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.