04-16415. Trademark Processing

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 comment on the submission of a revision of a currently approved 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 September 20, 2004.

ADDRESSES:

You may submit comments by any of the following methods:

• E-mail: [e-mail]. Include “0651-0009 comment” in the subject line of the message.
• Fax: [phone], marked to the attention of Susan Brown.
• Mail: Susan K. Brown, Records Officer, Office of the Chief Information Officer, Office of Data Architecture and Services, Data Administration Division, U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.

FOR FURTHER INFORMATION CONTACT:

Requests for additional information should be directed to the attention of Ari Leifman, Staff Attorney, Office of the Commissioner for Trademarks, United States Patent and Trademark Office (USPTO), Washington, DC 20231, by telephone at 703-308-8900 (ext. 155), 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 who use their marks, or intend to use their marks, in commerce regulable by Congress, may file an application with the USPTO to register their marks. These individuals and businesses may also submit various communications to the USPTO, including requests to amend their applications to delete an originally-identified statutory filing basis, such as the “intent to use” basis. Registered marks remain on the register for ten years. However, the registrations are canceled unless the owner files an affidavit with the USPTO attesting to the continued use (or excusable non-use) of the mark in commerce. The applicant may withdraw his or her application. If an application becomes abandoned, the owner may petition the USPTO to revive the abandoned application. The registration may be renewed for periods of ten years.

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 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 lessen the filing of papers in court and between parties.

The trademark rules set forth in 37 CFR Part 2 provide for the appointment of attorneys of record to represent applicants in the application process. Likewise, these rules also provide for the revocation of an attorney's appointment, and the rules allow an attorney to request permission to withdraw from representation. Additionally, the rules allow applicants to change their addresses.

The trademark rules allow applicants who do not wish to pursue their applications to request that their applications be abandoned. Additionally, the rules allow applicants whose applications became abandoned by operation of law to petition to revive these applications. Finally, the rules also allow applicants to request that their applications be amended to delete a particular statutory filing basis, namely the “intent to use” basis.

Applicants can submit the majority of the trademark applications, petitions, requests, and other associated papers electronically through the Trademark Electronic Application System (TEAS). The USPTO is taking this opportunity to obtain approval from OMB to add seven new electronic forms into the currently approved collection of 677,151 responses, 144,587 burden hours, and $147,134,656 in annualized (non-hour) costs. The approval for the current information collection expires in June of 2005.

The seven new TEAS forms under development are as follows:

• Petition to Revive Abandoned Application—Failure to Respond Timely to Office Action (Form 2194): currently approved collection of information; new electronic form.
• Petition to Revive Abandoned Application—Failure to File Timely Statement of Use or Extension Request (Form 2195): currently approved collection of information; new electronic form.
• Revocation of Power of Attorney and/or Appointment of Attorney (Form 2196): appointment of attorney is currently approved and the USPTO is expanding this approval to include the revocation of power of attorney; new electronic form.
• Request to Delete Section 1(b) Basis, Intent to Use (Form 2200): addition of existing collection of information; new electronic form.
• Change of Owner's Address Form (Form 2197): addition of existing collection of information; new electronic form.
• Request for Permission to Withdraw as Attorney of Record (Form 2201): addition of existing collection of information; new electronic form.
• Request for Express Abandonment (Withdrawal) of Application (Form 2202): addition of existing collection of information; new electronic form.

II. Method of Collection

Electronically if applicants submit the information using the forms available through TEAS. By mail or hand delivery if applicants chose to submit the information in paper form.

III. Data

OMB Number: 0651-0009.

Form Number(s): PTO Forms 2194, 2195, 2196, 2197, 2200, 2201, and 2202.

Type of Review: Revision of a currently approved collection.

Affected Public: Primarily business or other for-profit organizations, but also individuals or households; not-for-profit institutions; farms, Federal Government; and state, local or tribal Government.

