2018-08738. Post Registration (Trademark Processing)

ACTION:

Proposed collection; comment request.

SUMMARY:

The United States Patent and Trademark Office (USPTO), as required by the Paperwork Reduction Act of 1995, invites comments on a proposed extension of an existing information collection: 0651-0055 (Post Registration (Trademark Processing)).

DATES:

Written comments must be submitted on or before June 26, 2018.

ADDRESSES:

You may submit comments by any of the following methods:

• Email: [e-mail]. Include “0651-0055 comment” in the subject line of the message.
• Federal Rulemaking Portal: http://www.regulations.gov.
• Mail: Marcie Lovett, Records and Information Governance Division Director, Office of the Chief Technology Officer, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.

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 to [e-mail] with “0651-0055 comment” in the subject line. Additional information about this collection is also available at http://www.reginfo.gov under “Information Collection Review.”

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.

The information gathered in this collection covers various communications submitted by individuals and businesses to the USPTO occurring after registration of a trademark. One type of communication is a request to amend their registrations to delete goods or services that are no longer being used by the registrant. A second type of communication is a declaration of use. 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, and a renewal application, within specific deadlines. Registration owners may also request to amend or divide a registration, respond to a post-registration Office action, and surrender a registration.

The information in this collection is used to maintain the quality of the trademark register. The register information may be accessed by an individual or by businesses to determine the availability of a mark. A current and accurate register reduces the possibility that parties initiate the use of a mark previously adopted by another. It is in the interest of all parties to update and correct the registry as their need for and use of marks evolve. Thus, the Federal trademark registration process may reduce unnecessary litigation and its associated costs and burdens.

II. Methods of Collection

Electronically, if applicants submit the information using the forms provided 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: 0651-0055.

IC Instruments: PTO Form 1563, PTO Form 1573, PTO Form 1583, PTO Form 1597, PTO Form 1963, TEAS Global Form.

Type of Review: Revision of a currently approved collection.

Affected Public: Individuals or households; business of other for-profit organizations; not-for-profit organizations.

Estimated Number of Respondents: 204,362 responses per year.

Estimated Time per Response: The USPTO estimates that it will take approximately between 5 minutes (0.08 hours) and 40 minutes (0.67 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 Hour Burden: 55,665.70 hours per year.

Estimated Total Annual Respondent (Hourly) Cost Burden: $24,381,576.60. The USPTO expects that attorneys will complete the instruments associated with this information collection. The professional hourly rate for intellectual property attorneys in private firms is $438. Using this hourly rate, the USPTO estimates that the total respondent cost burden for this collection is $24,381,576.60 per year.

IC No.	Item	Estimated response time	Estimated responses	Estimated burden	Rate	Estimated cost burden
		(a)	(b)	(c) (a) x (b)	(d)	(e) (c) x (d)
1	Declaration of Use of Mark in Commerce Under Section 8 (TEAS)	0.25 (15 minutes)	19,466	4,866.50	$438.00	$2,131.527.00
1	Declaration of Use of Mark in Commerce Under Section 8 (paper)	0.42 (25 minutes)	1	0.42	438.00	183.96
2	Combined Declaration of Use of Mark in Commerce and Application for Renewal of Registration of a Mark Under Section 8 & 9 (TEAS)	0.25 (15 minutes)	82,337	20,584.25	438.00	9,015,901.50
2	Combined Declaration of Use of Mark in Commerce and Application for Renewal of Registration of a Mark Under Section 8 & 9 (paper)	0.42 (25 minutes)	4	1.68	438.00	735.84
3	Declaration of Incontestability of a Mark Under Section 15 (TEAS)	0.08 (5 minutes)	973	77.84	438.00	34,093.92
3	Declaration of Incontestability of a Mark Under Section 15 (paper)	0.17 (10 minutes)	1	0.17	438.00	74.46
4	Combined Declaration of Use and Incontestability Under Section 8 and 15 (TEAS)	0.25 (15 minutes)	77,863	1,946.50	438.00	852,567.00
4	Combined Declaration of Use and Incontestability Under Section 8 and 15 (paper)	0.42 (25 minutes)	4	1.68	438.00	735.84
5	Surrender of Registration for Cancellation (TEAS Global)	0.08 (5 minutes)	413	33.04	438.00	14,471.52
5	Surrender of Registration for Cancellation (paper)	0.25 (15 minutes)	1	0.25	438.00	109.52
6	Section 7 Request (TEAS)	0.42 (25 minutes)	6,277	2,636.34	438.00	1,154,716.92
6	Section 7 Request (paper)	0.50 (30 minutes)	1	0.50	438.00	219.00
7	Response to Office Action for Post-Registration Matters (TEAS Global)	0.50 (30 minutes)	14,000	7,000.00	438.00	3,066,000.00
7	Response to Office Action for Post-Registration Matters (paper)	0.67 (40 minutes)	1	0.67	438.00	293.46
8	Request to Divide Registration (TEAS Global)	0.33 (20 minutes)	3,017	995.61	438.00	436,077.18
8	Request to Divide Registration (paper)	0.50 (30 minutes)	1	0.50	438.00	219.00
9	Section 12(c) Affidavit (TEAS Global)	0.17 (10 minutes)	1	0.17	438.00	74.46
9	Section 12(c) Affidavit (paper)	0.33 (20 minutes)	1	0.33	438.00	144.54
Totals			204,362	55,665.70		24,381,576.60

