1102.03 Intent-to-Use Applications and the Supplemental Register
A mark in an intent-to-use application under 15 U.S.C. §1051(b) is not eligible for registration on the Supplemental Register until the applicant has submitted an acceptable allegation of use (i.e., either an amendment to allege use that meets the requirements of 37 C.F.R. §§2.76(b) and (c), or a statement of use that meets the requirements of 37 C.F.R. §§2.88(b) and (c) ). 37 C.F.R. §§2.47(d), 2.75(b).
If an intent-to-use applicant requests registration on the Supplemental Register before filing an acceptable allegation of use, the examining attorney will 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. See 37 C.F.R. §2.75(b); TMEP §714.05(a)(i). If an application is based on intent-to-use in addition to another basis, registration of the entire application will be refused on the Supplemental Register unless the applicant either deletes the §1(b) basis or files a request to divide. See TMEP §§1110–1110.12 regarding requests to divide. The examining attorney will withdraw the refusal if the applicant submits an acceptable allegation of use.
If an application is based solely on §1(b), and the applicant files an acceptable amendment to allege use or statement of use and an acceptable amendment to the Supplemental Register, the USPTO will consider the filing date of the amendment to allege use or statement of use to be the effective filing date of the application. 37 C.F.R. §2.75(b); TMEP §206.01. The filing date of an amendment to allege use is the date on which the applicant meets the minimum filing requirements of 37 C.F.R. §2.76(c), and the filing date of a statement of use is the date on which the applicant meets the minimum filing requirements of 37 C.F.R. §2.88(c). Due to the change in the effective filing date, the examining attorney must conduct a new search of USPTO records for conflicting marks. In this situation, the USPTO does not alter the original filing date in its automated records. TMEP §206. If the new search shows that a later-filed conflicting application now has an earlier filing date (based on the change in the effective filing date of the subject application), the examining attorney must suspend action on the subject application pending disposition of the other application, if the application is otherwise in condition for suspension. See TMEP §§1208–1208.03(c) regarding the procedures for handling conflicting marks in pending applications.
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, 1840 (TTAB 2009) (stating the filing date did not change when 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), because use in commerce is not required for receipt of a filing date on the Supplemental Register).
When the applicant files an amendment to allege use that complies with the minimum requirements of 37 C.F.R. §2.76(c) together with an amendment to the Supplemental Register, the examining attorney must follow the procedures outlined in TMEP §714.05(a)(i).
See TMEP §§815–816.05 for additional information about the Supplemental Register.