based on the number of new applications created by the division. In addition to the fee for dividing, an application filing fee must be submitted, if applicable, for each new separate application created by the dividing out of some but not all of the goods or services in a class.

An applicant may file a request to divide the application at any time between the filing of the application and the date the examining attorney approves the mark for publication or the date of expiration of the six-month response period after issuance of a final action or, during an opposition, upon motion granted by the Trademark Trial and Appeal Board. A request to divide a §1(b) application may also be filed with a statement of use or at any time between the filing of a statement of use and the date the examining attorney approves the mark for registration or the date of expiration of the six-month response period after issuance of a final action. 37 C.F.R. §2.87(c).

An applicant may request division of an application for any reason. For example, in an intent-to-use application, the applicant may wish to proceed to publication or registration with certain goods and services on or in connection with which it has used the mark in commerce and retain an active application for any remaining goods or services. The applicant can do so by requesting division of the application and paying the applicable fees. A request to divide out one or more entire classes from an application must be accompanied by a fee for dividing the application. This fee is based on the number of new applications created by the division. 37 C.F.R. §§2.6(a)(19) and 2.87(a) and (b).

A request to divide out some, but not all, of the goods or services in a class must be accompanied by the fee for dividing the application, based on the number of new applications created, and by an application filing fee for each new separate application created by the division. 37 C.F.R. §§2.6(a)(1), 2.6(a)(19), and 2.87(a) and (b).

Thus, an applicant may request that certain goods or services in its application be divided out, that is, that a new application or applications with the same filing date be created for such goods or services. If the goods or services comprise all of those specified in a particular class or classes, they may be divided out upon payment of the fee for dividing, which is based on the number of new applications created by the division. If the goods or services comprise fewer than all of those specified in a class or classes, they may be divided out upon payment of the fee for dividing and an application filing fee for each new separate application created by the division.

1105.06(a) Processing Requests to Divide

Specially designated personnel in the ITU/Divisional Unit will process all requests to divide. Requests to divide will be given priority in processing over any other paper in the case. There is one exception to this general rule. If, after issuance of the notice of allowance, the applicant submits a request for an extension of time at the same time as or before the division request, and the extension request applies to the resulting applications, the extension request will be processed first. In those instances where the applicant seeks, in the division request, to divide out goods or services within a class, this order of processing will provide the applicant with an extension that applies to all resulting applications without requiring additional fees for extension requests.

All requests to divide should be forwarded to the ITU/Divisional Unit immediately for processing. However, if the application is the subject of a proceeding before the Trademark Trial and Appeal Board, the request should first be forwarded to the Board for appropriate action. The ITU/ Divisional Unit will process the request as promptly as possible and will return the application or applications to regular processing after completing action on the request to divide.

If the request to divide does not include a necessary fee or is otherwise deficient, the ITU/Divisional Unit will notify the applicant of the deficiency. The applicant must correct any such deficiency within thirty days or, if the division is a necessary component of a statement of use, within the time permitted for filing the statement of use, whichever is shorter. If the applicant fails to correct the deficiency within the time provided, the request will be considered abandoned and the application will be processed without regard to the request. The ITU/Divisional Unit will advise the applicant of any such action and will refund any fees paid in conjunction with the request to divide.

If the applicant submits a request to divide along with a statement of use and a request for an extension of time, and the fees are insufficient to cover all three, the fees will be applied first to the request for an extension of time, second to the statement of use and lastly to the request to divide.

If the applicant submits a request to divide along with a statement of use, and the fees are sufficient for the statement of use only, and no time remains for filing additional fees, the applicant will be given the opportunity to amend the statement of use to include all goods or services in the application. The applicant must establish that the applicant used the mark in commerce on or in connection with all such goods or services within the time

permitted for filing the statement of use. If time does remain in the existing period for filing the statement of use, the applicant will be permitted to submit the additional fees within that time period.

