2014-01520. Response to Office Action and Voluntary Amendment Forms

ACTION:

Proposed collection; comment request.

SUMMARY:

The United States Patent and Trademark Office (USPTO), as part of its continuing effort to reduce paperwork and respondent burden, invites the general public and other Federal agencies to comment on this continuing information collection, as required by the Paperwork Reduction Act of 1995, Public Law 104-13 (44 U.S.C. 3506(c)(2)(A)).

DATES:

Written comments must be submitted on or before March 31, 2014.

ADDRESSES:

You may submit comments by any of the following methods:

• Email: [e-mail]. Include “0651-0050 comment” in the subject line of the message.
• Mail: Susan K. Fawcett, Records Officer, Office of the Chief Information Officer, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.
• Federal Rulemaking Portal: http://www.regulations.gov.

FOR FURTHER INFORMATION CONTACT:

Requests for additional information should be directed to Catherine Cain, Attorney Advisor, Office of the Commissioner for Trademarks, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450, by telephone at 571-272-8946, or by email at [e-mail]. Additional information about this collection is also available at http://www.reginfo.gov under “Information Collection Review.”

SUPPLEMENTARY INFORMATION:

I. Abstract

This collection of information is required by the Trademark Act, 15 U.S.C. 1051 et seq., which provides for the federal registration of trademarks, service marks, collective trademarks and service marks, collective membership marks, and certification marks. Individuals and businesses that use such marks, or intend to use such marks, in interstate commerce may file an application to register their marks with the United States Patent and Trademark Office (USPTO). In some cases, the USPTO issues Office Actions to applicants who have applied for a trademark application, requesting additional information that was not provided with the initial submission but is required before the issuance of a registration. Also, the USPTO may determine that a mark is not entitled to registration, pursuant to one or more provisions of the Trademark Act. In such cases, the USPTO will issue an Office Action advising the applicant of the refusal to register the mark. Applicants reply to these Office Actions by providing the required information and/or by putting forth legal arguments as to why the refusal of registration should be withdrawn.

The USPTO administers the Trademark Act through Chapter 37 of the Code of Federal Regulations. These rules allow the USPTO to request and receive information required to process applications. These rules also allow applicants to submit certain amendments to their applications.

Applicants may also supplement their applications and provide further information by filing a Voluntary Amendment Not in Response to USPTO Office Action/Letter, a Request for Reconsideration after Final Office Action, a Post-Publication Amendment, a Petition to Amend Basis Post-Publication, and a Suspension Inquiry or Letter of Suspension, or by submitting a Substitute Trademark/Servicemark, Substitute Certification Mark, or Substitute Collective Membership Mark application.

Thus, this collection includes information that was not submitted with the initial application and is needed by the USPTO to review applications for trademark registration.

II. Method of Collection

The forms in this collection are available in electronic format through the Trademark Electronic Application System (TEAS), which may be accessed on the USPTO Web site. TEAS Global Forms are available for the items where a TEAS form with dedicated data fields is not yet available. Applicants may also submit the information in paper form by mail, fax, or hand delivery.

III. Data

OMB Number: 0651-0050.

Form Number(s): PTO 1771, 1822, 1957, 1960, and 1966.

Type of Review: Extension of a currently approved collection.

Affected Public: Businesses or other for profits; not-for-profit institutions.

Estimated Number of Respondents: 271,783 responses per year.

Estimated Time per Response: The USPTO estimates that it will take the public from 10 to 40 minutes (0.17 to 0.67 hours), depending on the complexity of the situation, to gather the necessary information, prepare the appropriate documents, and submit the information required for this collection.

Estimated Total Annual Respondent Burden Hours: 132,122 hours per year.

Estimated Total Annual Respondent Cost Burden: $51,395,458. The USPTO expects that the information in this collection will be prepared by attorneys at an estimate rate of $389 per hour. Therefore, the USPTO estimates that the respondent cost burden for this collection will be approximately $51,395,458 per year.

