T.M.E.P. § 816.04
Amendment After Refusal

Executive summary:

This document contains one section of the Trademark Manual of Examining Procedure (the "TMEP"), Fourth Edition (April 2005). This page was last updated in June 2007. You may return to one either the section index, or to the key word index. If you wish to search the TMEP, simply use the search box that appears on the bottom of every page of BitLaw--be sure to restrict your search to the TMEP in the pop-up list.

For more information on trademark law, please see the Trademark Section of BitLaw.

Previous Section (§816.03) | Next Section (§816.05)

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, 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.

The applicant may argue the merits of the examining attorney's refusal of registration on the Principal Register and, in the alternative, request registration on the Supplemental Register. Similarly, the applicant may seek registration on the Principal Register under §2(f) and, in the alternative, on the Supplemental Register. See TMEP §1212.02(c).

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. See TMEP §714.05(a)(i). If the examining attorney determines that the proposed mark is incapable of identifying and distinguishing the applicant's goods or services, the examining attorney should issue a nonfinal refusal of registration on the Supplemental Register, under §23 of the Trademark Act, 15 U.S.C. 1091. See TMEP §714.05(a)(i).

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 amended the Supplemental Register. Section 68(a)(4) of the Act, 15 U.S.C. 1141h(a)(4); 37 C.F.R. §§2.47(c) and 2.75(c).