If an applicant requests division of an application which includes a certified copy of a foreign registration, the applicant need not provide an additional certified copy of the foreign registration. A note indicating the serial number of the application where the original appears should be placed in the Notes-to-the-File section of each case which includes a photocopy of the foreign registration.

Filing a request to divide an application does not relieve an applicant of the duty to respond to any outstanding Office action or to take any other required action.

Likewise, the applicant should note that any outstanding time period for action by the applicant in effect at the time the application is divided applies not only to the original application, but also to each new application created in the division of the application. Therefore, if a response to an Office action is due in a

case, the response is due likewise in each new application created through the division of the application.

Similarly, if a statement of use is due, the period for filing the statement of use relevant to the original application is likewise relevant to each new application created through the division.

If a request to divide an application is received at any time other than those specified in 37 C.F.R. §2.87(c), it will be returned to the applicant with any fees submitted for that purpose and the application will not be divided. While 37 C.F.R. §2.87(d) provides that requests to divide "should be made in a separate paper from any other amendment or response in the application," this language is not intended to prohibit division requests by examiner's amendments in appropriate circumstances.

1105.06(b) Division of Registration Not Permitted

A registration cannot be divided into one or more separate registrations.

1106 The Examining Attorney's Letter or

Action

Upon taking up a trademark application for examination, the examining attorney should make a thorough study of the application and a thorough search of the marks registered in the Patent and Trademark Office. The examination should cover the compliance of the application with the Trademark Act and rules, as well as all matters affecting or involving the registrability of the mark. If the mark is found not entitled to registration, or if any requirement or objection is made, the examining attorney will notify the applicant thereof and of the reason therefor. The applicant is notified by means of the examining attorney's letter, which constitutes the examining attorney's official action, or in a telephone conversation which is normally followed by a letter. Where appropriate, the letter may comprise a pre-printed form.

1106.01 Completeness of Examining Attorney's Action

The examining attorney's first action should be complete, so that the applicant will be apprised of all matters to be attended to, of all grounds of refusal, and of all reference marks which must be considered. If there is insufficient information for proper examination on any point, appropriate inquiry should be made at this time. An applicant should be entitled to assume that all pertinent matters have been brought to the applicant's attention in the first action, and that new refusals, requirements or objections will not be added in later actions, with the exception of use-related issues which are considered for the first time in the examination of an amendment to allege use or a statement of use filed in connection with an intent-to-use application.

Besides making first actions complete, examining attorneys should also clearly advise the applicant of what is required, and the applicant must respond clearly and completely to each point raised by the examining attorney. Prolonged prosecution due to lack of communication by either party is discouraged. For example, if the identification of goods or services is indefinite, the examining attorney should tell the applicant why and, if possible, suggest an acceptable identification. A telephone call is often the most expedient way to resolve an identification issue. Every effort should be made to avoid piecemeal action, for it prolongs the time needed to dispose of an application and may create the impression of unfounded change of mind by the examining attorney.

When there is inadvertent failure to take complete action, see TMEP §1105.03(a).

1106.02 Language in Examining Attorney's Letter

1106.02(a) Connecting Language

It is desirable to indicate at the beginning of each letter the status of the action.

In first action letters, this may be done by indicating that the examining attorney has reviewed the application and made the determinations that follow, or by using such language as "Upon examination of this application . . . ." The examining attorney should acknowledge any paper received prior to the first action by identifying the paper and the date of its receipt.

In amended cases, examining attorneys should begin letters with a sentence such as, "This letter responds to the communication filed on (date)." Other papers received, such as supplemental amendments, affidavits, new drawings, etc., should be separately mentioned.

1106.02(b) Statutory Refusals

Refusals to register should be couched in the statutory language of the section of the Trademark Act which is the basis of the refusal, and the examining attorney should designate the statutory basis for the refusal by reference to the appropriate section of the Act. For example, registration of a trademark should not be refused "because it is a surname," but because it consists of a mark which is primarily merely a surname under $2(e)(3) of the Trademark Act. Registration of a trademark should not be refused "because it describes the goods," but because it consists of a mark which, when applied to the goods of the applicant, is merely descriptive of them under $2(e)(1) of the Trademark Act. If the Act does not provide specific language to fit a particular situation, the examining attorney should indicate the section or sections of the Act under which the refusal is made, and explain the relationship between the refusal and the language of the sections. See In re Shareholders Data Corp., 495 F.2d 1360, 181 USPQ 722 (CCPA 1974).

