Amending Your Trademark Application to the Supplemental Register
Under the Trademark Act, there are two registers at the United States Patent & Trademark Office ("USPTO"). These include the Principal Register and the Supplemental Register. For the benefits of each register, see our web page entitled, Filing Your Trademark On The Principal Register And The Supplemental Register. An applicant should always aim to have their mark register on the Principal Register, since this register will provide the applicant with all the benefits of federal registration. The Supplemental Register provides limited benefits, and only a narrow scope of protection. In addition, a mark on the Supplemental Register is NOT prima facie evidence of the validity of the registration or of the registrant's ownership of the mark, nor is there an exclusive right to use the mark in commerce nationwide. These restrictions make it difficult to prove in court that you are the proprietary owner of a distinctive mark.
Since most applicants will file an application for the Principal Register, there could be issues if the applicant's mark is refused because the trademark is merely descriptive of the goods and/or services identified in the trademark application, and the filing basis was intent-to-use. If the applicant cannot overcome the refusal, the applicant may have to amend the application to the Supplemental Register. But, an applicant cannot amend to the Supplemental Register until there has been lawful use in commerce. This means there must be an acceptable Allegation of Use filed or a Statement of Use filed by the applicant before the trademark application can be transferred to the Supplemental Register. See Trademark Manual of Examining Procedure ("TMEP") §816.02. If use occurs and the proper documentation is filed, then the application can transfer to the Supplemental Register.
However, transferring an intent-to-use application to the Supplemental Register can have negative impacts on the application in two significant ways. The filing date will change. The USPTO will now consider the filing date of the amendment to allege use, the effective filing date (and the effective constructive use date). The reasoning for this is that until the applicant files an Allegation of Use or Statement of Use, the minimum filing requirements of 37 C.F.R. §2.76(e) have not been met. The filing date can only be effective if those minimum requirements are met. The new filing date can have a crucial negative impact if the applicant was relying on the original filing date to win priority over another trademark owner. You could potentially lose your priority rights under those circumstances, and perhaps lose your trademark rights in a dispute.
Another potential negative consequence to amending an intent-to-use application to the Supplemental Register is that a second conflict search of the Trademark Office database will have to be conducted based on the later application filing date. This can have severe ramifications for the applicant. If a new mark was filed between the original filing date and the later filing date, and is considered to be similarly confusing to the applicant's mark, the applicant's mark will be suspended pending disposition of the earlier filed application. The suspension will only be lifted if the confusingly similar mark does not mature to a registration. Thus, the applicant may not be able to register the mark under that circumstance.
It is interesting to note that an amendment of a trademark application from the Supplemental to the Principal Register does not change the effective filing date of an application. There are no restrictions on the number of times an applicant may amend from one register to another. Typically, one amendment is sufficient in most trademark prosecutions.
If an intent-to-use applicant is seeking to transfer to the Supplemental Register, but the Allegation of Use hasn't been filed yet, even if it has another filing basis, the entire application will still be refused, unless the applicant takes certain action. The applicant must either delete the 1(b) basis or divide the application. See TMEP §§1110-1110.12 for specific information on how to divide an application. Amendments to the Supplemental Register can be fraught with subtleties, and an applicant should consult with an experienced trademark attorney before transfer of the application. Please feel free to contact our office for a courtesy consultation regarding amending a trademark application to the Supplemental Register, or if you have other trademark inquiries.