Intent-to-Use Applications
As noted in TMEP §815.02, an intent-to-use applicant may file an amendment to the Supplemental Register only after the applicant has begun using the mark and filed an acceptable allegation of use. 37 C.F.R. §2.47(d). In such a case, if the application is based solely on §1(b), the effective filing date of the application is the filing date of 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); TMEP §1102.03. Note, however, that if the application includes a §44(d) filing basis with a priority filing date in addition to the §1(b) basis, the effective filing date (i.e., the priority filing date) is not changed to the filing date of the allegation of use. When the applicant files an allegation of use that complies with the minimum requirements of 37 C.F.R. §2.76(c) or 37 C.F.R. §2.88(c) and an amendment to the Supplemental Register in response to a refusal, the examining attorney must follow the procedures outlined in TMEP §714.05(a)(i).
Amendment of an application from the Supplemental to the Principal Register does not change the effective filing date of an application. Kraft Grp. LLC v. Harpole, 90 USPQ2d 1837 (TTAB 2009) (holding that the filing date did not change when an applicant who originally sought registration on the Supplemental Register, without alleging use in commerce, amended to seek registration on the Principal Register under §1(b)).
Applications Filed Before November 16, 1989
Prior to November 16, 1989, one year’s lawful use of the mark in commerce was required to apply for registration on the Supplemental Register. Effective November 16, 1989, an applicant may apply for registration on the Supplemental Register at any time after commencing use of the mark in commerce.
An applicant may amend a pending application to request registration on the Supplemental Register at any time after use of the mark has commenced. The date of the amendment to the Supplemental Register becomes the effective filing date of the application if: (1) the applicant had not used the mark in commerce for one year before the application filing date; and (2) the applicant amends to the Supplemental Register on or after November 16, 1989.
See also TMEP §§206–206.04 regarding effective filing date.
Although there is no restriction on the number of times an applicant may amend from one register to another, one amendment is usually sufficient, and subsequent amendments should be avoided except for unusual circumstances.
In an application under §1 or §44 of the Trademark Act, the applicant may amend to the Supplemental Register after a refusal to register on the Principal Register, including a final refusal. If the final refusal was under §2(e)(1), §2(e)(2), or §2(e)(4) of the Trademark Act, 15 U.S.C. §§1052(e)(1), 1052(e)(2), 1052(e)(4), or on grounds pertaining to other non-inherently distinctive subject matter, amendment to the Supplemental Register is procedurally an acceptable response. See 37 C.F.R. §2.75. When the applicant files an allegation of use that complies with the minimum requirements of 37 C.F.R. §2.76(c) or 37 C.F.R. §2.88(c) and an amendment to the Supplemental Register in response to a refusal, the examining attorney must follow the procedures outlined in TMEP §714.05(a)(i).
An amendment to the Supplemental Register after refusal presents a new issue requiring consideration by the examining attorney, unless the amendment is irrelevant to the outstanding refusal. If the examining attorney determines that the proposed mark is incapable of identifying and distinguishing the applicant’s goods or services, the examining attorney must issue a nonfinal refusal of registration on the Supplemental Register, under §23 and §45 of the Trademark Act, 15 U.S.C. §§1091, 1127. See TMEP §714.05(a)(i).
The applicant may respond by arguing the merits of the examining attorney’s refusal of registration on the Principal Register and, in the alternative, request registration on the Supplemental Register. An applicant may not, however, state that it "reserves the right" to amend to the Supplemental Register if the refusal is not withdrawn or is affirmed on appeal. In re Integrated Embedded, 120 USPQ2d 1504, 1511(TTAB 2016) (stating the "[a]pplicant cannot ‘reserve a right’ that does not exist"). If the examining attorney is not persuaded to withdraw the refusal, but would accept the amendment, the applicant must be given the option of registration on the Supplemental Register or going forward with the appeal on the underlying refusal. This should be done by telephone or email, with a Note to the File in the record indicating the applicant’s decision, wherever possible. If the applicant wants to appeal, or if the examining attorney is unable to reach the applicant by telephone or email, the examining attorney must issue an action continuing the underlying refusal and noting that the amendment to the Supplemental Register is deemed acceptable and will not be an issue on appeal.
Similarly, the applicant may seek registration on the Principal Register based on acquired distinctiveness under §2(f), 15 U.S.C. §1052(f), and, in the alternative, on the Supplemental Register. See TMEP §1212.02(c).
An applicant may not seek registration of a mark on both the Principal and Supplemental Registers in the same application. See 15 U.S.C. §§1051, 1091; 37 C.F.R. §§2.46, 2.47. Therefore, if an applicant responds to a refusal or requirement by expressly amending to the Supplemental Register as to only certain goods/services/classes, the examining attorney will not accept the request to amend unless it is also accompanied by a request to divide. See TMEP §§801.02(b), 1110-1110.10.
