application will be created for the §1(a) and/or §44(e) goods/services/class(es). The §1(b), intent to use, goods/services/class(es) will remain in the parent application and you will need to file an extension request or statement of use during the statutory filing period at http://www.uspto.gov/teas/eTEASpageB2.htm.

2. Deleting goods/services (or entire class) with a Section 1(b), intent to use, basis

Scenario 1: Applicant no longer intends to file a statement of use for some of the goods/services in the application.

After the NOA issues, you may delete goods/services/class(es) from the application by filing a post publication amendment. To do this you would need to use the Post-Publication Amendment form available on the website at http://teasroa.uspto.gov/ppa/. In the "Explanation of Filing" box that comes up when you use this form, clearly state the goods/services/class(es) to be deleted.

Scenario 2: The application is a mixed-basis application and applicant wants to delete the §1(b) goods/services from the application and have the other goods/services based on §1(a), use in commerce and/or § 44(e), a foreign registration proceed to registration.

After the NOA issues, you may delete the intent to use goods/services from the application, using the post publication amendment form available on the website at http://teasroa.uspto.gov/ppa/. In the "Explanation of Filing" box that comes up when you use this form, clearly state that the intent to use goods/services are being deleted and that the application should proceed to registration for the goods/services in the application that are already based on §1(a) or §44(e).

3. Deleting the Section 1(b), intent to use, filing basis

After the NOA issues, you can delete the §1(b), intent to use filing basis, in an application where all of the goods/services in the application have a dual basis. For example, if the goods/services are based on intent to use and a foreign registration, you may request that the intent to use basis be deleted so that the application can move to registration based on the foreign registration. To delete the §1(b) basis in a dual basis application, use the Request to Delete Section 1(b) Basis, Intent-to-Use form available on the website at http://teas.uspto.gov/dob/.

Please note that if you want to delete the intent to use goods/services from the application and have other goods/services based on use or a foreign registration that you want to go to registration, you are not deleting a basis. You must use the Post Publication Amendment form to delete the intent to use goods/services. See no. 2 above.

4. Changing filing basis after the NOA issues

You can request to substitute the §1(b), intent to use basis, for §44(e), a foreign registration, after publication only by filing a petition to the Director. Use the Petition to Amend Basis Post-Publication form available on the website at http://www.uspto.gov/teas/eTEASpageG.htm. You must be amending the basis for all of the goods/services in the application otherwise you must first file a request to divide the application at http://www.uspto.gov/teas/eTEASpageF.htm. There is a $100 petition fee required. If the change in basis is accepted, republication is required. For more information, see TMEP § 806.03(j).

5. Changing your mark or filing amendments other than to delete goods/services after the NOA issues

After the NOA issues, a petition to the Director is required to allow the examining attorney to consider an amendment other than an amendment to delete goods or services from the application, unless the amendment is submitted with or after the statement of use. Use the Petition to Director form at http://www.uspto.gov/teas/eTEASpageG.htm. Please note that an amendment to the mark will not be allowed if it is considered a material alteration of the mark.