If the applicant is represented by an attorney qualified under 37 C.F.R. §11.14, or is required to appoint such an attorney due to its foreign domicile, a Section 1 and/or 44 application must include the individual attorney’s name, postal address, email address, and bar information, and this information must be provided in a subsequent submission in a Section 66(a) application. 37 C.F.R. §§2.17(b)(3), 2.21(a)(2), 2.32(a)(4). The USPTO requires this information only for the attorney of record (i.e., the primary attorney) and not for associate or other-appointed attorneys. For determining when a qualified U.S. attorney must be appointed, see TMEP §§601-601.01(b) for a Section 1 and/or 44 application and §601 and §1904.02(h) and for a Section 66(a) application.
Email Address. A valid email address must be provided and maintained for the applicant’s attorney, if one is appointed to represent the applicant. See 37 C.F.R. §2.18(c). The USPTO will correspond with the attorney of record at the listed email address. The listed email address of the applicant’s attorney cannot be identical to the applicant’s email address, even for in-house counsel and attorneys representing themselves in a trademark matter. The listed email address for the attorney must be the attorney’s email address and not the email address of a third party.
Attorney Bar Information. Trademark Rule 2.17(b)(3) requires the applicant’s attorney to provide (1) the name of the U.S. state, Commonwealth, or territory in which he or she is an active member in good standing; (2) the date of his or her admission to the bar in the named U.S. state, Commonwealth, or territory; (3) the bar license number, if one is issued by the U.S. state, Commonwealth, or territory; and (4) a statement that he or she is an active member in good standing of the bar of the listed U.S. state, Commonwealth, or territory. This information is required at the time of filing for all attorneys representing applicants or registrants before the USPTO in Section 1 and/or 44 applications. See 37 C.F.R §2.17(b)(3).
If the attorney’s U.S. state, Commonwealth, or territory does not issue a bar number, this fact must be stated for the record. Otherwise, the application must provide the number used by the U.S. state, Commonwealth, or territory that licenses the attorney, which number may be called by different names, including a bar, membership, account, or identification number.
For a Section 1 and/or 44 application, the TEAS forms include specific fields to enter the bar information for the attorney of record that will not display this information in the public record. Bar information entered in the bar information fields on the attorney information page will be hidden from public view. If the attorney bar information is omitted or incomplete, the examining attorney will issue an Office action requiring such bar information and/or a statement that the attorney is an active member in good standing in the designated U.S. state, Commonwealth, or territory. See TMEP §602.01(a)for when and how an examining attorney may issue an examiner’s amendment to resolve this requirement.
If the application is filed with clearly invalid attorney identification information (e.g., John Doe, a series of question marks or letters/numerals, a single name, or the word "test"), the listed attorney does not appear to be a qualified U.S.-licensed attorney, or the listed attorney has not consented to represent the applicant, see TMEP §602.01(a) regarding examination procedures for these applications.
If the application is filed with attorney bar information that appears valid, but circumstances indicate that it is invalid because it does not identify an individual qualified to practice before the USPTO, see TMEP §602.01(a) regarding examination procedures for these applications.
TEAS Plus Applications. The TEAS Plus application form requires the attorney’s name, postal address, email address, and bar information in order for the application to validate. If the application includes clearly invalid attorney identification information, or the listed attorney does not appear to be qualified to practice before the USPTO or to have consented to represent the applicant, the applicant will be required to pay an additional processing fee. See 37 C.F.R §2.22(c). If the attorney bar information, appears valid on its face but is later determined to be invalid, the applicant will also be required to pay the additional processing fee. See id. See TMEP §819.01 and §819.01(d) regarding the TEAS Plus application requirements for attorney identification information and the additional fee required if such information is omitted or determined to be invalid.
An applicant not domiciled in the United States may file a document designating the name, email address, and postal address of a person residing in the United States on whom may be served notices or process in proceedings affecting the mark. See 15 U.S.C. §1051(e), §1141h(d); 37 C.F.R. §2.24(a)-(b). See TMEP §610 for further information on designations of domestic representatives. The designation of a domestic representative does not authorize that person to represent the applicant before the USPTO. 37 C.F.R. §2.24(c).
