[E-trademarks] Supplemental Register, amendment timing for use in commerce

[Edward Timberlake]

It's my understanding that, once an application for registration of a
trademark is filed, an applicant can request that the Trademark Office make
changes to the application for registration (such as amendment to the
Supplemental Register), but the applicant has no power unilaterally to make
such changes.

With that in mind, it seems to me a request to amend to the Supplemental
Register made on January 1st but not supported by an acceptable allegation
of use would not result in the application being amended to the
Supplemental Register.

Per TMEP 206.01,

"An applicant relying on a bona fide intention to use the mark in commerce
under 15 U.S.C. §1051(b)   is not eligible for registration on the
Supplemental Register until the applicant has submitted an acceptable
amendment to allege use under 15 U.S.C. §1051(c)  or statement of use under
15 U.S.C. §1051(d).  37 C.F.R. §§2.47(d), 2.75(b)."

If a request for amendment to the Supplemental Register (for an application
based solely on 1b) were made on January 1st accompanied by an unacceptable
allegation of use, then another filing was made on February 2nd requesting
amendment to the Supplemental Register and accompanied by an acceptable
allegation of use alleging use at least as early as February 1st, it seems
to me the effective filing date of the application as amended would be
February 2nd.


Sincerely,

Ed Timberlake
*Board Certified Specialist in Trademark Law
<https://www.nclawspecialists.gov/for-the-public/find-a-board-certified-specialist/results/detail/?id=29473>*

*Timberlake Law* <http://timberlakelaw.com/>
Chapel Hill, NC

Schedule a call on Clarity <https://clarity.fm/edtimberlake>
ed at timberlakelaw.com
919.960.1950








On Wed, Apr 3, 2024 at 5:36 PM Stephen McArthur via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> I have a hypothetical for amending a 1(b) application to the Supplemental
> Register before publication. The timing would be: January 1st, Applicant
> amends to Supplemental Register and files an allegation of use
> Examiner rejects the specimen for not showing use in commerce on the goods
> in the application.
> Applicant changes use in commerce date to Feb 1st, and submits a new
> specimen properly showing use in commerce as of that date.
>
> Is this possible? Or will applicant lose the application if they show up
> with a first use in commerce date that is even one day after they attempted
> to amend to the Supplemental Register?
>
> Thanks in advance!
>
>
> *The McArthur Law Firm*Stephen Charles McArthur
> 9465 Wilshire Blvd, Suite 300
> Beverly Hills, CA 90212
> (424) 258-6815
> www.smcarthurlaw.com
>
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