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
To seek registration on the Supplemental Register, an applicant should so state in the application or a subsequent request. TMEP §§815, 816.01. If no register is specified, the USPTO will assume that the applicant is requesting registration on the Principal Register.
In an application based solely on Trademark Act §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). Due to the change in the effective filing date, the examining attorney must conduct a new search of USPTO records for conflicting marks. TMEP §1102.03. In this situation, the USPTO does not alter the original filing date in the USPTO database. TMEP §206. See TMEP §816.02 and §1102.03 for more information regarding intent-to-use applications and the Supplemental Register.
In an application with §1(b) and §44 bases, the effective filing date of the application will not change to the date on which the applicant files an allegation of use to amend the application to the Supplemental Register. TMEP §§816.02, 1014. In such case, a new search would not be required. TMEP §§1014, 1102.03.
If an applicant submits a §1(b) sole-basis application or combines it with a §44 basis and requests registration on the Supplemental Register for which no acceptable allegation of use has been filed, the examining attorney must refuse registration under §23 on the ground that the mark is not in lawful use in commerce. 15 U.S.C. §1091. The examining attorney will withdraw the refusal for a §1(b) sole-basis application if the applicant submits an acceptable allegation of use or withdraws the request to amend to the Supplemental Register. For applications with §1(b) and §44 bases where the applicant deletes or divides out the goods, services, or classes with the §1(b) basis, the examining attorney will also withdraw the refusal for the §44 sole-basis application. TMEP §1102.03. However, the refusal under §23 will be maintained against the application with the §1(b) basis. See TMEP §§1110-1110.12 regarding requests to divide.
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. 15 U.S.C. §1126(d), (e); 37 C.F.R. §2.34(a)(3)(i), (a)(4)(ii); TMEP §1008. 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. However, seeking registration on the Supplemental Register is an admission that the mark is not inherently distinctive. See Quaker State Oil Ref. Corp. v. Quaker Oil Corp., 453 F.2d 1296, 1299, 172 USPQ 361, 363 (C.C.P.A. 1972).
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).