816    Amending Application to Supplemental Register

816.01    How to Amend

If an application meets the requirements noted in TMEP §815.02, the application may be amended by requesting that the words "Principal Register" be changed to "Supplemental Register," or that "the application is amended to the Supplemental Register."

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).

816.02    Effective Filing Date

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.  However, 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 of the application (i.e., the priority filing date, see TMEP §201.01) is not changed to the filing date of the allegation of use. Similarly, if the application includes a §44(e) filing basis in addition to the §1(b) basis, the effective filing date (i.e., the original filing date of the application, see TMEP §201.01) 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, 1840-41 (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 the §1(b) application to the Principal Register).

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.

816.03    Amendment to Different Register

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.

816.04    Amendment After Refusal

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).

816.05    Amendment After Decision on Appeal

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. 37 C.F.R §2.142(g). 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.