# Trademark Processing

> Briefs, arguments, decisions, and more.

URL: https://www.frixlaw.com/law-library/documents/fr%3A05-3048

## Record

- **Collection:** Federal Register
- **Document type:** Notice
- **Published:** February 17, 2005
- **Citation:** 70 FR 8078

## Text

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]
BILLING CODE 3510-16-P

---

Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/fr%3A05-3048. Public record. Not legal advice.