Trademark Processing

DEPARTMENT OF COMMERCE

Patent and Trademark Office

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 April 18, 2005.

ADDRESSES:

You may submit comments by any of the following methods:

• E-mail:

Susan.Brown@uspto.gov.

Include “0651-0009 comment” in the subject line of the message.

• Fax: (571) 273-0112, 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, PO 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), PO Box 1451, Alexandria, VA 22313-1451, by telephone at 571-272-9572, or by e-mail at

ari.leifman@uspto.gov.

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 USPTO is proposing to add five paper requirements into this collection: Request to Delete Section 1(b) Basis, Intent to Use, Request for Express Abandonment (Withdrawal) of Application, Request for Permission to Withdraw as Attorney of Record, Change of Owner's Address Form, and Other Petitions. The electronic versions of these first four requirements were additions to the collection recently approved by OMB on December 2, 2004. Other Petitions is a new paper category being added to encompass all other miscellaneous petitions that are submitted after prosecution of the trademark application. Other Petitions does not have an electronic equivalent; petitions are submitted on paper.

At this time, the USPTO is proposing to split this collection into five separate collections based upon the lines of the Trademark business processes. The proposed five groups are Applications for Trademark Registration, Substantive Submissions Made During Prosecution of the Trademark Application, Submissions Regarding Correspondence and Regarding Attorney Representation (Trademarks), Post Registration (Trademark Processing), and Trademark Petitions. The USPTO believes that splitting this extensive collection into smaller, more manageable, information collection requests will allow for a more efficient updating and renewal process.

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 4.8, 4.9, 4.16, 1478(A), 1553, 1581, 1583, 1963, 2000, 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:

785,130 total responses. Of this total, 253,801 responses are related to 0651-0009 Applications for Trademark Registration, 186,110 responses are related to 0651-00xx Substantive Submissions Made During Prosecution of the Trademark Application, 218,482 responses are related to 0651-00xx Submissions Regarding Correspondence and Regarding Attorney Representation (Trademarks), 126,337 responses are related to 0651-00xx Post Registration (Trademark Processing), and 400 responses are related to 0651-00xx Trademark Petitions, for a new total of 785,130 responses for this collection.

Estimated Time Per Response:

The USPTO estimates that it will take approximately 3 minutes (0.05 hours) to 30 minutes (0.50 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:

141,400 burden hours.

Estimated Total Annual Respondent Cost Burden:

Using the professional hourly rate of $286 for associate attorneys in private firms, the USPTO estimates $40,440,400 per year for salary costs associated with respondents. Of this total, $21,438,274 is associated with 0651-0009 Applications for Trademark Registration, $9,011,288 is associated with 0651-00xx Substantive Submissions Made During Prosecution of the Trademark Application, $4,596,592 is associated with 0651-00xx Submissions Regarding Correspondence and Regarding Attorney Representation (Trademarks), $5,356,494 is associated with 0651-00xx Post Registration (Trademark Processing), and $37,752 is associated with 0651-00xx Trademark Petitions, for a new total of $40,440,400 in annual respondent cost burden for this collection, as follows:

0651-0009 Applications for Trademark Registration:

Item

Estimated time for

response

Estimated

annual responses

Estimated

annual burden hours

Use-Based Trademark/Service Mark Application, including:

23 minutes

21,392

8,129

—Trademark/Service Mark Application

—Collective Trademark/Service Mark Application

—Collective Membership Mark

—Certification Mark Application

Electronic Use-Based Trademark/Service Mark Application, including:

21 minutes

64,176

22,462

—Trademark/Service Mark Application

—Collective Trademark/Service Mark Application

—Collective Membership Mark

—Certification Mark Application

Intent to Use Trademark/Service Mark Application, including:

17 minutes

38,031

10,649

—Trademark/Service Mark Application

—Collective Trademark/Service Mark Application

—Collective Membership Mark

—Certification Mark Application

Electronic Intent to Use Trademark/Service Mark Application, including:

15 minutes

114,092

28,523

—Trademark/Service Mark Application

—Collective Trademark/Service Mark Application

—Collective Membership Mark

—Certification Mark Application

Application for Registration of Trademark/Service Mark under §§ 44(d) and (e), including:

20 minutes

4,027

1,329

—Trademark/Service Mark Application

—Collective Trademark/Service Mark Application

—Collective Membership Mark

—Certification Mark Application

Electronic Application for Registration of Trademark/Service Mark under §§ 44(d) and (e), including:

