0651-0040 Final Justification 2007

SUPPORTING STATEMENT
United States Patent and Trademark Office
Trademark Trial and Appeal Board (TTAB) Actions
OMB Control No. 0651-0040

A.

JUSTIFICATION

1.

Necessity of Information Collection

Under the Trademark Act of 1946, as amended, any individual or entity that adopts a
trademark or service mark to identify its goods or services may apply to federally
register its mark. The mark will remain on the register for ten years and is renewable in
ten-year increments.
Individuals or entities who believe that they would be damaged by the registration of a
mark may file an opposition to the registration of that mark, or an extension of time to
file an opposition, under Section 13 of the Trademark Act, 15 U.S.C. § 1063. If a mark
is successfully opposed, registration will not take place.
Section 14 of the Trademark Act, 15 U.S.C. § 1064, allows individuals and entities, who
believe that they are or will be damaged by the registration of a mark, to file a petition to
cancel the registration of that mark.
Individuals or entities may file an appeal from any final decision of the Trademark
Examining Attorney assigned to review an application for registration of a mark under
Section 20 of the Trademark Act, 15 U.S.C. § 1070.
The United States Patent and Trademark Office (USPTO) administers the Trademark
Act according to 37 CFR Part 2, which contains the various rules that implement the
Trademark Act and 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 parte
proceedings.
These petitions, notices, extensions, and additional papers are filed with the Trademark
Trial and Appeal Board (TTAB). The TTAB decides inter partes cases and ex parte
appeals. The TTAB is an administrative tribunal empowered to determine the right to
register and subsequently determine the validity of a trademark. The TTAB adjudicates
the rights of parties in specific types of proceedings, such as oppositions, cancellations,
extensions of time to file a proceeding, appeals, and the like. The Chief Administrative
Trademark Judge and 18 administrative trademark judges decide proceedings filed with
the TTAB. A panel of three judges decides cases when they are ready for decisions.
The TTAB follows the Federal Rules of Civil Procedure.

The USPTO is also part of the Madrid Protocol, an international agreement governing
trademark protection, and accepts these international filings. Under the Madrid
Protocol, parties can file oppositions to extensions of protection under the Madrid
Protocol, as well as file requests for extensions of time to oppose these extensions of
protection. Oppositions and extensions filed under the Madrid Protocol must be filed
electronically through the Electronic System for Trademark Trials and Appeals (ESTTA).
The additional papers that are filed in inter partes and ex parte proceedings can be filed
in paper format or electronically through ESTTA. The electronic submissions of the
additional papers are covered in this collection. The USPTO believed that the ability to
submit these papers through ESTTA would eliminate the need for paper filings.
Although the number of paper filings is decreasing in favor of electronic filings, there are
still a substantial number of these documents being submitted in paper. Since the
TTAB is still receiving paper submissions of these documents, the USPTO is taking this
opportunity to add the paper submissions of the additional papers filed in inter partes
and ex parte proceedings into the collection as part of the renewal effort.
Table 1 provides the specific statutes and regulations requiring the USPTO to collect
the information for the petitions to cancel, notices of opposition, extensions of time to file
an opposition, notices of appeal, and the additional papers filed in inter partes and ex
parte proceedings.
Table 1: Information Requirements to Determine Rights to Registration
Requirement

Statute

Rule

Petition to Cancel

15 U.S.C. § 1064

37 CFR Part 2,2.111 and 2.112

Notice of Opposition

15 U.S.C. § 1063

37 CFR Part 2,2.101 and 2.104

Extension of Time to File an Opposition

15 U.S.C. § 1063

37 CFR Part 2, 2.102

Not Applicable

Papers in Inter Partes Cases
• 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

37 CFR Part 2, 2.106 and 2.114
37 CFR Part 2, 2.107 and 2.115
37 CFR Part 2, 2.133
37 CFR Part 2, 2.120, 2.125, 2.127,
and 2.129
37 CFR Part 2, 2.122 through 2.125
37 CFR Part 2, 2.128
37 CFR Part 2, 2.134
37 CFR Part 2, 2.135
37 CFR Part 2, 2.99
37 CFR Part 2, 2.145

Notice of Appeal
Miscellaneous Ex Parte Papers

2.