Identification of prior registrations. Prior registrations of the same or similar marks owned by the applicant should be identified in the application if the owner(s) last listed in Office records of the prior registrations differs from the owner(s) listed in the application.
Trademark Rule 2.36 states that prior registrations of the same or similar marks owned by the applicant should be identified in the application if the owner listed in the application differs from the owner last listed in the USPTO's records for such prior registrations. The rule does not precisely define when an applicant should claim ownership of prior registration(s), and the examining attorney may exercise discretion in invoking the rule. The main purpose of the rule is to provide the examining attorney with information necessary for proper examination. The information does not have to be given in any specific form. The applicant’s claim of ownership of prior registrations will be published in the Trademark Official Gazette and included on the registration certificate.
Normally, identification of a registration is necessary because the registration would, if not owned by the applicant, be a basis for refusal under §2(d) of the Act, 15 U.S.C. §1052(d). Occasionally, it is desirable to ask an applicant to identify a particular registration as being owned by the applicant merely to provide relevant information.
It is not necessary to assert ownership of expired or cancelled registrations. If the applicant wants to include a reference to a cancelled or expired registration, the applicant should indicate that the applicant owns the mark disclosed in the cancelled or expired registration, because technically one does not "own" a registration that is not in force and effect. Claims of ownership of pending applications, expired or cancelled registrations, and registrations that are unrelated to an application will not be published.
Before approving an application that includes a claim of ownership of prior registrations for publication or registration, the examining attorney must ensure that the registrations are active. If a registration is not active, the claim of ownership should not be published.
All information in the "Prior Registration" field in the application record in the Trademark database will automatically be published in the Trademark Official Gazette and included on the certificate of registration. Accordingly, when an examining attorney determines that a claim of ownership of a prior registration should not be published (e.g., because the registration is no longer active or is irrelevant to the registrability of the mark in the subject application), the examining attorney must ensure that the claim of ownership is deleted from the Trademark database, and enter a Note to the File in the record indicating that the claim has been deleted. The document containing the information deleted from the Trademark database will remain of record for informational purposes. See TMEP §817 regarding preparation of an application for publication or issuance.
If the applicant owns numerous prior registrations for the same or similar marks, in which the owner(s) last listed in the USPTO's records differs from the owner(s) listed in the application, the applicant should identify all such prior registrations in the application. If the applicant lists numerous prior registrations, the database will only show three registration numbers and will indicate "and others" as to any additional registration numbers. Therefore, the examining attorney must ensure that the claim of ownership identifies the two or three most relevant registration numbers.
In a TEAS Plus application, if the applicant owns one or more registrations for the same mark, and the last listed owner(s) of the prior registration(s) differs from the owner of the application, the initial application must include a claim of ownership of the registration(s). 37 C.F.R. §2.22(a)(18). If this information is not included in the initial application, the applicant must pay a processing fee per class to have the application examined as a TEAS Standardapplication. 37 C.F.R. §2.22(c). See TMEP §819.01(p) for further information.
If an applicant includes a claim of ownership of a prior registration, or a pending application, in the application as filed, the examining attorney must accept the claim without further proof of ownership and must not cite the registration for likelihood of confusion under §2(d) of the Act or advise the applicant that there may be a conflict with the earlier-filed application.
Generally, the applicant has the burden of proving ownership of a registration. The USPTO’s automated search system may not reflect the recordation of changes of ownership in the Assignment Recordation Branch. See TMEP §§502–502.03. If the applicant does not assert ownership of a pertinent registration in the application when it is filed, but the Trademark database indicates that an assignment was filed as to the registration, the examining attorney must check the database of the USPTO’s Assignment Recordation Branch to determine whether information contained in the database supports ownership of the registration in the applicant’s name. If records in the Assignment Recordation Branch's database indicate that the registration is owned by the applicant, the examining attorney must not cite the registration for likelihood of confusion.