19 minutes

12,083

3,867

—Trademark/Service Mark Application

—Collective Trademark/Service Mark Application

—Collective Membership Mark

—Certification Mark Application

Totals

253,801

74,959

0651-00xx Substantive Submissions Made During Prosecution of the Trademark Application:

Item

Estimated time for

response

Estimated

annual responses

Estimated

annual burden hours

Trademark/Service Mark Allegation of Use (Amendment to Allege Use/Statement of Use)

13 minutes

18,739

4,123

Electronic Trademark/Service Mark Allegation of Use (Amendment to Allege Use/Statement of Use)

11 minutes

43,726

8,308

Request for Extension of Time to File a Statement of Use

10 minutes

30,348

5,159

Electronic Request for Extension of Time to File a Statement of Use

9 minutes

70,811

10,622

Petition to Revive Abandoned Application—Failure to Respond Timely to Office Action

12 minutes

1,900

399

Electronic Petition to Revive Abandoned Application—Failure to Respond Timely to Office Action

5 minutes

4,400

352

Petition to Revive Abandoned Application—Failure to File Timely Statement of Use or Extension Request

12 minutes

1,900

399

Electronic Petition to Revive Abandoned Application—Failure to File Timely Statement of Use or Extension Request

5 minutes

4,400

352

Request to Delete Section 1(b) Basis, Intent to Use

4 minutes

235

14

Electronic Request to Delete Section 1(b) Basis, Intent to Use

3 minutes

550

28

Request for Express Abandonment (Withdrawal) of Application

4 minutes

1,115

67

Electronic Request for Express Abandonment (Withdrawal) of Application

3 minutes

3,600

180

Request to Divide

5 minutes

476

38

Electronic Request to Divide

4 minutes

1,110

67

Trademark Amendments/Corrections/Surrenders

30 minutes

2,800

1,400

Totals

186,110

31,508

0651-00xx Submissions Regarding Correspondence and Regarding Attorney Representation (Trademarks):

Item

Estimated time for

response

Estimated

annual responses

Estimated

burden hours

Revocation of Power of Attorney and/or Appointment of Attorney (Power of Attorney)

6 minutes

38,530

3,853

Electronic Revocation of Power of Attorney/Domestic Representative and/or Appointment of Attorney/Domestic Representative

5 minutes

89,900

7,192

Designation of Domestic Representative

3 minutes

36,196

1,810

Request for Permission to Withdraw as Attorney of Record

15 minutes

645

161

Electronic Request for Permission to Withdraw as Attorney of Record

12 minutes

1,500

315

Change of Owner's Address Form

4 minutes

15,515

931

Electronic Change of Owner's Address

3 minutes

36,196

1,810

Totals

218,482

16,072

0651-00xx Post Registration (Trademark Processing):

Item

Estimated time for

response

Estimated

annual responses

Estimated

annual burden hours

Affidavit of Use of a Mark in Commerce Under § 8

11 minutes

12,330

2,343

Electronic Affidavit of Use of a Mark in Commerce Under § 8

10 minutes

28,770

4,891

Combined Affidavit of Use in Commerce & Application for Renewal of Registration of a Mark Under §§ 8 & 9

14 minutes

12,330

2,836

Electronic Combined Affidavit of Use in Commerce & Application for Renewal of Registration of a Mark Under §§ 8 & 9

12 minutes

28,770

6,042

Affidavit of Incontestability of a Mark Under § 15

3 minutes

131

7

Electronic Affidavit of Incontestability of a Mark Under § 15

6 minutes

306

31

Combined Affidavit of Use & Incontestability Under §§ 8 & 15

5 minutes

13,110

1,049

Electronic Combined Affidavit of Use & Incontestability Under §§ 8 & 15

3 minutes

30,590

1,530

Totals

26,337

18,729

0651-00xx Trademark Petitions:

Item

Estimated time for

response

Estimated

annual responses

Estimated time for annual

burden hours

Other Petitions

20 minutes

400

132

Total

400

132

Estimated Total Annual Non-Hour Respondent Cost Burden (includes postage costs and filing fees): $146,766,731. 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 estimates that the majority of submissions for these paper forms are made via first class mail. First class postage is 37 cents. Therefore, a total estimated mailing cost of $92,556 is incurred (250,150 responses × $.37). Of this total, $23,476 is associated with 0651-0009 Applications for Trademark Registration, $21,280 is associated with 0651-00xx Substantive Submissions Made During Prosecution of the Trademark Application, $33,629 is associated with 0651-00xx Submissions Regarding Correspondence and Regarding Attorney Representation (Trademarks), $14,023 is associated with 0651-00xx Post Registration (Trademark Processing), and $148 is associated with 0651-00xx Trademark Petitions, for a new total of $92,556 in postage costs for this collection, as follows:

