E6-1560. Madrid Protocol

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 take this opportunity to comment on the revision of a 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 April 7, 2006.

ADDRESSES:

You may submit comments by any of the following methods:

• E-mail: [e-mail]. Include “0651-0051 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, Architecture, Engineering and Technical Services, Data Architecture and Services Division, U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.
• Federal e-Rulemaking Portal: http://www.regulations.gov.

FOR FURTHER INFORMATION CONTACT:

Requests for additional information should be directed to Sharon Marsh, Deputy Commissioner for Trademark Examination Policy, Office of the Commissioner for Trademarks, U.S. Patent and Trademark Office, P.O. Box 1451, Alexandria, VA 22313-1451; by telephone at 571-272-7140; or by e-mail at [e-mail].

SUPPLEMENTARY INFORMATION:

I. Abstract

This collection of information is required by the Trademark Act of 1946, 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 or intend to use such marks in commerce may file an application to register the marks with the United States Patent and Trademark Office (USPTO).

The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (“Madrid Protocol”) is an international treaty that allows a trademark owner to seek registration in any of the participating countries by filing a single international application. The International Bureau (“IB”) of the World Intellectual Property Organization (“WIPO”) in Geneva, Switzerland, administers the international registration system. The Madrid Protocol Implementation Act of 2002 amended the Trademark Act to provide that: (1) The owner of a U.S. application or registration may seek protection of its mark in any of the participating countries by submitting a single international application to the IB through the USPTO, and (2) the holder of an international registration may request an extension of protection of the international registration to the United States. The Madrid Protocol became effective in the United States on November 2, 2003, and is implemented under 37 CFR part 2 and part 7. An international application submitted through the USPTO must be based on an active U.S. application or registration and must be filed by the owner of the application or registration. The USPTO reviews the international application to certify that it corresponds to the existing U.S. application or registration before forwarding the international application to the IB. The IB then reviews the international application and sends a notice of irregularity to the USPTO and the applicant if the application does not meet the filing requirements of the Madrid Protocol. After any irregularities are corrected, the IB will then register the mark and notify each country designated in the application of the request for extension of protection. The holder of the international registration may also request an extension of protection to additional countries by filing a subsequent designation.

Under section 71 of the Trademark Act, a registered extension of protection to the United States will be cancelled unless the holder of the international registration periodically files affidavits of use in commerce or excusable nonuse. Since these affidavits cannot be filed until five years after the USPTO registers an extension of protection, the USPTO will not accept these affidavits until after November 2, 2008, and their estimated burden will not be included in this collection at this time.

This collection includes the information necessary for the USPTO to process applications for international registration and related requests under the Madrid Protocol. The USPTO provides electronic forms for filing the Application for International Registration, Subsequent Designation, and Response to a Notice of Irregularity through the Trademark Electronic Application System (TEAS), which is accessible via the USPTO Web site. An electronic form for the Request for Transformation is under development. Applicants may also submit the items in this collection on paper or by using the forms provided by the IB, which are available on the WIPO Web site. The IB requires Applications for International Registration and Subsequent Designations that are filed on paper to be submitted on the official IB forms. The USPTO is adding one petition to this collection, the Petition to Review Refusal to Certify an International Application.

II. Method of Collection

By mail, hand delivery, or electronically to the USPTO.

III. Data

OMB Number: 0651-0051.

Form Number(s): PTO-2131, PTO-2132, PTO-2133.

Type of Review: Revision of a currently approved collection.

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

Estimated Number of Respondents: 4,312 responses per year.

Estimated Time Per Response: The USPTO estimates that it will take the public approximately two minutes to one hour (0.03 to 1.0 hours) to complete the information in this collection, including the time to gather the necessary information, prepare the documents, and submit the completed request to the USPTO.

Estimated Total Annual Respondent Burden Hours: 1,012 hours per year.

Estimated Total Annual Respondent Cost Burden: $289,432 per year. The USPTO expects that the information in this collection will be prepared by attorneys. Using the professional rate of $286 per hour for associate attorneys in private firms, the USPTO estimates that the respondent cost burden for submitting the information in this collection will be approximately $289,432 per year.

Item	Estimated time for response (minutes)	Estimated annual responses	Estimated annual burden hours
Application for International Registration (PTO-2131)	15	3,600	900
Subsequent Designation (PTO-2132)	3	135	7
Response to Notice of Irregularities Issued by the IB in Connection with International Applications (PTO-2133)	10	540	92
Request that the USPTO Replace a U.S. Registration with a Subsequently Registered Extension of Protection to the United States	2	7	1
Request to Record an Assignment or Restriction of a Holder's Right to Dispose of an International Registration	5	10	1
Request that the USPTO Transform a Cancelled Extension of Protection into an Application for Registration under section 1 or 44 of the Act	5	10	1
Petition to Review Refusal to Certify an International Application	60	10	10
Affidavit of Continued Use or Excusable Nonuse under section 71 of the Act	14	(1)	0
Total		4,312	1,012
1 None until November 2008.

Estimated Total Annual Non-hour Respondent Cost Burden: $470,031. There are no capital start-up, maintenance, or recordkeeping costs associated with this information collection. However, this collection does have annual (non-hour) costs in the form of filing costs and postage costs.

The USPTO charges fees for processing international applications and related requests under the Madrid Protocol as set forth in 37 CFR 7.6. In addition to these USPTO fees, applicants must also pay international filing fees to the IB as indicated in 37 CFR 7.7. The USPTO estimates that the total filing costs in the form of USPTO processing fees associated with this collection will be approximately $469,950 per year as calculated in the accompanying table.

Item	Estimated annual responses	Fee amount	Estimated annual filing costs
Application for International Registration, for certifying an international application based on a single basic application or registration (per international class)	1,800	$100	$180,000
Application for International Registration, for certifying an international application based on more than one basic application or registration (per international class)	1,800	150	270,000
Subsequent Designation	135	100	13,500
Response to Notice of Irregularities Issued by the IB in Connection with International Applications	540	0	0
Request that the USPTO Replace a U.S. Registration with a Subsequently Registered Extension of Protection to the United States (per international class)	7	100	700
Request to Record an Assignment or Restriction of a Holder's Right to Dispose of an International Registration	10	100	1,000
Request that the USPTO Transform a Cancelled Extension of Protection into an Application for Registration under section 1 or 44 of the Act	10	375	3,750
Petition to Review Refusal to Certify an International Application	10	100	1,000
Affidavit of Continued Use or Excusable Nonuse under section 71 of the Act (per international class)	(1)	100	0
Total	4,312		469,950
1 None until November 2008.

The public may submit the items in this collection to the USPTO by mail through the United States Postal Service. The USPTO estimates that approximately 208 of the 4,312 responses per year will be submitted by mail and that the average first-class postage cost for a mailed submission will be 39 cents, for a total postage cost of approximately $81 per year.

The total non-hour respondent cost burden for this collection in the form of filing costs and postage costs is estimated to be $470,031 per year.

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: January 31, 2006.

Susan K. Brown,

Records Officer, USPTO, Office of the Chief Information Officer, Architecture, Engineering and Technical Services, Data Architecture and Services Division.