2011-4457. Proposed Collection; Substantive Submissions Made During Prosecution of the Trademark Application

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 May 2, 2011.

ADDRESSES:

You may submit comments by any of the following methods:

• E-mail: [e-mail]. Include “0651-0054 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 the attention of Catherine Cain, 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 571-272-8946, or by e-mail to [e-mail].

SUPPLEMENTARY INFORMATION

I. Abstract

The United States Patent and Trademark Office (USPTO) administers 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 or intend to use such marks in commerce may file an application to register their marks with the USPTO.

Such individuals and businesses may also submit various communications to the USPTO, including requests to amend their registrations to delete goods or services that are no longer being used by the registrant. Registered marks remain on the register for ten years and can be renewed, but will be cancelled unless the owner files with the USPTO a declaration attesting to the continued use (or excusable non-use) of the mark in commerce within specific deadlines. Applicants may also surrender a registration and, in limited situations, petition the Director to reinstate a registration that has been cancelled.

The rules implementing the Act are set forth in 37 CFR part 2. These rules mandate that each register entry include the mark, the goods and/or services in connection with which the mark is used, ownership information, dates of use, and certain other information. The USPTO also provides similar information concerning pending applications. The register and pending application information may be accessed by an individual or by businesses to determine the availability of a mark. By accessing the USPTO's information, parties may reduce the possibility of initiating use of a mark previously adopted by another. The Federal trademark registration process may thereby lessen the filing of papers in court and between parties.

The USPTO is proposing to include six new items in the inventory at this time to take into account a new method of electronic submission of information for which a dedicated TEAS form is not yet available (i.e., “Global Forms”). The new items are: Response to Intent-to-Use (ITU) Divisional Unit Office Action, Response to Petition to Revive Deficiency Letter, Petition to the Director Under Trademark Rule 2.146, Due Diligence Petition Under Trademark Rule 2.66, Petition to Revive With Request to Delete Section 1(b) Basis or to Delete ITU Goods/Services After NOA, and Request to Divide Application. Corresponding paper submissions for these six new items are also included in this collection.

II. Method of Collection

Electronically if applicants submit the information using the forms available through the Trademark Electronic Application System (TEAS). By mail or hand delivery if applicants choose to submit the information in paper form.

III. Data

OMB Number: 0651-0054.

Form Number(s): PTO Forms 1553, 1581, 2194, 2195, 2200, and 2202.

Type of Review: Revision of a currently approved collection.

Affected Public: Primarily business or other for-profit organizations.

Estimated Number of Respondents: 289,519 per year.

Estimated Time per Response: The USPTO estimates that it will take approximately 5 minutes (0.08 hours) to 20 minutes (0.33 hours) to complete this information. This includes the time to gather the necessary information, create the documents, and submit the completed request to the USPTO.

Estimated Total Annual Respondent Burden Hours: 48,469.

Estimated Total Annual Respondent Cost Burden: $15,752,425. The USPTO believes that attorneys will complete this information. The estimated hourly rate for attorneys in private firms is $325. Using this hourly rate, the USPTO estimates that the total respondent cost burden for this collection is $15,752,425 per year. This is a fully loaded hourly rate.

Item	Estimated time for response (minutes)	Estimated annual responses	Estimated annual burden hours
Trademark/Service Mark Allegation of Use (Statement of Use/Amendment to Allege Use) (Paper)	20	4,361	1,439
Trademark/Service Mark Allegation of Use (Statement of Use/Amendment to Allege Use) (TEAS)	15	73,525	18,381
Request for Extension of Time to File a Statement of Use (Paper)	10	4,531	770
Request for Extension of Time to File a Statement of Use (TEAS)	8	176,715	22,973
Petition to Revive Abandoned Application—Failure to Respond Timely to Office Action (Paper)	15	810	203
Petition to Revive Abandoned Application—Failure to Respond Timely to Office Action (TEAS)	12	15,396	3,079
Petition to Revive Abandoned Application—Failure to File Timely Statement of Use or Extension Request (Paper)	12	43	9
Petition to Revive Abandoned Application—Failure to File Timely Statement of Use or Extension Request (TEAS)	10	810	138
Request to Delete Section 1(b) Basis, Intent to Use (Paper)	10	69	12
Request to Delete Section 1(b) Basis, Intent to Use (TEAS)	5	1,380	110
Request for Express Abandonment (Withdrawal) of Application (Paper)	10	277	47
Request for Express Abandonment (Withdrawal) of Application (TEAS)	5	5,548	444
Request to Divide Application (Paper)	10	261	44
Request to Divide Application (TEAS Global)	8	5,211	677
Response to Intent-to-Use (ITU) Divisional Unit Office Action (Paper)	10	0	0
Response to Intent-to-Use (ITU) Divisional Unit Office Action (TEAS Global)	8	2	1
Response to Petition to Revive Deficiency Letter (Paper)	15	5	1
Response to Petition to Revive Deficiency Letter (TEAS Global)	12	100	20
Petition to the Director Under Trademark Rule 2.146 (Paper)	20	16	5
Petition to the Director Under Trademark Rule 2.146 (TEAS Global)	15	310	78
Due Diligence Petition Under Trademark Rule 2.66 (Paper)	20	7	2
Due Diligence Petition Under Trademark Rule 2.66 (TEAS Global)	15	140	35
Petition to Revive with Request to Delete Section 1(b) Basis or to Delete ITU Goods/Services After NOA (Paper)	12	0	0
Petition to Revive with Request to Delete Section 1(b) Basis or to Delete ITU Goods/Services After NOA (TEAS Global)	10	2	1
Totals		289,519	48,469

Estimated Total Annual Non-Hour Respondent Cost Burden (includes postage costs and filing fees): $37,280,667. This collection has no operating or maintenance costs.