When, because of the nature of a mark, a refusal relates to a register (Principal or Supplemental) according to the specifications for that register in the statute, the examining attorney should indicate the register on which registration is being refused. In order to have a clear issue, registration must be refused only as to the specific

The

register for which registration is requested. examining attorney must neither anticipate a request for registration on the other register nor attempt to prejudge or give a refusal ahead of time as to the other register. When refusing registration on the Principal Register, however, the examining attorney should also state, to the extent possible, whether the record indicates that an amendment to the Supplemental Register or registration on the Principal Register pursuant to §2(f) may be appropriate.

On final refusal, the examining attorney should not ever use a limiting word such as "conditional." Such wording is inappropriate for final refusal. See TMEP §1105.04(c).

1106.02(c)

General Language

In order to promote clarity of communication and mutual understanding between parties, examining attorneys should use the generally accepted language of the trademark field, that is, the words and phrases for which specific meaning has developed in connection with situations involving trademarks. As illustrated by the following examples, the language used should be appropriate to accurately and thoroughly address the particular issues in a case.

When a mark is found not entitled to registration, the word "refused" should be used. The word "rejected" is not proper because it is not a part of either the Trademark Act or the trademark rules and has no meaning in relation to the registration of trademarks. The term "objected to" may be used to point out unsatisfactory elements, and the term "required to" is proper for indicating action which must be taken. Distinctions should be observed in the use of words like "request," "suggest," "object," "inquire" and "require," in order that an applicant will understand whether a mere request is being made, with the result that any reply will be accepted, or whether a requirement for a specific action is being made which must be taken before the examining attorney will approve the mark for publication or registration.

The words "capable" and "incapable" should be reserved for the Supplemental Register because the word "capable" appears in the Act only in connection with the Supplemental Register and the word has a recognized meaning only in regard to the Supplemental Register. If registration is being refused on the ground that the matter presented does not function as a mark, care should be taken not to refer to such matter as a "mark" in other parts of the letter.

When asking that a specified action be taken, the examining attorney should make it clear whether the applicant's signature is required or whether the action may be taken by the applicant's attorney.

1106.02(d) Examining Attorneys Should Not Volunteer Statements

In writing letters, examining attorneys should not volunteer statements about applicants' rights which are gratuitous and unnecessary to the examination of the matters presented in applications. Judgments as to an applicant's possible rights or actions are the prerogative of the applicant. The examining attorney's responsibility is limited to evaluating for registration the matters presented in the application. See In re American Physical Fitness Research Institute Inc., 181 USPQ 127 (TTAB 1974). See also TMEP §1801.

1106.03 Preparation of the Examining Attorney's Letter

Letters may be of a variety of styles, including (1) an "examiner's amendment," either on a preprinted form or in the form of a typed letter, in which the examining attorney formally makes amendments to the application, with the authorization of the applicant or the applicant's attorney; (2) a "priority action," either on a preprinted form or in the form of a typed letter, acknowledging certain requirements and/or reasons for refusal, discussed by telephone with the applicant or attorney; or (3) a letter describing bases for refusal and requirements. Letters may be prepared in several ways standardized form paragraphs (see TMEP §1106.03(a)), through the use of or written specifically to address the particular facts.

-

The Office prefers the use of examiner's amendments, priority actions, and letters using standardized form paragraphs, whenever appropriate and feasable, because these types of actions can expedite matters. When an applicant or attorney is clearly unfamiliar with trademark law and practice, it may be desirable to give more explanation than normal, and an individually prepared letter may be used to do that even though form material might otherwise have been used.

1106-2