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

[Heather Balmat]

What Ed describes in that last paragraph is pretty much how it played out. You don’t lose the application, but you don’t get Jan. 1 as the filing date, which makes sense.


Heather Balmat, PLLC
977 Seminole Tr., #342
Charlottesville, VA 22901
(434) 260-1837

On Apr 3, 2024, at 7:26 PM, Edward Timberlake via E-trademarks <e-trademarks at oppedahl-lists.com> wrote:


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<mailto:ed at timberlakelaw.com>
919.960.1950

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On Wed, Apr 3, 2024 at 5:36 PM Stephen McArthur via E-trademarks <e-trademarks at oppedahl-lists.com<mailto: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<tel:(424)%20258-6815>
www.smcarthurlaw.com<http://www.smcarthurlaw.com/>

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