1209.02(a)(i) Amendment to Supplemental Register in Response to Office Action
If the applicant responds to a §2(e)(1) descriptiveness refusal by amending its application to the Supplemental Register, this amendment 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 designation is a generic name for the applicant’s goods or services, the examining attorney must then issue a nonfinal action refusing registration on the Supplemental Register. The statutory basis for such a refusal is §23 of the Trademark Act, 15 U.S.C. §1091. See TMEP §§815–816.05 concerning applications for registration on the Supplemental Register.