15 U.S.C. § 1070

37 CFR Part 2, 2.141 and 2.142

Not Applicable

37 CFR Part 2, 2.144

Needs and Uses

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

2

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.
The information in this collection can be submitted in paper format or electronically
through ESTTA. The paper submissions can either be mailed to the USPTO through
the United States Postal Service or hand delivered. There are some exceptions.
Individuals and entities who are filing notices of opposition and extensions of time to file
notices of opposition against the extensions of protection under the Madrid Protocol
must file these documents electronically through ESTTA. None of these documents can
be submitted by facsimile, with the exception of notices of appeal for ex parte cases
which can be faxed to the TTAB in accordance with 37 CFR 2.195(d)(3).
There are no paper forms associated with this collection. However, the TTAB does
have suggested formats for the petitions to cancel and the notices of opposition that
individuals and entities can use when submitting these petitions and notices to the
TTAB. These suggested formats are not meant to be used as a form that is filled in and
then returned to the TTAB. Rather, they are suggested formats that illustrate how the
petition or notice should be set up. Individuals and entities may follow these formats in
preparing their petitions and notices, but they do not need to copy those portions of the
suggested formats that are not relevant to their particular situation. These suggested
formats are not official USPTO forms and as such, they do not have USPTO form
numbers assigned to them. Individuals and entities can download the suggested
formats for the petition to cancel and the notice of opposition from the USPTO forms
page on the USPTO’s official website. The second edition of the Trademark Trial and
Appeal Board Manual of Procedure, which can only be accessed online through the
USPTO’s website at www.uspto.gov, contains the requirements for filing these items.
The only official forms in this collection are the electronic forms that are accessed
through ESTTA. These forms do have USPTO form numbers assigned to them, unlike
the paper suggested formats. 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. These forms cannot
be e-mailed to the TTAB.
This collection contains two suggested formats and six electronic forms.
The Information Quality Guidelines from Section 515 of Public Law 106-554, Treasury
and General Government Appropriations Act for Fiscal Year 2001, apply to this
information collection and comply with all applicable information quality guidelines, i.e.,
the OMB and specific operating unit guidelines.
This proposed collection of information will result in information that will be collected,
maintained, and used in a way consistent with all applicable OMB and USPTO
Information Quality Guidelines. (Ref A)

3

Table 2 outlines how these collections of information are used by the public and by the
USPTO:
Table 2: Needs and Uses of Information Collected for Trademark Trial and Appeal Board (TTAB)
Actions
Form and Function
Petition to Cancel
(Ref B)

Form #
No Form
Associated
Suggested
Format

Needs and Uses
•

Used by the public to request the cancellation of a trademark
registration in whole or in part.
Used by the public to submit the required fee for the petition to
cancel.
Used by the USPTO to institute a cancellation proceeding and to
notify the registrant of the grounds for cancellation

•
•

Electronic Petition to Cancel
(Ref C)

PTO 2188

•

Used by the public to request the cancellation of a trademark
registration in whole or in part electronically.
Used by the public to submit the required fee for the petition to
cancel electronically.
Used by the USPTO to institute a cancellation proceeding and to
notify the registrant of the grounds for cancellation.

•
•

Notice of Opposition
(Ref D)

No Form
Associated
Suggested
Format

•

Used by the public to oppose registration of a pending trademark
application within 30 days after the publication of the application
being opposed or within the extension of time for filing an
opposition.
Used by the USPTO to process an opposition to the registration
of a mark.

•

Electronic Notice of Opposition
(Ref E)

PTO 2120

•

Used by the public to submit an opposition to the registration of
a pending trademark application within 30 days after the
publication of the application being opposed or within the
extension of time for filing an opposition electronically.
Used by the USPTO to process an opposition to the registration
of a mark electronically.

•

Extension of Time to File an Opposition

No Form
Associated

•

Used by the public to request additional time to file an opposition
to a trademark registration prior to the expiration of the 30-day
period.
Used by the USPTO to extend the time for filing an opposition an
additional 30 days, and grant further extensions in accordance
with TTAB rules.
Used by the USPTO to notify the applicant of each extension of
time for filing an opposition.

•
•

Electronic Request for Extension of Time
to File an Opposition
(Ref F)

PTO 2153

•

Used by the public to electronically request additional time to file
an opposition to a trademark registration prior to the expiration of
the 30-day period.
Used by the USPTO to extend the time for filing an opposition an
additional 30 days, and grant further extensions in accordance
with TTAB rules.
Used by the USPTO to notify the applicant of each extension of
time for filing an opposition.

•
•

4

Papers in Inter Partes Cases
• 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.

No Form
Associated

Electronic Papers in Inter Partes Cases
• 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.
(Ref G)

PTO 2151

Notice of Appeal

No Form
Associated

•

Used by the public to file papers, such as motions and briefs,
needed to prosecute inter partes cases.
Used by the USPTO to process inter partes cases.
Used by the USPTO as a suspense copy for appeals of TTAB
decisions filed with a federal court.

