TMEP 714.05(a)(i): Amendment to Supplemental Register or Submission of Claim of Acquired Distinctiveness

This is the October 2015 Edition of the TMEP

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714.05(a)(i)    Amendment to Supplemental Register or Submission of Claim of Acquired Distinctiveness

If registration is refused under §2(e)(1), §2(e)(2), or §2(e)(4), of the Trademark Act, 15 U.S.C. §§1052(e)(1), 1052(e)(2), 1052(e)(4), or on grounds pertaining to other non-inherently distinctive subject matter (e.g., product or container configurations (see TMEP §1202.02(b)(i), (ii)), color marks (see TMEP §1202.05(a)), or marks that comprise matter that is purely ornamental (see TMEP §1202.03)), an amendment to the Supplemental Register or to claim acquired distinctiveness under 15 U.S.C. §1052(f) generally presents a new issue. This is true even if the examining attorney previously issued an advisory statement indicating that the examining attorney believed the mark to be unregistrable on the Supplemental Register or under §2(f).

If the examining attorney determines that the amendment does not overcome the refusal, the examining attorney should issue a new nonfinal refusal of registration with a six-month response clause.

In an application based on §1(b), the applicant may respond to one of the refusals listed above by filing an allegation of use that complies with the minimum requirements of 37 C.F.R. §2.76(c) or 37 C.F.R. §2.88(c), together with an amendment to the Supplemental Register or an amendment seeking registration under §2(f). If such an amendment could overcome the refusal, but the allegation of use fails to establish use of the mark in commerce or, in combination with other evidence of record, fails to demonstrate use of the subject matter as a mark, the examining attorney must issue a new nonfinal action refusing registration. See TMEP §904.07(a), (b). The examining attorney must also advise the applicant as follows:

  • If the applicant submitted an amendment to the Supplemental Register, the examining attorney must advise the applicant that: (1) the amendment to the Supplemental Register is acceptable; (2) the refusal is moot; and (3) if the applicant amends the application back to §1(b) in response to the new refusal, the amendment to the Supplemental Register must also be withdrawn and the original refusal will be reinstated or made final, as appropriate. See TMEP §816.04 regarding responses requesting registration on the Supplemental Register in the alternative. See TMEP §§714.05(a), 715.03(a)(ii)(A), and 715.04(a) regarding withdrawal of a prior amendment submitted in a request for reconsideration.
  • If the applicant submitted an amendment seeking registration under §2(f), the examining attorney must advise the applicant that: (1) the amendment to §2(f) is acceptable, (2) the refusal is moot, and (3) if the §2(f) amendment is based solely on five years’ use and the applicant amends the application back to §1(b) in response to the new refusal, the §2(f) amendment must also be withdrawn and the original refusal will be reinstated or made final, as appropriate. See TMEP §1212.02(c) regarding responses seeking registration under §2(f) in the alternative. See TMEP §§714.05(a), 715.03(a)(ii)(A), and 715.04(a) regarding withdrawal of a prior amendment submitted in a request for reconsideration.

However, if the applicant responds to one of the refusals listed above by submitting an amendment to the Supplemental Register, but does not concurrently file an allegation of use that complies with the minimum requirements of 37 C.F.R. §2.76(c) or 37 C.F.R. §2.88(c), the examining attorney must refuse registration under §23 of the Trademark Act, 15 U.S.C. §1091, on the ground that the mark is not in lawful use in commerce. See 37 C.F.R. §2.75(b); TMEP §1102.03. If the applicant responds to the refusal by filing a proper allegation of use, the examining attorney will proceed as noted above.

See TMEP §816.04 regarding refusal of registration after an amendment to the Supplemental Register, TMEP §1212.02(h) regarding refusal of registration after an applicant submits a claim of acquired distinctiveness under §2(f), and TMEP §1212.09(a) regarding a §2(f) claim in a §1(b) application based on prior use.

If an amendment to the Supplemental Register or to claim acquired distinctiveness under §2(f) is irrelevant to the outstanding refusal(s), and there are otherwise no new issues, the examining attorney may issue a final action. For example, if registration is refused under Trademark Act §2(a), §2(b), §2(c), §2(d), §2(e)(3), or §2(e)(5), an amendment to the Supplemental Register or a claim of distinctiveness under §2(f) does not raise a new issue and does not preclude the examining attorney from issuing a final refusal. See In re Juleigh Jeans Sportswear, Inc., 24 USPQ2d 1694, 1696 (TTAB 1992) (noting that an amendment to the Supplemental Register in response to a §2(a) refusal does not raise a new issue). Note, however, that if an applicant responds to a functionality refusal under §2(e)(5) by submitting an amendment seeking registration on the Supplemental Register that is not made in the alternative, the associated nondistinctiveness refusal must be withdrawn and the functionality refusal must be maintained and made final, if appropriate, under §23. See In re Heatcon, Inc., ___ USPQ2d ___, Ser. No. 85281360, slip op. at 7-8 (Sept. 29, 2015) (noting that § 23(c) is the statutory authority governing a functionality refusal on the Supplemental Register); TMEP §1202.02(a)(iii)(A).

In a §66(a) application, an amendment to the Supplemental Register does not raise a new issue, because a mark in a §66(a) application is not eligible for registration on the Supplemental Register. See 15 U.S.C. §1141h(a)(4). Thus, an amendment to the Supplemental Register cannot overcome the refusal.

See TMEP §§715.03(b) and 715.04(b) regarding new issues presented in a request for reconsideration of an examining attorney’s final action.