2010-15772. Trademark Trial and Appeal Board (TTAB) Actions

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 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 August 30, 2010.

ADDRESSES:

You may submit comments by any of the following methods:

• E-mail: [e-mail]. Include “0651-0040 Trademark Trial and Appeal Board (TTAB) Actions 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, U.S. 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 LaToya Brown, Technical Quality Review Analyst, Trademark Trial and Appeal Board, U.S. Patent and Trademark Office (USPTO), P.O. Box 1450, Alexandria, VA 22313-1450; by telephone [phone]; or by e-mail at [e-mail].

SUPPLEMENTARY INFORMATION:

I. Abstract

This collection of information is required by the Trademark Act Sections 13, 14, and 20, 15 U.S.C. 1063, 1064, and 1070, respectively. Under the Trademark Act, any individual or entity that adopts a trademark or service mark to identify its goods or services may apply to federally register its mark. Section 14 of the Trademark Act allows individuals and entities to file a petition to cancel a registration of a mark, while Section 13 allows individuals and entities who believe that they would be damaged by the registration of a mark to file an opposition, or an extension of time to file an opposition, to the registration of a mark. Section 20 of the Trademark Act allows individuals and entities to file an appeal from any final decision of the Trademark Examining Attorney assigned to review an application for registration of a mark.

The USPTO administers the Trademark Act pursuant to 37 CFR part 2, which contains the various rules that govern the filing of petitions to cancel the registrations of marks, notices of opposition to the registration of a mark, extensions of time to file an opposition, appeals, and other papers filed in connection with inter partes and ex partes proceedings. These petitions, notices, extensions, and additional papers are filed with the Trademark Trial and Appeal Board (TTAB), an administrative tribunal empowered to determine the right to register and subsequently determine the validity of a trademark.

The information in this collection can be submitted in paper format or electronically through the Electronic System for Trademark Trials and Appeals (ESTTA). There are no paper forms associated with this collection. However, the TTAB has suggested formats for the Petition to Cancel and the Notice of Opposition that individuals and entities can use when submitting these petitions and notices to the TTAB. These are not forms and, as such, do not have form numbers. If applicants or entities wish to submit the petitions, notices, extensions, and additional papers in inter partes and ex parte cases electronically, they must use the forms provided through ESTTA. Oppositions to extension of protection under the Madrid Protocol, as well as requests for extensions to oppose, must be filed electronically through ESTTA. This collection contains two suggested formats and six electronic forms.

The additional papers filed in inter partes and ex parte proceedings can be filed in paper or electronically. Although the number of paper filings is decreasing in favor of electronic filings, there still are a small percentage of paper submissions.

The information in this collection is a matter of public record, and is used by the public for a variety of private business purposes related to establishing and enforcing trademark rights. This information is important to the public, as both common law trademark owners and federal trademark registrants must actively protect their own rights.

II. Method of Collection

By mail, hand delivery, or electronically through ESTTA when a party files a petition to cancel a trademark registration, an opposition to the registration of a trademark, a request to extend the time to file an opposition, a notice of appeals, or additional papers for inter partes and ex parte proceedings with the USPTO. However, notices of opposition and extensions of time to file notices of opposition against the extensions of protection under the Madrid Protocol must be filed electronically through ESTTA. Only notices of appeal for ex parte appeals can be submitted by facsimile, in accordance with 37 CFR 2.195(d)(3).

III. Data

OMB Number: 0651-0040.

Form Number(s): PTO 2120, 2151, 2153, 2188, 2189, and 2190.

Type of Review: Revision of a currently approved collection.

Affected Public: Business or other for profit; not-for-profit institutions.

Estimated Number of Respondents: 80,025 responses per year.

Estimated Time per Response: The USPTO estimates that it takes the public approximately 10 to 45 minutes (0.17 to 0.75 hours) to complete this information, depending on the request. This includes the time to gather the necessary information, prepare the petitions, notices, extensions, or additional papers, and submit the completed request to the USPTO. The USPTO believes that it will take the same amount of time (and possibly less time) to gather the necessary information, prepare the submission, and submit it electronically to the TTAB as it does to submit it in paper form.

Estimated Total Annual Respondent Burden Hours: 17,815 hours per year.

Estimated Total Annual Respondent Cost Burden: $3,794,595. The USPTO estimates that it will take a 50/50 level of effort by attorneys and paraprofessional/paralegals to complete the requirements in this collection. The professional hourly rate for attorneys in private firms is $325, while the hourly rate for paraprofessional/paralegals in private firms is $100. After calculating the average of these rates, the USPTO believes that the hourly rate for completing the petitions, notices, requests, and other papers will be $213. Using this hourly rate, the USPTO estimates that the total respondent cost burden for this collection is $3,794,595 per year.

Item	Estimated time for response	Estimated annual responses	Estimated annual burden hours
Petition to Cancel	45 minutes	125	94
Electronic Petition to Cancel	45 minutes	1,300	975
Notice of Opposition	45 minutes	350	263
Electronic Notice of Opposition	45 minutes	5,000	3,750
Extension of Time to File an Opposition	10 minutes	150	26
Electronic Request for Extension of Time to File an Opposition	10 minutes	17,000	2,890
Papers in Inter Partes Cases	10 minutes	6,000	1,020
Electronic Papers in Inter Partes Cases	10 minutes	39,500	6,715
Notice of Appeal	15 minutes	500	125
Electronic Notice of Appeal	15 minutes	3,000	750
Miscellaneous Ex Parte Papers	10 minutes	4,700	799
Electronic Miscellaneous Ex Parte Papers	10 minutes	2,400	408
Totals		80,025	17,815

Estimated Total Annual Non-Hour Respondent Cost Burden: $2,417,326.