A mark in 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).
An applicant may not amend to the Supplemental Register after the Trademark Trial and Appeal Board has affirmed a refusal of registration on the Principal Register. After having elected one of the remedies available for contesting the basis for the refusal, namely, appeal rather than amendment to the Supplemental Register, and having pursued the remedy to a conclusion, the applicant may not return to its previous position and pursue another remedy for the same refusal anew. In the following cases, the USPTO refused to grant petitions to reopen prosecution and return jurisdiction to the examining attorney to consider an amendment to the Supplemental Register after decision on appeal: Ex parte Simoniz Co., 161 USPQ 365 (Comm’r Pats. 1969); Ex parte Helene Curtis Indus., Inc., 134 USPQ 73 (Comm’r Pats. 1962); Ex parte Sightmaster Corp., 95 USPQ 43 (Comm’r Pats. 1951). See also TMEP §1501.06 and cases cited therein.
The applicant may file a new application requesting registration on the Supplemental Register.
When an application is ready to be approved for publication or registration, the examining attorney must carefully review the application record to ensure the accuracy of the information contained therein and to ensure that all information that must be published in the Trademark Official Gazette and included on the certificate of registration has been properly entered into the Trademark database. This information includes:
All statements in the Trademark database relating to the above-listed items will automatically be published in the Trademark Official Gazette and included on the registration certificate. Therefore, examining attorneys must ensure that information that must not be published (e.g., claims of ownership of unrelated or cancelled U.S. registrations, statements such as disclaimers that have been amended and are no longer valid, or unnecessary §2(f) statements) is deleted from the Trademark database. The documents containing the information deleted from the Trademark database will remain of record for informational purposes. It is not necessary to notify the applicant that the information will not be published. If an applicant provides information by phone that does not need to be published (e.g., a statement that a particular term has no meaning in the relevant industry), the examining attorney must enter a Note to the File in the record detailing the information that will not be entered into the database.
In addition, the examining attorney must check to ensure the accuracy of the following critical data elements:
If any of the above items are not accurately entered into the Trademark database, the examining attorney must ensure that the necessary correction(s) are made.
If there has been an assignment, the examining attorney must check the records of the Assignment Recordation Branch of the USPTO to ensure that there is a clear chain of title, and ensure that the change of ownership is entered into the Trademark database, if necessary. See TMEP §§502.02(a) and 502.02(c).
This section may be used to determine whether materials submitted as a trademark or service mark application are complete, and to ensure that appropriate requirements and refusals are made. See 37 C.F.R. §2.21 and TMEP §202 regarding the elements that must be received before the USPTO will grant a filing date to an application.
An application for a trademark or service mark registration must include the following:
See 15 U.S.C. §1051(a)(3)(D) and §1052(d), 37 C.F.R. §2.99, and TMEP §1207.04(d)(i) regarding requirements for applications for concurrent use registration.
See 37 C.F.R. §2.44 and TMEP §§1303.01–1303.01(b)(ii) regarding the requirements for collective trademark and collective service mark applications; 37 C.F.R. §2.44 and TMEP §§1304.02–1304.02(d) regarding collective membership mark applications, and 37 C.F.R. §2.45 and TMEP §§1306.02–1306.02(d) regarding certification mark applications.
The following are substantive grounds for refusal. Registration may be refused on the ground that:
An applicant may submit a claim and proof of distinctiveness of the mark or a portion of the mark, under §2(f). See 15 U.S.C. §1052(f); TMEP §§1212–1212.10.
A mark that is capable of distinguishing the applicant's goods or services may be registrable on the Supplemental Register, in an application under §1 or §44 of the Trademark Act. See 15 U.S.C. §§1091–1096; TMEP §§815–815.04.
The examining attorney will require a disclaimer of an unregistrable component of an otherwise registrable mark. See 15 U.S.C. §1056; TMEP §§1213–1213.11.
The TEAS Plus option provides the lowest filing fee per class for an applicant who can meet all of the application requirements in 37 C.F.R §2.22(a) (see TMEP §§819.01–819.01(q)) at the time of filing using the USPTO’s TEAS Plus application form.
The application must be for registration of a trademark or service mark based on §1 or §44 of the Trademark Act, 15 U.S.C. §1051 or §1126. This filing option is not available to applications for registration on the Supplemental Register, based on §66(a), or for collective, collective membership, or certification marks.
If an applicant files a TEAS Plus application that does not meet the requirements of 37 C.F.R. §2.22(a), the applicant will be required to pay an additional processing fee. 37 C.F.R. §2.22(c); see TMEP §819.04. Thereafter, the application will be examined as a TEAS Standard application for the purposes of determining fees.
