E9-2539. 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, 2009.

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 K. Fawcett.
• Mail: Susan K. Fawcett, Records Officer, Office of the Chief Information Officer, Customer Information Services Group, Public Information Services Division, 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 Jennifer Chicoski, Attorney Advisor, Office of the Commissioner for Trademarks, United States Patent and Trademark Office, P.O. Box 1451, Alexandria, VA 22313-1451; by telephone at 571-272-8943; or by e-mail to [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 15 U.S.C. 1141 et seq. and 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 data contained in the existing U.S. application or registration before forwarding the international application to the IB. The IB then reviews the international application to determine whether the Madrid filing requirements have been met and the required fees have been paid. If the international application is unacceptable, the IB will send a notice of irregularity to the USPTO and the applicant. The applicant must respond to the irregularities to avoid abandonment, unless a response from the USPTO is required. After any irregularities are corrected and the application is accepted, the IB registers the mark, publishes the registration in the WIPO Gazette of International Marks, and sends a certificate to the holder.

When the mark is registered, the IB notifies each country designated in the application of the request for extension of protection. Once an international registration has been issued, the holder may also file subsequent designations to request an extension of protection to additional countries.

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 continued use in commerce or excusable nonuse. These affidavits cannot be filed until five years after the USPTO registers an extension of protection. Since the USPTO will not be accepting these affidavits until February 1, 2010, the estimated burden for these affidavits 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 online through 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.

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; and not-for-profit institutions.

Estimated Number of Respondents: 5,330 responses per year.

Estimated Time per Response: The USPTO estimates that it will take the public approximately 15 minutes (0.25 hours) to one hour 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: 1,347 hours per year.

Estimated Total Annual Respondent Cost Burden: $417,570 per year. The USPTO expects that the information in this collection will be prepared by attorneys. Using the professional rate of $310 per hour for attorneys in private firms, the USPTO estimates that the respondent cost burden for submitting the information in this collection will be approximately $417,570 per year.

Item	Estimated time for response	Estimated annual responses	Estimated annual burden hours
Application for International Registration (PTO-2131)	15 minutes	3,900	975
Subsequent Designation (PTO-2132)	15 minutes	400	100
Response to Notice of Irregularity (PTO-2133)	15 minutes	1,000	250
Request that the USPTO Replace a U.S. Registration with a Subsequently Registered Extension of Protection to the United States	30 minutes	4	2
Request to Record an Assignment or Restriction of a Holder's Right to Dispose of an International Registration	30 minutes	5	3
Request that the USPTO Transform a Cancelled Extension of Protection into an Application for Registration under Section 1 or 44 of the Act	15 minutes	6	2
Petition to Review Refusal to Certify an International Application	1 hour	15	15
Affidavit of Continued Use or Excusable Nonuse under Section 71 of the Act	15 minutes	(1)	0
Total		5,330	1,347
1 Not until Feb. 2010.

Estimated Total Annual Non-hour Respondent Cost Burden: $529,701 per year. 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 fees 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 fees in the form of USPTO processing fees associated with this collection will be approximately $529,650 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)	2,000	$100.00	$200,000.00
Application for International Registration, for certifying an international application based on more than one basic application or registration (per international class)	1,900	150.00	285,000.00
Subsequent Designation	400	100.00	40,000.00
Response to Notice of Irregularity	1,000	0.00	0.00
Request that the USPTO Replace a U.S. Registration with a Subsequently Registered Extension of Protection to the United States (per international class)	4	100.00	400.00
Request to Record an Assignment or Restriction of a Holder's Right to Dispose of an International Registration	5	100.00	500.00
Request that the USPTO Transform a Cancelled Extension of Protection into an Application for Registration under Section 1 or 44 of the Act	6	375.00	2,250.00
Petition to Review Refusal to Certify an International Application	15	100.00	1,500.00
Affidavit of Continued Use or Excusable Nonuse under Section 71 of the Act (per international class)	1	100.00	0.00
Total	5,330		529,650.00
1 Not until Feb. 2010.

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 1% (53 out of 5,300) of the international applications, subsequent designations, and responses to notices of irregularities may be filed on paper, and that 15 of the 30 responses for the other items in this collection will also be filed on paper, for a total of approximately 68 of the 5,330 total responses per year being submitted by mail. The average first-class postage cost for a mailed submission will be 75 cents, for a total postage cost of approximately $51 per year.

The total non-hour respondent cost burden for this collection in the form of filing fees and postage costs is estimated to be $529,701 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 30, 2009.

Susan K. Fawcett,

Records Officer, USPTO, Office of the Chief Information Officer, Customer Information Services Group, Public Information Services Division.