Before you submit any forms to change your application information, review the Changing application information after Notice of Publication or Allowance page for more information on what to do.
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 and services to remain based on Section 1(b) intent-to-use (ITU), and other goods and services are ready to move forward to registration. The goods and services moving forward to registration are always placed in the newly created child application. The ITU goods and services remain in the original application, called the parent application.
There is a 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 and services that you are not using or no longer have a bona fide intention to use. See information below on deleting goods and services.
The following is information about the most common scenarios for filing a request to divide after the NOA has issued.
Scenario 1: Your application is based on Section 1(b) ITU, 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 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, and 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, and classes 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 and services in the application.
Scenario 2: Your application is a mixed-basis; some goods and services are based on Section 1(b) ITU, and others are based on Section 1(a) use in commerce or Section 44(e) foreign registration.
After the NOA issues, you can request to divide the goods, services, and classes that are already based on either Section 1(a) use in commerce or Section 44(e) foreign registration so they can move forward to registration. To do this you would need to use the Request to Divide Application.
A child application will be created for the Section 1(a) or Section 44(e) goods, services, and classes. The Section 1(b) ITU goods, services, and classes will remain in the parent application and you will need to file an extension request or statement of use during the statutory filing period.
2. Deleting goods and services (or an entire class) with a Section 1(b) ITU basis
Scenario 1: You no longer intend to file a statement of use for some of the goods and services in the application.
After the NOA issues, you may delete goods, services, and classes from the application by filing a post publication amendment. To do this you would need to use the Post-Publication Amendment form. In the "Explanation of Filing" box that comes up when you use this form, clearly state the goods, services, and classes to be deleted.
Scenario 2: Your have a mixed-basis application and want to delete the Section 1(b) goods and services from the application and proceed to registration with the other goods and services based on Section 1(a) use in commerce or Section 44(e) foreign registration.
After the NOA issues, you may delete the intent to use goods/services from the application, using the Post-Publication Amendment form. In the "Explanation of Filing" box that comes up when you use this form, clearly state that the intent to use goods and services are being deleted and that the application should proceed to registration for the goods and services in the application that are already based on Section 1(a) or Section 44(e).
3. Deleting the Section 1(b) ITU filing basis
After the NOA issues, you can delete the Section 1(b) ITU filing basis in an application where all of the goods and services in the application have a dual basis. For example, if the goods and services are based on intent to use and a foreign registration, you may request that the ITU basis be deleted so your application can move to registration based on the foreign registration. To delete the Section 1(b) basis in a dual basis application, use the Request to Delete Section 1(b) Basis, Intent-to-Use form.
If you want to delete the intent to use goods and services from the application and proceed to registration with other goods and services based on use or a foreign registration, you are not deleting a basis. You must use the Post Publication Amendment form to delete the intent to use goods and services. See number 2 above.
4. Changing filing basis after the NOA issues
You can request to substitute the Section 1(b) ITU basis for Section 44(e) foreign registration after publication only by filing a Petition to Director. Use the Petition to Amend Basis Post-Publication form. You must be amending the basis for all of the goods and services in the application, otherwise you must first file a request to divide the application. There is a $400 petition fee required. If the change in basis is accepted, republication is required. For more information, see TMEP section 806.03(j).
5. Changing your mark or filing amendments other than to delete goods and services after the NOA issues
After the NOA issues, a Petition to 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. An amendment to the mark will not be allowed if it is considered a material alteration of the mark.