However, if an applicant does not assert ownership of a pertinent registration in an application when it is filed, and the USPTO's records do not indicate that it is owned by the applicant, the registration must be cited against the current application under §2(d). If so, the applicant must do one of the following to verify its ownership claim of the cited registration: (1) state for the record that the documents have been recorded in the Assignment Recordation Branch for a registration based on an application under §1 or §44 of the Trademark Act, or with the IB for a §66(a) registration; (2) submit copies of documents evidencing the chain of title; or (3) submit a statement, supported by an affidavit or declaration under 37 C.F.R. §2.20, that the applicant is the owner of the cited registration. This also applies to pending conflicting applications that are cited as a potential bar to registration.
A refusal under §2(d) cannot be overcome by a claim of ownership of a registration made by the applicant in another registration file when the USPTO’s records do not indicate that the registration is owned by the applicant.
When a name, portrait, or signature in a mark identifies a particular living individual, or a deceased president of the United States during the life of his widow, the mark can be registered only with the written consent of the individual, or of the president’s widow, respectively. 15 U.S.C. §1052(c). The requirement for consent also applies to the registration of a pseudonym, stage name, or nickname, if there is evidence that the name identifies a specific living individual who is publicly connected with the goods or services, is generally known, or is well known in the field relating to the relevant goods or services. See TMEP §§1206–1206.05 concerning refusal of registration under §2(c) of the Trademark Act, 15 U.S.C. §1052(c), when a mark in an application comprises the name, portrait, or signature of a living individual whose consent to register such name or likeness is not of record.
See TMEP §1206.03 for information about when the examining attorney must inquire as to whether a name or likeness identifies a particular living individual.
Consent may be presumed where the individual whose name or likeness appears in the mark personally signs the application. See TMEP §1206.04(b) for further information.
If a consent to register is already part of the record in the file of a valid registration for a mark comprised in whole or in part of the same name, portrait, or signature for the same goods or services, the applicant may satisfy the requirement for a consent statement by claiming ownership of the registration and advising the examining attorney that the consent is of record therein. See TMEP §1206.04(c) for further information.
If a mark comprises the name or likeness of a living individual and consent to register is of record or is presumed from signature of the application, a statement that the mark identifies a living individual whose consent is of record must be published in the Trademark Official Gazette and included on the registration certificate. See TMEP §§813.01(a), 1206.04(b). If a name or likeness that could reasonably be perceived as that of a living individual is not that of a specific living individual, a statement to that effect is published in the Trademark Official Gazette and included on the registration certificate. See TMEP §813.01(b).
In a TEAS Plus application, if the mark includes an individual’s name or portrait, the initial application must include either: (1) a statement that identifies the living individual whose name or likeness the mark comprises, and written consent of the individual; or (2) a statement that the name or portrait does not identify a living individual. 37 C.F.R. §2.22(a)(17). If this statement does not appear in the initial application, the applicant must pay a processing fee per class to have the application examined as a TEAS Standard application. 37 C.F.R. §2.22(c). See TMEP §819.01(o) for further information.
See TMEP §813.01(b) and §1206.05 regarding statements that a name or likeness that could reasonably be perceived as that of a living individual is not that of a specific living individual.
If a mark comprises the name or likeness of a living individual and consent to register is of record, a statement to that effect must be published in the Trademark Official Gazette and included on the registration certificate. The following are examples of acceptable statements:
The name, portrait, and/or signature shown in the mark identifies a living individual whose consent to register is made of record;
The name shown in the mark identifies a living individual whose consent is of record;
The name "JOHN SMITH" identifies a living individual whose consent is of record;
The likeness (or "portrait" in the mark identifies a living individual whose consent is of record;
The portrait or likeness shown in the mark identifies John Smith, whose consent to register is made of record;
The signature shown in the mark identifies a living individual whose consent is of record;
The signature shown in the mark identifies "JOHN SMITH", a living individual whose consent is of record; or
The name, portrait, and/or signature shown in the mark identifies John Smith, whose consent to register is made of record.
