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.