Applicants incur postage costs when submitting non-electronic information to the USPTO by mail through the United States Postal Service. The USPTO estimates that the majority of the paper forms are submitted to the USPTO via first-class mail at a rate of 44 cents per ounce. Therefore, the USPTO estimates that the postage costs for the paper submissions in this collection will be $4,567.

Item	Responses (yr)	Postage Costs	Total cost (yr)
	(a)	(b)	(a × b)
Trademark/Service Mark Allegation of Use (Statement of Use/Amendment to Allege Use)	4,361	$0.44	$1,919.00
Request for Extension of Time to File a Statement of Use	4,531	0.44	1,994.00
Petition to Revive Abandoned Application—Failure to Respond Timely to Office Action	810	0.44	356.00
Petition to Revive Abandoned Application—Failure to File Timely Statement of Use or Extension Request	43	0.44	19.00
Request to Delete Section 1(b) Basis, Intent to Use	69	0.44	30.00
Request for Express Abandonment (Withdrawal of Application)	277	0.44	122.00
Request to Divide Application	261	0.44	115.00
Response to Intent-to-Use (ITU) Divisional Unit Office Action	0	0.44	0.00
Response to Petition to Revive Deficiency Letter	5	0.44	2.00
Petition to the Director Under Trademark Rule 2.146	16	0.44	7.00
Due Diligence Petition Under Trademark Rule 2.66	7	0.44	3.00
Petition to Revive with Request to Delete Section 1(b) Basis or to Delete ITU Goods/Services After NOA	0	0.44	0.00
Totals	10,380		$4,567.00

Filing fees are based on per class filing of goods and services; therefore, the total filing fees can vary depending on the number of classes. The total filing fees of $37,276,100 shown here are the minimum fees associated with this information collection.

Item	Responses (yr)	Filing fees	Total cost (yr)
	(a)	(b)	(a x b)
Trademark/Service Mark Allegation of Use (Statement of Use/Amendment to Allege Use) (Paper)	4,361	$100.00	$436,100.00
Trademark/Service Mark Allegation of Use (Statement of Use/Amendment to Allege Use) (TEAS)	73,525	100.00	7,352,500.00
Request for Extension of Time to File a Statement of Use (Paper)	4,531	150.00	679,650.00
Request for Extension of Time to File a Statement of Use (TEAS)	176,715	150.00	26,507,250.00
Petition to Revive Abandoned Application—Failure to Respond Timely to Office Action (Paper)	810	100.00	81,000.00
Petition to Revive Abandoned Application—Failure to Respond Timely to Office Action (TEAS)	15,396	100.00	1,539,600.00
Petition to Revive Abandoned Application—Failure to File Timely Statement of Use or Extension Request (Paper)	43	100.00	4,300.00
Petition to Revive Abandoned Application—Failure to File Timely Statement of Use or Extension Request (TEAS)	810	100.00	81,000.00
Request to Delete Section 1(b) Basis, Intent to Use (Paper)	69	0.00	0.00
Request to Delete Section 1(b) Basis, Intent to Use (TEAS)	1,380	0.00	0.00
Request for Express Abandonment (Withdrawal) of Application (Paper)	277	0.00	0.00
Request for Express Abandonment (Withdrawal) of Application (TEAS)	5,548	0.00	0.00
Request to Divide Application (Paper)	261	100.00	26,100.00
Request to Divide Application (TEAS Global)	5,211	100.00	521,100.00
Response to Intent-to-Use (ITU) Divisional Unit Office Action (Paper)	0	0.00	0.00
Response to Intent-to-Use (ITU) Divisional Unit Office Action (TEAS Global)	2	0.00	0.00
Response to Petition to Revive Deficiency Letter (Paper)	5	0.00	0.00
Response to Petition to Revive Deficiency Letter (TEAS Global)	100	0.00	0.00
Petition to the Director Under Trademark Rule 2.146 (Paper)	16	100.00	1,600.00
Petition to the Director Under Trademark Rule 2.146 (TEAS Global)	310	100.00	31,000.00
Due Diligence Petition Under Trademark Rule 2.66 (Paper)	7	100.00	700.00
Due Diligence Petition Under Trademark Rule 2.66 (TEAS Global)	140	100.00	14,000.00
Petition to Revive with Request to Delete Section 1(b) Basis or to Delete ITU Goods/Services After NOA (Paper)	0	100.00	0.00
Petition to Revive with Request to Delete Section 1(b) Basis or to Delete ITU Goods/Services After NOA (TEAS Global)	2	100.00	200.00
Totals	289,519		37,276,100.00
*Note: All filing fees are based on per class filing.

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 will also become a matter of public record.

Dated: February 24, 2011.

Susan K. Fawcett,

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