Only matter that actually appears in the mark should appear in capital letters within quotation marks.
Where the mark comprises a portrait, first name, pseudonym, nickname, surname of an individual who is well known in the field relating to the goods or services (see TMEP §1206.03), surname preceded by initials (e.g., "J.C. Jones"), or title of a living individual, the record must clearly identify the actual name of the individual and indicate that the name shown in the mark identifies that individual. A legible signature on the consent statement may in itself be sufficient to identify the individual’s name. If the actual name is unclear, the examining attorney must issue an inquiry. The name may be entered by examiner’s amendment, if appropriate.
Where the mark comprises the name or likeness of a living individual whose consent is of record, the consent statement must always be published, even if the name that appears in the mark is that of the applicant. The statement must also be published if consent is presumed from signature of the application (TMEP §1206.04(b)), or if consent is of record in a valid registration owned by the applicant (TMEP §1206.04(c)).
Where consent is presumed from signature (TMEP §1206.04(b)), the examining attorney must ensure that the required statement is entered in the Trademark database. The examining attorney must also enter a Note to the File in the record indicating that the statement must be published. No prior approval by the applicant or the applicant’s qualified U.S. attorney is required.
The examining attorney must ensure that the Trademark database is updated, if necessary. See TMEP §813.01(c).
If a name or likeness that could reasonably be perceived as that of a living individual is not that of a specific living individual, a statement to that effect must be published in the Trademark Official Gazette and included on the registration certificate. The statement should read as follows:
The name "__________" does not identify a living individual;
The likeness (or "portrait") in the mark does not identify a living individual; or
The name(s), portrait(s), and/or signature(s) shown in the mark does not identify a particular living individual.
The applicant should explain any additional relevant circumstances. For example, if the matter identifies a certain character in literature or a deceased historical person, then a statement of these facts in the record may be helpful, but this information will not be published in the Trademark Official Gazette or included on the registration certificate.
No statement should be published unless the name or portrait might reasonably be perceived as that of a specific living individual. This is true even if the applicant submits an unsolicited statement that a particular name or portrait does not identify a living individual.
Generally, if the name or likeness is such that an inquiry would have been required as to whether it identifies a living individual (see TMEP §1206.03), and the applicant states that the mark does not identify a living individual, then the statement that the name or likeness does not identify a living individual should be published.
The examining attorney must ensure that the Trademark database is updated, if necessary. See TMEP §813.01(c).
If the applicant owns a valid registration for a mark comprised in whole or in part of the same name, portrait, or signature for any goods or services, and the record for the registration contains a statement that the name or likeness is not that of a living individual, the applicant should claim ownership of the registration and advise the examining attorney that the statement is of record therein. The examining attorney may then enter the same statement in the record for the application, even if the applicant does not resubmit or reference the statement. It is not necessary to issue an inquiry in this situation.
All statements in the Trademark database as to whether a mark comprises the name, portrait, or signature of a living individual whose consent is of record will automatically be published in the Trademark Official Gazette and included on the certificate of registration. Accordingly, when an examining attorney determines that such a statement should be published, the examining attorney must ensure that the statement is entered into the Trademark database. Where consent is presumed from signature (TMEP §1206.04(b)), the examining attorney must also enter a Note to the File in the record indicating that the statement must be published.
When an examining attorney determines that such a statement should not be published, the examining attorney must ensure that the statement is deleted from the Trademark database. The examining attorney must also enter a Note to the File in the record indicating that the statement has been deleted. The document containing the information deleted from the Trademark database will remain of record for informational purposes. See TMEP §817 regarding preparation of an application for publication or registration.
