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 Trademark Act §23, 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). In an application with §1(b) and §44 bases, registration of the entire application will be refused on the Supplemental Register unless the applicant submits an acceptable allegation of use, deletes the §1(b) basis, withdraws the request to amend to the Supplemental Register, or files a request to divide out the goods, services, or classes with the §1(b) basis. TMEP §815.02. If the goods, services, or classes are divided out, the refusal under §23 will be maintained against the new application with the §1(b) basis. Id. 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 the USPTO database. 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.
If the applicant files an acceptable allegation of use and requests amendment to the Supplemental Register in an application with §1(b) and §44 bases, the effective filing date will not change to the date on which the applicant filed the allegation of use. TMEP §§816.02, 1014. In such case, a new search would not be required. See TMEP §1014.
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.