E5-7037. Electronic Response to Office Action and Preliminary 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 the continuing and proposed information collection, as required by the Paperwork Reduction Act of 1995, Pub. L. 104-13 (44 U.S.C. 3506(c)(2)(A)).

DATES:

Written comments must be submitted on or before February 6, 2006.

ADDRESSES:

You may submit comments by any of the following methods:

E-mail: [e-mail]. Include “0651-0050 comment” in the subject line of the message.

Fax: [phone], marked to the attention of Susan Brown.

Mail: Susan K. Brown, Records Officer, Office of the Chief Information Officer, Office of Data Architecture and Services, Data Administration Division, U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.

FOR FURTHER INFORMATION CONTACT:

Requests for additional information should be directed to the attention of Sharon Marsh, Deputy Commissioner for Trademark Examination Policy, Office of the Commissioner for Trademarks, United States Patent and Trademark Office (USPTO), P.O. Box 1451, Alexandria, VA 22313-1451, by telephone at 571-272-8900, or by e-mail at [e-mail].

SUPPLEMENTARY INFORMATION:

I. Abstract

Pursuant to 15 U.S.C. 1051 et. seq and Chapter 37 of the Code of Federal Regulations, the United States Patent and Trademark Office (USPTO) issues Office Actions to applicants that have applied for a trademark application requesting additional information that is required before the issuance of a registration that was not provided with the initial submission of the application. Also, the USPTO may determine that the mark may not be entitled to registration, pursuant to one or more provisions of the Act. In such cases, the USPTO may issue Office Actions advising applicants 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the required information and/or by putting forth legal arguments as to why the refusal of registration should be withdrawn.

Additionally, applicants may supplement their applications by providing additional information voluntarily. When such information is provided before the USPTO has reviewed the application, the submission is in the nature of a Preliminary Amendment.

The forms in this collection are available only in electronic format through the Trademark Electronic Application System (TEAS). The Response to Office Action form may be used to reply to an Office Action that was issued in connection with either an application for registration or after the submission of a Statement of Use.

II. Method of Collection

By electronic transmission.

III. Data

OMB Number: 0651-0050.

Form Number(s): PTO Forms 1957 and 1966.

Type of Review: Revision of a currently approved collection.

Affected Public: Individuals or households; businesses or other non-profit; not-for-profit institutions; farms; the Federal Government; and state, local or tribal government.

Estimated Number of Respondents: 109,152 responses per year.

Estimated Time Per Response: The USPTO estimates that the public will require approximately 10 minutes (0.17 hours) to supply the information requested in the Office Action, and approximately 10 minutes (0.17 hours) to supply the information for the Preliminary Amendment. Completion times may vary, depending upon the nature and amount of information requested in a particular Office Action.

Estimated Total Annual Respondent Burden Hours: 18,555 burden hours per year.

Estimated Total Annual Respondent Cost Burden: $5,306,730. Using the professional hourly rate of $286 for associate attorneys in private firms, the USPTO estimates $5,306,730 per year for salary costs associated with respondents. However, it is noted that a respondent is not required to retain an attorney to assist in responding to an Office Action. This collection contains two electronic forms.

Item	Estimated time for response	Estimated annual responses	Estimated annual burden hours
Response to an Action Form	10 minutes	100,155	17,026
Preliminary Amendment	10 minutes	8,997	1,529
Total		109,152	18,555

Estimated Total Annual Non-hour Respondent Cost Burden: $0. There are no maintenance costs associated with this information collection. Capital start-up costs of $900 reported in the collection approved by OMB on April 18, 2003 are being deleted. The USPTO no longer reports the cost of purchasing scanners and digital cameras as part of the capital start-up costs of a collection, so the $900 is being deleted from the inventory. There are no filing fees or postage costs associated with either a Response to Office Action or a Preliminary Amendment. However, filing fees that were incurred but not paid when another document was submitted may be provided together with Responses to Office Actions or Preliminary Amendment. The USPTO calculates these fees as part of another collection.

IV. Request for Comments

Comments are invited on: (a) 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) the accuracy of the agency's estimate of the burden (including hours and cost) of the proposed collection of information; (c) ways to enhance the quality, utility, and clarity of the information to be collected; and (d) ways to minimize the burden of the collection of information on respondents, e.g., the use of automated collection techniques or other forms of information technology.

Comments submitted in response to this notice will be summarized or included in the request for OMB approval of this information collection; they also will become a matter of public record.

Dated: December 1, 2005.

Susan K. Brown,

Records Officer, U.S. Patent and Trademark Office, Office of the Chief Information Officer, Office of Data Architecture and Services, Data Administration Division.