Sometimes, it is necessary for the examining attorney to request such additional information from an applicant as may be "reasonably necessary" to examine the application properly, pursuant to 37 C.F.R. §2.61(b). This rule is designed to encourage high-quality, efficient examination and recognizes that an applicant is often in the best position to provide the facts and information that the USPTO needs to properly examine an application and assess registrability of the applicant’s mark. In re SICPA Holding SA, 2021 USPQ2d 613, at *9 (TTAB 2021) (comparing Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1284, 73 USPQ2d 1409, 1414 (Fed. Cir. 2005) (discussing analogous Patent Rule 1.105(a)(1))). If an information request is properly focused on obtaining the information most relevant to evaluate a particular ground of refusal or requirement, examination is more efficient and refusals (or allowances) of registration based on insufficient facts and information can be avoided. Cf. Star Fruits S.N.C., 393 F.3d at 1284, 73 USPQ2d at 1414.
The Court of Appeals for the Federal Circuit has determined that the wording "reasonably necessary" should be interpreted broadly, and applies to information that is "relevant to" registrability or "reasonably calculated" to lead to such relevant information. Star Fruits S.N.C., 393 F.3d at 1282-85, 73 USPQ2d at 1413-15. A question is considered "relevant" if an examining attorney has a legitimate reason for asking for the information and if the information is pertinent to the examining attorney’s legal inquiry. Id., 393 F.3d at 1284-85, 73 USPQ2d at 1415.
An examining attorney should ask questions under Rule 2.61(b) designed to obtain specific information that is factual in nature. The examining attorney may also request literature, exhibits, affidavits or declarations, and general information about circumstances surrounding the mark, as well as, if applicable, its use or intended use. Requests for information that is not public knowledge, but is within the knowledge of the applicant or available to the applicant, are particularly appropriate. The examining attorney must explain why the information is needed, if the reason is not obvious.
The applicant has a duty to participate in the examination process by responding directly and completely to each request for information. See Star Fruits S.N.C., 393 F.3d at 1284-85; 73 USPQ2d at 1415 ("So long as there is some legitimate reason for seeking the information . . . the applicant has a duty to respond."). If the applicant provides information from its website in response to the examining attorney’s request for information, the applicant must attach such information to its response, along with the date the evidence was downloaded or accessed and the complete URL. See TMEP §710.01(b). It is not sufficient to provide only the applicant’s website address. Id. In addition, a mere statement that information about the goods or services is available on the applicant’s website is an inappropriate response to the examining attorney’s request for information, and insufficient to make the relevant information of record. In re Planalytics, Inc., 70 USPQ2d 1453, 1457 (TTAB 2004) . See TMEP §710.01(b) regarding the submission of Internet evidence.
"Applicants are expected to provide direct and complete responses to a requirement for information. Examining attorneys are [generally] not expected to infer direct answers from responses that provide mere hints as to the answer." In re ADCO Indus. – Techs., L.P., 2020 USPQ2d 53786, at *2 (TTAB 2020). "Equivocal, vague, or evasive responses are unacceptable." In re SICPA Holding SA, 2021 USPQ2d 613, at *6 (citing In re AOP LLC, 107 USPQ2d 1644, 1651 (TTAB 2013)). However, where the applicant’s response indirectly provides responsive answers to an information requirement, this may satisfy such a requirement. See In re ADCO Indus. – Techs., 2020 USPQ2d 53786, at *2 (noting that "[t]he better practice would have been for Applicant to respond directly to the Examining Attorney’s requirement").
If the applicant does not believe that it has relevant information, applicant should submit a statement to this effect. In re Ocean Tech., 2019 USPQ2d 450686, at *2 (citing In re Planalytics, 70 USPQ2d at 1457 n.2.)
