E8-7019. 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 extension 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 June 3, 2008.

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.
• 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 e-Rulemaking Portal: http://www.regulations.gov.

FOR FURTHER INFORMATION CONTACT:

Requests for additional information should be directed to the attention of Janis Long, 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 571-272-9573, or by e-mail at [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.

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: Extension of a currently approved collection.

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

Estimated Number of Respondents: 228,115 per year.

Estimated Time per Response: The USPTO estimates that it will take approximately 3 minutes (0.05 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: 34,684 hours.

Estimated Total Annual Respondent Cost Burden: $10,543,936. The USPTO believes that associate attorneys will complete this information. The professional hourly rate for associate attorneys in private firms is $304. Using this hourly rate, the USPTO estimates that the total respondent cost burden for this collection is $10,543,936 per year.

Item	Estimated time for response (in minutes)	Estimated annual responses	Estimated annual burden hours
Trademark/Service Mark Allegation of Use (Statement of Use/Amendment to Allege Use)	13	10,475	2,305
TEAS Trademark/Service Mark Allegation of Use (Statement of Use/Amendment to Allege Use)	11	54,992	9,899
Request for Extension of Time to File a Statement of Use	10	10,211	1,736
TEAS Request for Extension of Time to File a Statement of Use	9	117,429	17,614
Petition to Revive Abandoned Application—Failure to Respond Timely to Office Action	12	2,004	401
TEAS Petition to Revive Abandoned Application—Failure to Respond Timely to Office Action	5	8,015	641
Petition to Revive Abandoned Application—Failure to File Timely Statement of Use or Extension Request	12	2,004	401
TEAS Petition to Revive Abandoned Application—Failure to File Timely Statement of Use or Extension Request	5	8,015	641
Request to Delete Section 1(/B) Basis, Intent to Use	4	194	14
TEAS Request to Delete Section 1(b) Basis, Intent to Use	3	1,100	55
Request for Express Abandonment (Withdrawal) of Application	4	4,686	328
TEAS Request for Express Abandonment (Withdrawal) of Application	3	6,500	325
Request to Divide	5	1,990	159
Other Petitions	30	500	165
Totals		228,115	34,684

Estimated Total Annual Non-Hour Respondent Cost Burden (includes postage costs and filing fees): $27,958,968. 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. First class postage will increase to 42 cents effective May 12, 2008. Therefore, the USPTO estimates that the postage costs for this collection will be $13,468.

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)	10,475	$0.42	$4,400
Request for Extension of Time to File a Statement of Use	10,211	0.42	4,289
Petition to Revive Abandoned Application—Failure to Respond Timely to Office Action	2,004	0.42	842
Petition to Revive Abandoned Application—Failure to File Timely Statement of Use or Extension Request	2,004	0.42	842
Request to Delete Section 1(b) Basis, Intent to Use	194	0.42	81
Request for Express Abandonment (Withdrawal) of Application	4,686	0.42	1,968
Request to Divide	1,990	0.42	836
Other Petitions	500	0.42	210
Totals	32,064		13,468

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 $27,945,500 shown here are the minimum fees associated with this information collection.

Item	Responses (yr)	Filing fees	Total cost (yr)
	(a)	(b)	(a × b)
Trademark/Service Mark Allegation of Use (Statement of Use/Amendment to Allege Use)	10,475	$100.00	$1,047,500
TEAS Trademark/Service Mark Allegation of Use (Statement of Use/Amendment to Allege Use)	54,992	100.00	5,499,200
Request for Extension of Time to File a Statement of Use	10,211	150.00	1,531,650
TEAS Request for Extension of Time to File a Statement of Use	117,429	150.00	17,614,350
Petition to Revive Abandoned Application—Failure to Respond Timely to Office Action	2,004	100.00	200,400
TEAS Petition to Revive Abandoned Application—Failure to Respond Timely to Office Action	8,015	100.00	801,500
Petition to Revive Abandoned Application—Failure to File Timely Statement of Use or Extension Request	2,004	100.00	200,400
TEAS Petition to Revive Abandoned Application—Failure to File Timely Statement of Use or Extension Request	8,015	100.00	801,500
Request to Delete Section 1(b) Basis, Intent to Use	194	0.00	0
TEAS Request to Delete Section 1(b) Basis, Intent to Use	1,100	0.00	0
Request for Express Abandonment (Withdrawal) of Application	4,686	0.00	0
TEAS Request for Express Abandonment (Withdrawal) of Application	6,500	0.00	0
Request to Divide	1,990	100.00	199,000
Other Petitions	500	100.00	50,000
Totals	228,115		27,945,500
* 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: March 27, 2008.

Susan K. Fawcett,

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