Estimated Number of Respondents: 762,701 responses. Of this total, 216,680 responses are related to new electronic forms added to this collection. The USPTO estimates that 4,400 each of the petitions to revive; 550 of requests to delete section 1(b) from an intent to use application; 89,901 of the revocations/appointment of attorney; 70,000 of the change of owner's address forms; 1,500 of requests to withdraw as the attorney of record; and 3,600 express abandonments of an application will be submitted electronically through TEAS per year. The USPTO estimates that the remaining 1,900 of the petitions to revive and 38,529 of the revocations and appointments of attorney will be mailed to the USPTO per year. The 216,680 responses being added to this collection adjusts the number of responses for the mailed petitions to revive and powers of attorney that are already covered in the currently approved collection. Currently, the USPTO estimates that 3,200 petitions to revive abandoned applications and 127,930 appointments of attorney are mailed to the USPTO. The USPTO estimates an increase in the total number of submissions for the petitions to revive abandoned applications from 3,200 to 12,600 responses per year and an increase in the total number of submissions for powers of attorney (now expanded to include a previously overlooked collection) from 127,930 to 128,430 responses per year. The addition of new electronic forms to this collection backs out the 131,130 responses for the petitions to revive and powers of attorney from the currently approved total of 677,151 responses for this collection, and adds 216,680 responses, for a new total of 762,701 responses for this collection.

Estimated Time Per Response: The USPTO estimates that it will take approximately 3 minutes (0.05 hours) to 12 minutes (0.20 hours) to complete these petitions, requests, and forms. The USPTO believes that it takes approximately 3 minutes (0.05 hours) to complete the requests for deletion of the section 1(b) basis, change of owner's address form, and the express abandonment of the application electronically through TEAS. The USPTO estimates that it takes approximately 5 minutes (0.08 hours) to complete the petitions to revive and the revocation and appointment of attorneys and 12 minutes (0.20 hours) to complete the withdrawals as the attorney of record and submit them electronically through TEAS. The USPTO estimates that it takes 6 minutes (0.10 hours) to complete the revocation and appointment of attorney and 12 minutes (0.20 hours) to complete the petitions to revive and mail them to the USPTO. This includes the time to gather the information, prepare the petitions, requests, and other associated forms, and submit them to the USPTO.

Estimated Total Annual Respondent Burden Hours: 154,483 burden hours. Of this total, 16,517 burden hours are related to the addition of the new electronic forms into this collection. The 16,517 burden hours being added to this collection adjusts the hours for the mailed petitions to revive and power of attorney that are already covered in the currently approved collection. Currently, the USPTO estimates burdens of 224 and 6,397 hours for the petitions to revive and powers of attorney, respectively. Burden hours for the petitions to revive will increase from 224 to 1,464 hours per year. Burden hours for the revocation/appointment of attorney will increase from 6,397 to 11,045 hours per year. The addition of the new electronic forms and inclusion of previously overlooked collections of information adds an additional 16,517 hours. Backing out the 6,621 hours for the mailed petitions to revive and the powers of attorney from the currently approved total of 144,587 hours amounts to a new total of 154,483 hours for this collection.

Estimated Total Annual Respondent Cost Burden: $39,491,294 total respondent cost burden. Of this total, $4,723,862 is associated with the new electronic forms that the USPTO is adding into the collection. The USPTO is using the American Intellectual Property Law Association hourly rate of $286 for associate attorneys to calculate the respondent cost. The hourly rates for completing petitions to revive an abandoned application and the powers of attorney forms (which are covered in the currently approved collection), have been adjusted to the current professional hourly rate of $286 for associate attorneys. The respondent costs of $4,723,862 being added to this collection adjusts the respondent cost burden for the petitions to revive an abandoned application and the power of attorney from $56,448.00 to $418,704 and from $1,612,044 to $3,158,870, respectively. The addition of the new electronic forms adds $4,723,862 in respondent costs to this collection. The USPTO will revise the currently approved respondent costs by subtracting $1,668,492 in respondent costs from the currently approved total of $36,435,924 in order to reflect the new estimate. This results in a new total of $39,491,294 in respondent cost burden estimates for this collection.

Item	Estimated time for response (minutes)	Estimated annual responses	Estimated annual burden hours
Petition to Revive Abandoned Application—Failure to Respond Timely to Office Action—No Form Associated	12	1,900	380
Petition to Revive Abandoned Application—Failure to File Timely Statement of Use or Extension Request—No Form Associated	12	1,900	380
Electronic Form Petition To Revive Abandoned Application—Failure to Respond Timely to Office Action	5	4,400	352
Electronic Form Petition to Revive Abandoned Application—Failure to File Timely Statement of Use or Extension Request	5	4,400	352
Electronic Form Request to Delete Section 1(b) Basis, Intent to Use	3	550	28
Revocation of Power of Attorney and/or Appointment of Attorney (Power of Attorney)—No Form Associated	6	38,529	3,853
Electronic Form Revocation of Power of Attorney and/or Appointment of Attorney (Power of Attorney)	5	89,901	7,192
Electronic Form Change of Owner's Address Form	3	70,000	3,500
Electronic Form Request for Permission to Withdraw as Attorney of Record	12	1,500	300
Electronic Form Request for Express Abandonment (Withdrawal) of Application	3	3,600	180
Totals		216,680	16,517