0651—0009 Applications for Trademark Registration:

Item

Responses

(yr)

(a)

Postage costs

(b)

Total cost

(yr)

(a × b)

Use-Based Trademark/Service Mark Application, including;

21,392

$.37

$7,915.00

—Trademark/Service Mark Application

—Collective Trademark/Service Mark Application

—Collective Membership Mark

—Certification Mark Application

Intent to Use Trademark/Service Mark Application, including;

38,031

.37

14,071.00

—Trademark/Service Mark Application

—Collective Trademark/Service Mark Application

—Collective Membership Mark

—Certification Mark Application

Application for Registration of Trademark/Service Mark under §§ 44(d) and (e), including:

4,027

.37

1,490.00

—Trademark/Service Mark Application

—Collective Trademark/Service Mark Application

—Collective Membership Mark

—Certification Mark Application

Totals

63,450

$23,476.00

0651—00xx Substantive Submissions Made During Prosecution of the Trademark Application:

Item

Responses

(yr)

(a)

Postage costs

(b)

Total cost

(yr)

(a × b)

Trademark/Service Mark Allegation of Use (Amendment to Allege Use/Statement of Use)

18,739

$.37

$6,933.00

Request for Extension of Time to File a Statement of Use

30,348

.37

11,229.00

Petition to Revive Abandoned Application—Failure to Respond Timely to Office Action

1,900

.37

703.00

Petition to Revive Abandoned Application—Failure to File Timely Statement of Use or Extension Request

1,900

.37

703.00

Request to Delete Section 1(b) Basis, Intent to Use

235

.37

87.00

Request for Express Abandonment (Withdrawal) of Application

1,115

.37

413.00

Request to Divide

476

.37

176.00

Trademark Amendments/Corrections/Surrenders

2,800

.37

1,036.00

Totals

57,513

21,280.00

0651—00xx Submissions Regarding Correspondence and Regarding Attorney Representation (Trademarks):

Item

Responses

(yr)

(a)

Postage costs

(b)

Total cost

(yr)

(a × b)

Revocation of Power of Attorney and/or Appointment of Attorney (Power of Attorney)

38,530

$.37

$14,256.00

Designation of Domestic Representative

36,196

.37

13,393.00

Request for Permission to Withdraw as Attorney of Record

645

.37

239.00

Change of Owner's Address Form

15,515

.37

5,741.00

Totals

90,886

33,629.00

0651—00xx Post Registration (Trademark Processing):

Item

Responses

(yr)

(a)

Postage costs

(b)

Total cost

(yr)

(a × b)

Affidavit of Use of a Mark in Commerce Under § 8

12,330

$.37

$4,562.00

Combined Affidavit of Use in Commerce & Application for Renewal of Registration of a Mark Under §§ 8 & 9

12,330

.37

4,562.00

Affidavit of Incontestability of a Mark Under § 15

131

.37

48.00

Combined Affidavit of Use & Incontestability Under §§ 8 & 15

13,110

.37

4,851.00

Totals

37,901

14,023.00

0651—00xx Trademark Petitions:

Item

Responses

(yr)

(a)

Postage costs

(b)

Total cost

(yr)

(a × b)

Other Petitions

400

$.37

$148.00

Total

400

148.00

Filing fees of $146,674,175 are associated with this collection. Of this total, $85,657,825 is associated with 0651-0009 Applications for Trademark Registration, $23,118,950 is associated with 0651-00xx Substantive Submissions Made During Prosecution of the Trademark Application, $0 is associated with 0651-00xx Submissions Regarding Correspondence and Regarding Attorney Representation (Trademarks), $37,857,400 is associated with 0651-00xx Post Registration (Trademark Processing), and $40,000 is associated with 0651-00xx Trademark Petitions for a new total of $146,674,175 in filing fees for this collection, as follows:

0651-0009 Application for Trademark Registration:

Item

Responses

(yr)

(a)

Filing fees

(b)

Total cost

(yr)

(a × b)

Use-Based Trademark/Service Mark Application, including:

21,392

$375.00

$8,022,000.00

—Trademark/Service Mark Application

—Collective Trademark/Service Mark

—Application

—Collective Membership Mark

—Certification Mark Application

Electronic Use-Based Trademark/Service Mark Application, including:

64,176

325.00

20,857,200.00

—Trademark/Service Mark Application

—Collective Trademark/Service Mark Application

—Collective Membership Mark

—Certification Mark Application

Intent to Use Trademark/Service Mark Application, including:

38,031

375.00

14,261,625.00

—Trademark/Service Mark Application

—Collective Trademark/Service Mark Application

—Collective Membership Mark

—Certification Mark Application

Electronic Intent to Use Trademark/Service Mark Application, including:

114,092

325.00

37,079,900.00

—Trademark/Service Mark Application

—Collective Trademark/Service Mark Application

—Collective Membership Mark

—Certification Mark Application

Application for Registration of Trademark/Service Mark under §§ 44(d) and (e), including:

4,027

375.00

1,510,125.00

—Trademark/Service Mark Application

—Collective Trademark/Service Mark Application

—Collective Membership Mark

—Certification Mark Application

Electronic Application for Registration of Trademark/Service Mark under §§ 44(d) and (e), including:

12,083

325.00

3,926,975.00

—Trademark/Service Mark Application

—Collective Trademark/Service Mark Application

—Collective Membership Mark

—Certification Mark Application

Totals

253,801

85,657,825.00

0651-00xx Substantive Submissions Made During Prosecution of the Trademark Application:

Item

Responses

(yr)

(a)

Filing fees

(b)

Total cost

(yr)

(a × b)

Trademark/Service Mark Allegation of Use (Amendment to Allege Use/Statement of Use)

18,739

$100.00

$1,873,900.00

Electronic Trademark/Service Mark Allegation of Use (Amendment to Allege Use/Statement of Use)

43,726

100.00

4,372,600.00

Request for Extension of Time to File a Statement of Use

30,348

150.00

4,552,200.00

Electronic Request for Extension of Time to File a Statement of Use

70,811

150.00

10,621,650.00

Petition to Revive Abandoned Application—Failure to Respond Timely to Office Action

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

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 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

235

0.00

0.00

Electronic Request to Delete Section 1(b) Basis, Intent to Use

550

0.00

0.00

Request for Express Abandonment (Withdrawal) of Application

1,115

0.00

0.00

Electronic Request for Express Abandonment (Withdrawal) of Application

3,600

0.00

0.00

Request to Divide

476

100.00

47,600.00

Electronic Request to Divide

1,110

100.00

111,000.00

Trademark Amendments/Corrections/Surrenders

2,800

100.00

280,000.00

Totals

186,110

23,118,950.00

0651-00xx Submissions Regarding Correspondence and Regarding Attorney Representation (Trademarks):

Item

Responses

(yr)

(a)

Filing fees

(b)

Total cost

(yr)

(a × b)

Revocation of Power of Attorney and/or Appointment of Attorney (Power of Attorney)

38,530

$0.00

$0.00

Electronic Revocation of Power of Attorney/Domestic Representative and/or Appointment of Attorney/Domestic Representative

89,900

0.00

0.00

Designation of Domestic Representative

36,196

0.00

0.00

Request for Permission to Withdraw as Attorney of Record

645

0.00

0.00

Electronic Request for Permission to Withdraw as Attorney of Record

1,500

0.00

0.00

Change of Owner's Address Form

15,515

0.00

0.00

Electronic Change of Owner's Address

36,196

0.00

0.00

Totals

218,482

0.00

0651-00xx Post Registration (Trademarks):

Item

Responses

(yr)

(a)

Filing fees

(b)

Total cost

(yr)

(a × b)

Affidavit of Use of a Mark in Commerce Under § 8

12,330

$100.00

$1,233,000.00

Electronic Affidavit of Use of a Mark in Commerce Under § 8

28,770

100.00

2,877,000.00

Combined Affidavit of Use in Commerce & Application for Renewal of Registration of a Mark Under §§ 8 & 9

12,330

500.00

6,165,000.00

Electronic Combined Affidavit of Use in Commerce & Application for Renewal of Registration of a Mark Under §§ 8 & 9

28,770

500.00

14,385,000.00

Affidavit of Incontestability of a Mark Under § 15

131

200.00

26,200.00

Electronic Affidavit of Incontestability of a Mark Under § 15

306

200.00

61,200.00

Combined Affidavit of Use & Incontestability Under §§ 8 & 15

13,110

300.00

3,933,000.00

Electronic Combined Affidavit of Use & Incontestability Under §§ 8 & 15

30,590

300.00

9,177,000.00

Totals

126,337

37,857,400.00

0651-00xx Trademark Petitions:

Item

Responses

(yr)

(a)

Filing fees

(b)

Total cost

(yr)

(a × b)

Other Petitions

400

$100.00

$40,000.00

Total

400

40,000.00

*

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: February 10, 2005.

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.

[FR Doc. 05-3048 Filed 2-16-05; 8:45 am]

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