There are no capital start-up or maintenance costs associated with this information collection. There are, however, postage and recordkeeping costs, as well as filing fees, associated with this information collection.

The petitions to cancel, the notices of opposition and appeal, the extensions of time to file an opposition, and the additional papers filed in inter partes and ex partes cases may be submitted to the USPTO or served on other parties by Express or first-class mail through the United States Postal Service. These papers can also be hand delivered to the TTAB. The USPTO estimates that 6% of the petitions, notices, extensions, and additional inter partes and ex parte papers that are filed in paper will be submitted using Express Mail. The USPTO estimates that the average submission will weigh 2 ounces and that the respondent will be mailing the original to the TTAB and serving copies on the other parties involved in the proceedings. The USPTO estimates that it costs an average of $18.54 to send the petitions, notices, extensions, appeals, and additional papers by Express Mail to the TTAB. To account for the service of papers on other parties, the USPTO is adding an additional 20% of the postage rate ($3.71) for an estimated cost of $22.25. The USPTO estimates that up to 710 submissions per year may be mailed to the USPTO and other parties by Express Mail, for a postage cost of $15,798.

The USPTO believes the remaining petitions to cancel, the notices of opposition and appeal, the extensions of time to file an opposition, and the additional papers filed in inter partes and ex parte proceedings that are filed in paper (roughly 94%) will be sent by first-class mail. The USPTO estimates that the average submission will weigh 2 ounces and that the respondent will mail the original to the TTAB and serve copies on the other parties involved in the proceedings. The USPTO estimates that it costs 61 cents to mail the petitions, notices, extensions, appeals, and additional papers to the TTAB. To account for the service of papers on other parties, the USPTO is adding an additional 80% of the postage rate (49 cents) for an estimated cost of $1.10. The USPTO estimates that up to 11,116 submissions per year may be mailed to the USPTO and other parties by first-class mail, for a postage cost of $12,228.

Therefore, the USPTO estimates that the total postage cost for this collection is $28,026 per year.

In addition, the USPTO also strongly advises applicants who file their petitions to cancel, notices of opposition, appeals, extensions of time to file an opposition, and additional papers for ex parte and inter partes cases electronically to keep a copy of the acknowledgment receipt as clear evidence that the file was received by the USPTO on the date noted. The USPTO estimates that it takes 5 seconds (0.001 hours) to print the acknowledgment receipt and that 68,200 petitions, notices, extensions, and other papers will be submitted electronically, for a burden of 68 hours. Using the paraprofessional rate of $100 per hour, the USPTO estimates that the total recordkeeping cost for this collection will be $6,800 per year.

There is also annual nonhour cost burden in the way of filing fees associated with this collection. The petitions to cancel and the notices of opposition and appeal have filing fees. There are no filing fees for the extensions of time to file an opposition. The additional papers that are filed in ex parte and inter partes proceedings do not have their own specific fees, so they do not add new fees to the collection. The filing fees for the petitions to cancel, notices of opposition, and notices of appeal are per class of goods and services in the subject application or registration; therefore the total filing fees can vary depending on the number of classes. The total filing fees of $2,382,500 shown here are the minimum fees associated with this information collection.

Item	Responses (a)	Filing fee ($) (b)	Total non-hour cost burden (a × b) (c)
Petition to Cancel	125	$300.00	$37,500.00
Electronic Petition to Cancel	1,300	300.00	390,000.00
Notice of Opposition	350	300.00	105,000.00
Electronic Notice of Opposition	5,000	300.00	1,500,000.00
Extension of Time to File an Opposition	150	0.00	0.00
Electronic Request for Extension of Time to File an Opposition	17,000	0.00	0.00
Papers in Inter Partes Cases	6,000	0.00	0.00
• Answers
• Amendments to Pleadings
• Amendment of Application or Registration During Proceeding
• Motions (such as consent motions, motions to extend, motions to suspend, etc.)
• Evidence
• Briefs
• Surrender of Registration
• Abandonment of Application
• Documents Related to Concurrent Use Applications
• Notice of Intent to Appeal a TTAB decision
Electronic Papers in Inter Partes Cases	39,500	0.00	0.00
• Answers
• Amendments to Pleadings
• Amendment of Application or Registration During Proceeding
• Motions (such as consent motions, motions to extend, motions to suspend, etc.)
• Evidence
• Briefs
• Surrender of Registration
• Abandonment of Application
• Documents Related to Concurrent Use Applications
• Notice of Intent to Appeal a TTAB Decision
Notice of Appeal (Ex parte)	500	100.00	50,000.00
Electronic Notice of Appeal (Ex parte)	3,000	100.00	300,000.00
Miscellaneous Ex Parte Papers	4,700	0.00	0.00
Electronic Miscellaneous Ex Parte Papers	2,400	0.00	0.00
Totals	80,025		2,382,500.00

The USPTO estimates that the total non-hour respondent cost burden for this collection, in the form of postage and recordkeeping costs, in addition to the filing fees, is $2,417,326 per year.

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.

Susan K. Fawcett,

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