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, 15 U.S.C. §§1052(e)(1), 1052(e)(2), 1052(e)(4), or on grounds pertaining to other non-inherently distinctive subject matter, amendment to the Supplemental Register is procedurally an acceptable response. See37 C.F.R. §2.75. When the applicant files 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) and an amendment to the Supplemental Register in response to a refusal, the examining attorney must follow the procedures outlined in TMEP §714.05(a)(i).
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. If the examining attorney determines that the proposed mark is incapable of identifying and distinguishing the applicant’s goods or services, the examining attorney must issue a nonfinal refusal of registration on the Supplemental Register, under §§23 and 45 of the Trademark Act, 15 U.S.C. §§1091, 1127. See TMEP §714.05(a)(i).
The applicant may respond by arguing the merits of the examining attorney’s refusal of registration on the Principal Register and, in the alternative, request registration on the Supplemental Register. An applicant may not, however, state that it "reserves the right" to amend to the Supplemental Register if the refusal is not withdrawn or is affirmed on appeal. In re Integrated Embedded, 120 USPQ2d 1504, 1511(TTAB2016) (Board stating the "[a]pplicant cannot ‘reserve a right’ that does not exist"). If the examining attorney is not persuaded to withdraw the refusal, but would accept the amendment, the applicant must be given the option of registration on the Supplemental Register or going forward with the appeal on the underlying refusal. This should be done by telephone or e-mail, with a Note to the File in the record indicating the applicant’s decision, wherever possible. If the applicant wants to appeal, or if the examining attorney is unable to reach the applicant by telephone or e-mail, the examining attorney must issue a written action continuing the underlying refusal and noting that the amendment to the Supplemental Register is deemed acceptable and will not be an issue on appeal.
Similarly, the applicant may seek registration on the Principal Register based on acquired distinctiveness under §2(f), 15 U.S.C. §1052(f), and, in the alternative, on the Supplemental Register. See TMEP §1212.02(c).
An applicant may not seek registration of a mark on both the Principal and Supplemental Registers in the same application. See 15 U.S.C. §§1051, 1091; 37 C.F.R. §§2.46, 2.47. Therefore, if an applicant responds to a refusal or requirement by expressly amending to the Supplemental Register as to only certain goods/services/classes, the examining attorney will not accept the request to amend unless it is also accompanied by a request to divide. See TMEP §§801.02(b), 1110-1110.10.
A mark in an application under §66(a) of the Trademark Act cannot be amended to the Supplemental Register. Trademark Act §68(a)(4), 15 U.S.C. §1141h(a)(4); 37 C.F.R. §§2.47(c), 2.75(c).