815 Application Filed on Supplemental Register
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.
815.01 Marks Eligible for Principal Register Not Registrable on 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.
815.02 Elements Required
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.
815.03 Filing on Supplemental Register Is Not an Admission that the Mark Has Not Acquired Distinctiveness
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.
815.04 Basis for Refusal of Registration of Matter that Is Incapable
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).