Estimated Total Annual Non-Hour Respondent Cost Burden: $148,101,566. Of this total, $1,286,910 is related to postage costs for the mailed petitions and appointments of attorney ($26,910) and filing fees related to the addition of electronic forms for the petitions to revive ($1,260,000). This collection has no operation or maintenance costs.

Customers incur postage costs when submitting non-electronic information to the USPTO by mail through the United States Postal Service. The USPTO does not maintain statistics on the percentage of submissions per manner of submission. However, the USPTO estimates that a large majority of submissions for these forms are made via first class mail. For purposes of this request, the USPTO is estimating that approximately 98% are mailed to the USPTO by first class mail and the other 2% are mailed by Express Mail. First class postage is 37 cents and the Express Mail service typically costs $13.65. For the petitions to revive abandoned applications, the USPTO estimates that approximately 3,724 are mailed to the USPTO by first class mail and 2% or approximately 76 are mailed by Express Mail. For the revocation of power of attorney and/or appointment of attorney, the USPTO estimates that approximately 37,758 are mailed to the USPTO by first class mail and 2% or approximately 771 are mailed by Express Mail. Therefore, a total estimated mailing cost of $26,910 is incurred.

Item	Responses (yr) (a)	Postage costs (b)	Total cost (yr) (a x b)
Petition to Revive Abandoned Application—Failure to Respond Timely to Office Action—First Class Mail	1,862	$.37	$689.00
Petition to Revive Abandoned Application—Failure to Respond Timely to Office Action—Express Mail or Courier Service	38	13.65	519.00
Petition to Revive Abandoned Application—Failure to File Timely Statement of Use or Extension Request—First Class Mail	1,862	.37	689.00
Petition to Revive Abandoned Application—Failure to File Timely Statement of Use or Extension Request—Express Mail or Courier Service	38	13.65	519.00
Revocation of Power of Attorney and/or Appointment of Attorney (Power of Attorney)—First Class Mail	37,758	.37	13,970.00
Revocation of Power of Attorney and/or Appointment of Attorney (Power of Attorney)—Express Mail or Courier Service	771	13.65	10,524.00
Totals	42,329		26,910.00

Filing fees of $1,260,000 are associated with petitions to revive abandoned applications; there are no fees associated with the other forms under development. The approval of this inclusion of the new TEAS forms will adjust the filing fee costs associated with the petitions from the currently approved $320,000 to $1,260,000. The USPTO would delete $320,000 in filing fees for the petitions to revive from the currently approved fees of $145,980,100 for this information collection and add adjusted fees of $1,260,000 for the petitions to revive, for a new adjusted total of $146,920,100 in filing fees for this collection.

Item	Responses (yr) (a)	Filing fees (b)	Total cost (yr) (a x b)
Petition to Revive Abandoned Application—Failure to Respond Timely to Office Action	1,900	$100.00	$190,000.00
Petition to Revive Abandoned Application—Failure to File Timely Statement of Use or Extension Request	1,900	100.00	190,000.00
Electronic Petition to Revive Abandoned Application—Failure to Respond Timely to Office Action	4,400	100.00	440,000.00
Electronic Petition to Revive Abandoned Application—Failure to File Timely Statement of Use or Extension Request	4,400	100.00	440,000.00
Request to Delete Section 1(b) Basis, Intent to Use	550	0.00	0.00
Revocation of Power of Attorney and/or Appointment of Attorney (Power of Attorney)	150	0.00	0.00
Electronic Revocation of Power of Attorney and/or Appointment of Attorney (Power of Attorney)	350	0.00	0.00
Change of Owner's Address Form	70,000	0.00	0.00
Request for Permission to Withdraw as Attorney of Record	1,500	0.00	0.00
Request for Express Abandonment (Withdrawal) of Application	3,600	0.00	0.00
Totals	88,750		1,260,000.00

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: July 14, 2004.

Susan K. Brown,

Records Officer, U.S. Patent and Trademark Office, Office of the Chief Information Officer, Office of Data Architecture and Services, Data Administration Division.