If the applicant does not comply with the examining attorney’s request for information, the requirement should be repeated and, if appropriate, made final. An applicant’s failure to respond to an information requirement is itself grounds for refusal. See In re SICPA Holding SA, 2021 USPQ2d 613, at *6 (citing In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P'ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003)); In re ADCO Indus. – Techs., 2020 USPQ2d 53786, at *2 (citing In re Emergency Alert Sols. Grp., LLC, 122 USPQ2d 1088, 1093 (TTAB 2017); In re DTI P'ship, 67 USPQ2d at 1701-02); In re Harley, 119 USPQ2d 1755, 1758 (TTAB 2016) (affirming refusal of registration because applicant’s appeal brief failed to address the relevant refusals, including a refusal based on noncompliance with a requirement for information); In re AOP LLC, 107 USPQ2d 1644, 1651 (TTAB 2013) ("Failure to comply with a request for information is grounds for refusal," where applicant provided equivocal responses to examining attorney’s questions and did not address this issue in its brief); In re DTI P'ship LLP, 67 USPQ2d 1699 (TTAB 2003) (deeming a §2(e)(1) refusal moot, since failure to comply with a requirement for information is a sufficient basis, in itself, for refusal); In re SPX Corp., 63 USPQ2d 1592 (TTAB 2002) (finding registration properly refused where applicant ignored a request for information); In re Page, 51 USPQ2d 1660 (TTAB 1999) (finding intent-to-use applicant’s failure to comply with a requirement for information as to the intended use of the mark constituted grounds for refusal); In re Babies Beat Inc., 13 USPQ2d 1729, 1731 (TTAB 1990) (finding registration properly refused where applicant failed to comply with examining attorney’s request for copies of patent applications and other patent information); In re Air Prods. & Chems., Inc., 192 USPQ 157, 158 (TTAB 1976) ("[Trademark Rule 2.61(b)] has the effect of law.")
An applicant’s failure to respond to an information requirement also can result in an adverse evidentiary inference being drawn regarding the issue to which the information requirement was directed. See In re AOP LLC, 107 USPQ2d at 1651 (noting because applicant had failed to comply with examining attorney’s information requirement, "to the extent there is any ambiguity regarding the origin and certification of applicant’s goods we address both [merely descriptive and deceptively misdescriptive] refusals in the alternative based on the presumption that had applicant directly and fully responded to the examining attorney’s inquiries, the responses would have been unfavorable"); In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008) (making factual presumptions unfavorable to applicant in considering alternative statutory refusals under §2(e)(2) and §2(e)(3), in view of applicant’s failure to comply with examining attorney’s requirement for information as to the geographic origin of the goods); cf. In re Emergency Alert Sols. Grp., LLC, 122 USPQ2d 1088, 1091-93 (TTAB 2017) (reversing a refusal based on a failure to comply with an information request after finding that applicant’s response was "reasonably forthcoming" and "did not withhold the required information").
If the requested information is confidential, or if, for a valid reason, the applicant does not want to have the information become part of a public record, the applicant should consider redacting such portions of documents prior to their submission. Documents filed in the USPTO by the applicant become part of the official record and will not be returned or removed. 37 C.F.R. §2.25; TMEP §404. Placing confidential information in the record is not required. A written explanation or summary usually will suffice.
Sections 23 through 28 of the Trademark Act, 15 U.S.C. §§1091–1096, provide for registration on the Supplemental Register. Certain marks that are not eligible for registration on the Principal Register, but are capable of distinguishing an applicant’s goods or services, may be registered on the Supplemental Register. Marks registered on the Supplemental Register are excluded from receiving the advantages of certain sections of the Act of 1946. The excluded sections are listed in 15 U.S.C. §1094. See TMEP §801.02(b).
If the applicant seeks registration on the Supplemental Register, the application should state that registration is requested on the Supplemental Register. If no register is specified, the USPTO will presume that the applicant seeks registration on the Principal Register.
A mark in an application under §66(a) of the Trademark Act, 15 U.S.C. §1141f(a), based on a request for extension of protection of an international registration to the United States, cannot be registered on the Supplemental Register. 15 U.S.C. §1141h(a)(4); 37 C.F.R. §§2.47(c), 2.75(c).
Upon approval of the mark for registration, the record will indicate that the mark has been "Allowed for Supplemental Registration" rather than that the mark has been approved for publication. Marks on the Supplemental Register are not published for opposition, but are issued as registered marks on the date that they are published in the Trademark Official Gazette.