Estimated Total Annual (Non-hour) Respondent Cost Burden: $63,862,182.35. This collection has no capital startup, maintenance fees, or operating fees. This collection does have filing fees and postage costs.

Filing Fees

Filing fees are charged per class of goods or services and can vary depending on the number of classes. The filing fees shown here are based on the minimum fee of one class per document associated with this information collection. The USPTO estimates that the filing fees associated with this collection will total $63,862,175 per year.

IC No.	Item	Response	Filling fee	Total cost
		(a)	(b)	(c) (a) x (b)
1	Declaration of Use of Mark in Commerce Under Section 8 (TEAS)	19,466	$125.00	$2,433,250.00
1	Declaration of Use of Mark in Commerce Under Section 8 (paper)	1	225.00	225.00
2	Combined Declaration of Use of Mark in Commerce and Application for Renewal of Registration of a Mark Under Section 8 & 9 (TEAS)	82,337	425.00	34,993,225.00
2	Combined Declaration of Use of Mark in Commerce and Application for Renewal of Registration of a Mark Under Section 8 & 9 (paper)	4	725.00	2,900.00
3	Declaration of Incontestability of a Mark Under Section 15 (TEAS)	973	200.00	194,600.00
3	Declaration of Incontestability of a Mark Under Section 15 (paper)	1	300.00	300.00
4	Combined Declaration of Use and Incontestability Under Section 8 and 15 (TEAS)	77,863	325.00	25,305,475.00
4	Combined Declaration of Use and Incontestability Under Section 8 and 15 (paper)	4	525.00	2,100.00
6	Section 7 Request (TEAS)	6,277	100.00	627,700.00
6	Section 7 Request (paper)	1	200.00	200.00
8	Request to Divide Registration (TEAS Global)	3,017	100.00	301,700.00
8	Request to Divide Registration (paper)	1	200.00	200.00
9	Section 12(c) Affidavit (TEAS Global)	1	100.00	100.00
9	Section 12(c) Affidavit (paper)	1	200.00	200.00
Totals		189,947		63,862,175.00

Postage Costs

Customers may incur postage costs when submitting items covered by this collection to the USPTO by mail. The USPTO estimates that approximately 98 percent of the responses in this collection will be submitted electronically. Of the remaining 2 percent, the vast majority will be submitted by mail for a total of 14 mailed submissions. The average first-class USPS postage cost for a mailed submission will be $0.49. Therefore, the USPTO estimates that the postage costs for the mailed submissions in this collection will be $7.35.

Total

Therefore, the USPTO estimates that the total annual (non-hour) cost burden for this collection, in the form of postage costs ($7.35) and filing fees ($63,862,175), is $63,862,182.35 per year.

IV. Request for Comments

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.

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 costs) 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.

Marcie Lovett,

Records and Information Governance Division Director, OCTO, United States Patent and Trademark Office.