Roses are red, violets are blue, when faced with a Statement of Use deadline in an ITU application and some but not all of the applied-for goods/services are in use, what’s one to do?

Now that we’re done with THAT, on to the good stuff. Once a trademark application that is based on an “intent-to-use” has been allowed (and, congratulations!), the Applicant has six months to file proof of use or request a six-month extension of time to show use (up to five such extensions are possible). While only one specimen of use per class must accompany a “Statement of Use,” a mark must be used in interstate commerce on or in connection with all of the goods/services recited in the SOU. But, what if the mark is being used in commerce on some, but not all of the applied-for goods and/or services, and you do not want to simply delete the items not yet in use (i.e., you still have a bona fide intention to use the mark on those items/services, but haven’t yet done so)?

An often-overlooked option is to file a “Request to Divide” with the U.S. Patent and Trademark Office. Using this procedure, goods/services that are currently in use are moved to a new “child” application, while goods/services not yet in use remain in the original, “parent” application. The two separate applications can then move on independent tracks, with an extension request being filed in the “parent” application and a Statement of Use (and possibly a first extension request) being filed in the “child” application. The current USPTO fee for dividing an application is $100 per new application created (plus any extension and SOU fees), although additional USPTO fees may apply depending on how the goods/services are divided. Given that dividing an application actually involves several separate filings, fees and requirements, it is recommended that an experienced trademark attorney be consulted before taking such action.

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Danielson Legal is a boutique intellectual property and technology law firm in Cambridge, Massachusetts.

We represent international, national and regional companies, both large and small, in a variety of trademark, patent, copyright, licensing, and related areas of practice.

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