Applications on the Supplemental Register are not subject to opposition under 15 U.S.C. §1063, but are subject to cancellation under 15 U.S.C. §1064. 15 U.S.C. §1092.
See TMEP §§816–816.05 regarding amendments to the Supplemental Register.
A mark that is clearly eligible for the Principal Register may not be registered on the Supplemental Register. Nazon v. Ghiorse, 119 USPQ2d 1178, 1182 (TTAB 2016); see In re U.S. Catheter & Instrument Corp., 158 USPQ 53, 53 (TTAB 1968); In re Hunt, 132 USPQ 564, 565 (TTAB 1962). An application requesting registration on the Supplemental Register must be amended to the Principal Register, or refused registration, if the mark is registrable on the Principal Register. Daggett & Ramsdell, Inc. v. I. Posner, Inc., 115 USPQ 96 (Comm’r Pats. 1957).
See TMEP §§816–816.05 regarding amendments to the Supplemental Register.
An application requesting registration on the Supplemental Register should state that the applicant requests registration on the Supplemental Register. If no register is specified, the USPTO will assume that the applicant is requesting registration on the Principal Register.
In an application under §1(b), the mark must be in lawful use in commerce on or in connection with the goods/services/classes before the mark can register. 15 U.S.C. §1091(a). Under 37 C.F.R. §2.47(d), an intent-to-use applicant is not eligible for registration on the Supplemental Register until the applicant has filed an acceptable allegation of use. When the applicant amends to the Supplemental Register after filing an acceptable allegation of use, the effective filing date of the application is the date on which the applicant filed the allegation of use, i.e., the date on which the applicant met the minimum filing requirements of 37 C.F.R. §2.76(c) for an amendment to allege use (see TMEP §1104.01), or 37 C.F.R. §2.88(c) for a statement of use (see TMEP §1109.01). 37 C.F.R. §2.75(b). See also TMEP §§816.02 and 1102.03 regarding intent-to-use applications and the Supplemental Register.
If an applicant submits a §1(b) application requesting registration on the Supplemental Register for which no acceptable allegation of use has been filed, the examining attorney must refuse registration under §23 of the Trademark Act, 15 U.S.C. §1091, on the ground that the mark is not in lawful use in commerce. The examining attorney will withdraw the refusal if the applicant submits an acceptable allegation of use.
If the application is based solely on §44, the applicant may seek registration on the Supplemental Register without alleging use in commerce or use anywhere in the world. 15 U.S.C. §1126(e); 37 C.F.R. §2.47(b); TMEP §1009. However, the §44 application for a trademark or service mark must include the required verified statement of the applicant's bona fide intention to use the mark in commerce. See 15 U.S.C. §1126(d), (e); 37 C.F.R. §2.34(a)(3)(i), (a)(4)(ii). See TMEP §§1303.01(b)(i), 1304.02(b)(i), and 1306.02(b)(i) regarding the required verified statement for a collective or certification mark application based on §44.
Under 15 U.S.C. §1095, registration of a mark on the Supplemental Register does not constitute an admission that the mark has not acquired distinctiveness.
When the examining attorney refuses registration on the Supplemental Register on the ground that the proposed mark is incapable of distinguishing the applicant’s goods or services, the examining attorney must cite §§23(c) and 45 of the Trademark Act, 15 U.S.C. §§1091(c), 1127, as a basis for refusal. See In re Controls Corp. of Am., 46 USPQ2d 1308, 1309 n.2 (TTAB 1998).
If an application meets the requirements noted in TMEP §815.02, the application may be amended by requesting that the words "Principal Register" be changed to "Supplemental Register," or that "the application is amended to the Supplemental Register."
An application under §66(a) of the Trademark Act cannot be amended to the Supplemental Register. Trademark Act §68(a)(4), 15 U.S.C. §1141h(a)(4); 37 C.F.R. §§2.47(c), 2.75(c).
