2014-14511. Substantive Submissions Made During Prosecution of the Trademark Application

ACTION:

Notice.

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 comment on the 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 August 22, 2014.

ADDRESSES:

You may submit comments by any of the following methods:

• Email: [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 email to [e-mail]. 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 mark with the USPTO.

Such individuals and businesses may also submit various communications to the USPTO, including providing additional information needed to process a request to delete a particular filing basis from an application or to divide an application identifying multiple goods and/or services into two or more separate applications. Applicants may seek a six-month extension of time to file a statement that the mark is in use in commerce or submit a petition to revive an application that abandoned for failure to submit a timely response to an office action or a timely statement of use or extension request. In some circumstances, an applicant may expressly abandon an application by filing a written request for withdrawal of the application.

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 reduce the number of filings between both litigating parties and the courts.

II. Method of Collection

The forms in this collection are available in electronic format through the Trademark Electronic Application System (TEAS), which may be accessed on the USPTO Web site. TEAS Global Forms are available for the items where a TEAS form with dedicated data fields is not yet available. Applicants may also submit the information in paper form by mail, fax, or hand delivery.

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: Businesses or other for-profits; not-for-profit institutions.

Estimated Number of Respondents: 292,706 per year.

Estimated Time per Response: The USPTO estimates that it will take the public from 5 minutes (0.083 hours) to 30 minutes (0.50 hours), depending on the complexity of the situation, to gather the necessary information, prepare the appropriate documents, and submit the information to the USPTO.

Estimated Total Annual Respondent Burden Hours: 63,981.

Estimated Total Annual Respondent Cost Burden: $24,888,609. The USPTO expects that the information in this collection will be prepared by attorneys at an estimated rate of $389 per hour. Therefore, the USPTO estimates that the respondent cost burden for this collection will be approximately $24,888,609 per year.

Item No.	Item	Estimated time for response (minutes)	Estimated annual responses	Estimated annual burden hours
1	Trademark/Service Mark Allegation of Use (Statement of Use/Amendment to Allege Use) (Paper)	25	1,704	710
1	Trademark/Service Mark Allegation of Use (Statement of Use/Amendment to Allege Use) (TEAS)	20	80,733	26,911
2	Request for Extension of Time to File a Statement of Use (Paper)	12	1,819	363.8
2	Request for Extension of Time to File a Statement of Use (TEAS)	10	180,047	30,007.83
3	Petition to Revive Abandoned Application—Failure to Respond Timely to Office Action (Paper)	20	348	116
3	Petition to Revive Abandoned Application—Failure to Respond Timely to Office Action (TEAS)	15	18,548	4,637
4	Petition to Revive Abandoned Application—Failure to File Timely Statement of Use or Extension Request (Paper)	15	34	8.5
4	Petition to Revive Abandoned Application—Failure to File Timely Statement of Use or Extension Request (TEAS)	12	159	31.8
5	Request to Delete Section 1(b) Basis, Intent to Use (Paper)	10	26	4.33
5	Request to Delete Section 1(b) Basis, Intent to Use (TEAS)	5	1,300	108.33
6	Request for Express Abandonment (Withdrawal) of Application (Paper)	10	100	16.67
6	Request for Express Abandonment (Withdrawal) of Application (TEAS)	5	4,900	408.33
7	Request to Divide Application (Paper)	15	39	9.75
7	Request to Divide Application (TEAS Global)	10	1,922	320.33
8	Response to Intent-to-Use (ITU) Divisional Unit Office Action (Paper)	30	1	.5
8	Response to Intent-to-Use (ITU) Divisional Unit Office Action (TEAS Global)	30	1	.5
9	Response to Petition to Revive Deficiency Letter (Paper)	20	5	1.67
9	Response to Petition to Revive Deficiency Letter (TEAS Global)	15	250	62.5
10	Petition to the Director Under Trademark Rule 2.146 (Paper)	25	12	5
10	Petition to the Director Under Trademark Rule 2.146 (TEAS Global)	20	600	200
11	Due Diligence Petition Under Trademark Rule 2.66 (Paper)	25	2	.83
11	Due Diligence Petition Under Trademark Rule 2.66 (TEAS Global)	20	130	43.33
12	Petition to Revive with Request to Delete Section 1(b) Basis or to Delete ITU Goods/Services After NOA (Paper)	30	1	.5
12	Petition to Revive with Request to Delete Section 1(b) Basis or to Delete ITU Goods/Services After NOA (TEAS Global)	30	25	12.5
TOTALS			292,706	63,981

Estimated Total Annual (Non-Hour) Respondent Cost Burden: $37,707,606. There are no capital start-up, maintenance or recordkeeping costs associated with this information collection. However, this collection does have annual (non-hour) cost burden in the form of postage costs and filing fees.