Item	Estimated time for response (minutes)	Estimated annual responses	Estimated annual burden hours
Response to Office Action (TEAS)	30	218,540	109,270
Response to Office Action (Paper)	35	10,927	6,338
Substitute Trademark/Servicemark Application, Principal Register (TEAS Global)	30	1	1
Substitute Trademark/Servicemark Application, Principal Register (Paper)	30	1	1
Substitute Certification Mark (TEAS Global)	30	1	1
Substitute Certification Mark (Paper)	30	1	1
Substitute Collective Membership Mark (TEAS Global)	30	1	1
Substitute Collective Membership Mark (Paper)	30	1	1
Substitute Collective Trademark/Servicemark (TEAS Global)	30	1	1
Substitute Collective Trademark/Servicemark (Paper)	30	1	1
Voluntary Amendment Not in Response to USPTO Office Action/Letter (TEAS)	20	11,000	3,630
Voluntary Amendment Not in Response to USPTO Office Action/Letter (Paper)	25	224	94
Request for Reconsideration After Final Office Action (TEAS)	35	15,000	8,700
Request for Reconsideration After Final Office Action (Paper)	40	625	419
Post-Publication Amendment (TEAS)	25	2,900	1,218
Post-Publication Amendment (Paper)	30	59	30
Petition to Amend Basis Post-Publication (TEAS Global)	15	3,000	750
Petition to Amend Basis Post-Publication (Paper)	20	125	41
Response to Suspension Inquiry or Letter of Suspension (TEAS)	10	9,000	1,530
Response to Suspension Inquiry or Letter of Suspension (Paper)	15	375	94
Totals		271,783	132,122

Estimated Total Annual (Non-hour) Respondent Cost Burden: $5,916. There are no capital start-up, maintenance, or record keeping costs associated with this information collection, nor are there filing fees. However, this collection does have annual (non-hour) costs in the form of postage costs.

Customers incur postage costs when submitting non-electronic information to the USPTO by mail through the United States Postal Service. The USPTO expects that the majority (roughly 98%) of the paper forms are submitted to the USPTO via first-class mail. The USPTO estimates that these submissions will typically weigh approximately one ounce and that the first-class postage rate for these submissions is 49 cents.

Item	Responses	Postage costs ($)	Total (non-hour) cost burden
	(a)	(b)	(a × b) = (c)
Response to Office Action	10,708	0.49	5,247.00
Substitute Trademark/Servicemark Application, Principal Register	1	0.49	1.00
Substitute Certification Mark	1	0.49	1.00
Substitute Collective Membership Mark	1	0.49	1.00
Substitute Collective Trademark/Servicemark	1	0.49	1.00
Voluntary Amendment Not in Response to USPTO Office Action/Letter	220	0.49	108.00
Request for Reconsideration after Final Office Action	613	0.49	300.00
Post-Publication Amendment	58	0.49	28.00
Petition to Amend Basis Post-Publication	123	0.49	60.00
Response to Suspension Inquiry or Letter of Suspension	368	0.49	169.00
Totals	12,094		5,916.00

There are no filing fees associated with this collection.

The USPTO estimates that the total (non-hour) respondent cost burden for this collection in the form of postage costs is $5,916 per year.

IV. Request for Comments

Comments submitted in response to this notice will be summarized and/or included in the request for OMB approval. All comments will become a matter of public record.

The USPTO is soliciting public comments to: (a) Evaluate whether the proposed collection of information is necessary for the proper performance of the functions of the agency, including whether the information shall have practical utility; (b) Evaluate the accuracy of the agency's estimate of the burden of the proposed collection of information, including the validity of the methodology and assumptions used; (c) Enhance the quality, utility, and clarity of the information to be collected; and (d) Minimize the burden of the collection of information on those who are to respond, including through the use of appropriate automated, electronic, mechanical, or other technological collection techniques or other forms of information technology, e.g., permitting electronic submission of responses.

Dated: January 23, 2014.

Susan K. Fawcett,

Records Officer, USPTO, Office of the Chief Information Officer.