Applicants incur postage costs when submitting 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 49 cents per ounce. Therefore, the USPTO estimates that with 4,091 total paper submissions, the postage costs in this collection will be $2,006.

The filing fees for several items in this collection are charged per class of goods and/or services; therefore, the filing fees will vary for each respondent depending on the number of classes. The total filing fees of $37,705,600 shown here are based on the minimum fee of one class for those items for which a fee is required.

Item No.	Item	Responses (yr)	Filing fees	Total cost (yr)
		(a)	(b)	(a × b)
1	Trademark/Service Mark Allegation of Use (Statement of Use/Amendment to Allege Use) (Paper)	1,704	$100.00	$170,400.00
2	Trademark/Service Mark Allegation of Use (Statement of Use/Amendment to Allege Use) (TEAS)	80,733	100.00	8,073,300.00
2	Request for Extension of Time to File a Statement of Use (Paper)	1,819	150.00	272,850.00
2	Request for Extension of Time to File a Statement of Use (TEAS)	180,047	150.00	27,007,050.00
3	Petition to Revive Abandoned Application—Failure to Respond Timely to Office Action (Paper)	348	100.00	34,800.00
3	Petition to Revive Abandoned Application—Failure to Respond Timely to Office Action (TEAS)	18,548	100.00	1,854,800.00
4	Petition to Revive Abandoned Application—Failure to File Timely Statement of Use or Extension Request (Paper)	34	100.00	3,400.00
4	Petition to Revive Abandoned Application—Failure to File Timely Statement of Use or Extension Request (TEAS)	159	100.00	15,900.00
5	Request to Delete Section 1(b) Basis, Intent to Use (Paper)	26	0.00	0.00
5	Request to Delete Section 1(b) Basis, Intent to Use (TEAS)	1,300	0.00	0.00
6	Request for Express Abandonment (Withdrawal) of Application (Paper)	100	0.00	0.00
6	Request for Express Abandonment (Withdrawal) of Application (TEAS)	4,900	0.00	0.00
7	Request to Divide Application (Paper)	39	100.00	3,900.00
7	Request to Divide Application (TEAS Global)	1,922	100.00	192,200.00
8	Response to Intent-to-Use (ITU) Divisional Unit Office Action (Paper)	1	0.00	0.00
8	Response to Intent-to-Use (ITU) Divisional Unit Office Action (TEAS Global)	1	0.00	0.00
9	Response to Petition to Revive Deficiency Letter (Paper)	5	0.00	0.00
9	Response to Petition to Revive Deficiency Letter (TEAS Global)	250	0.00	0.00
10	Petition to the Director Under Trademark Rule 2.146 (Paper)	12	100.00	1,200.00
10	Petition to the Director Under Trademark Rule 2.146 (TEAS Global)	600	100.00	60,000.00
11	Due Diligence Petition Under Trademark Rule 2.66 (Paper)	2	100.00	200.00
11	Due Diligence Petition Under Trademark Rule 2.66 (TEAS Global)	130	100.00	13,000.00
12	Petition to Revive with Request to Delete Section 1(b) Basis or to Delete ITU Goods/Services After NOA (Paper)	1	100.00	100.00
12	Petition to Revive with Request to Delete Section 1(b) Basis or to Delete ITU Goods/Services After NOA (TEAS Global)	25	100.00	2,500.00
TOTALS		292,706		37,705,600

IV. Request for Comments

Comments submitted in response to this notice will be summarized and/or included in the request for OMB approval. All comments will become a matter of public record.

The USPTO is soliciting public comments to: (a) Evaluate 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) Evaluate the accuracy of the agency's estimate of the burden of the proposed collection of information, including the validity of the methodology and assumptions used; (c) Enhance the quality, utility, and clarity of the information to be collected; and (d) Minimize the burden of the collection of information on those who are to respond, including through the use of appropriate automated, electronic, mechanical, or other technological collection techniques or other forms of information technology, e.g., permitting electronic submission of responses.

Dated: June 17, 2014.

Susan K. Fawcett,

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