•
•

•

Used by the public to electronically file papers, such as motions
and briefs, needed to prosecute inter partes cases.
Used by the USPTO to process inter partes cases.
Used by the USPTO as a suspense copy for appeals of TTAB
decisions filed with a federal court.

•
•

•

Used by the public to appeal a final decision of the Trademark
Examining Attorney refusing registration of a trademark within
six months of the mailing date of the final refusal to register the
mark.
Used by the public to submit the required fees.
Used by the USPTO to institute and process an appeal.

•
•
Electronic Notice of Appeal
(Ref H)

PTO 2190

•

•
•

Used by the public to electronically file an appeal of the
Trademark Examining Attorney’s final decision refusing
registration of a trademark within six months of the mailing date
of the final refusal to register the mark.
Used by the public to submit the required fees.
Used by the USPTO to institute and process an appeal.

Miscellaneous Ex Parte Papers

No Form
Associated

•
•

Used by the public to file papers in ex parte appeal cases.
Used by the USPTO to process ex parte cases.

Electronic Miscellaneous Ex Parte
Papers
(Ref I)

PTO 2189

•

Used by the public to file papers in ex parte appeal cases
electronically.
Used by the USPTO to process ex parte cases.

3.

•

Use of Information Technology

With the exception of the notice of appeal for ex parte appeals, none of the TTAB filings
can be filed by facsimile in accordance with the USPTO’s rules. However, the USPTO
does collect all of the information requirements in this collection electronically through
ESTTA. Notices of opposition and extensions of time to file notices of opposition

5

against the extensions of protection under the Madrid Protocol must be filed
electronically through ESTTA.
ESTTA can be accessed through the USPTO’s website and allows filers to timely
complete and submit forms with the TTAB electronically. They can also print out the
completed form and mail it to the USPTO. ESTTA provides step-by-step instructions
and help screens for completing the forms. The system prompts the filer to validate the
required fields and sign the submission before it is electronically submitted to the TTAB.
Upon transmission, the form will be assigned an ESTTA tracking number. The forms
that are filed through ESTTA are time-stamped with the official filing date when received
on the USPTO server. In cases where a fee is required, the time-stamp is applied when
the payment process is completed and the receipt screen is displayed. The filing date is
also controlled by Eastern Standard Time. The official filing date and time can be found
on the confirmation web screen and in the e-mail confirmation. Once the form has been
submitted electronically, the USPTO will immediately provide the sender with an e-mail
acknowledgment of receipt via e-mail.
The information submitted through ESTTA moves directly into the Trademark Trial and
Appeal Board Information System (TTABIS), the TTAB’s electronic workflow system.
Electronically submitted forms need not be processed or scanned by hand, thereby
eliminating the delays caused by the processing and scanning of paper filings. The
TTAB’s electronic workflow system processes all incoming and outgoing documents
electronically and permits staff to prepare correspondence, track cases, generate
reports for management, and monitor proceedings in an effective, secure, and timely
manner. Information regarding TTAB proceedings is available over the Intranet and
Internet via TTABVue. TTABIS users will have the ability to add electronic notes and
highlights directly to TTABIS electronic documents.
The TTAB disseminates the information collected through the notices of opposition,
extensions of time to oppose, petitions to cancel, and miscellaneous papers in inter
partes and ex parte proceedings electronically through TTABVue. This system can be
accessed through the TTAB’s homepage on the USPTO’s website. TTABVue provides
online images of the TTAB filings indexed by prosecution history entry. It allows users
to view proceedings with scanned incoming filings from either paper or Internet filings.
Other features include the capability to print and enlarge the incoming document to a
readable size.
TTABIS allows the public and the TTAB staff to retrieve information concerning TTAB
proceedings from the TTAB’s internal databases electronically using the Internet. Staff
and customers can search, view, and print specific information using their browser.
This provides a single point of access for querying information through a user-friendly
interface. Information can be retrieved from TTABVue using a proceeding number, a
plaintiff or defendant name, the mark, any words within an index, the trademark serial
number, or registration number.

6

The revised edition of the Trademark Trial and Appeal Board’s Manual of Procedure
(TBMP) is only available online through the USPTO’s website. The TBMP provides
guidance to practitioners litigating cases before the TTAB and describes current TTAB
practice, statutory changes and new rules that have been promulgated since 1995,
video conferencing for final hearings, and telephone conferences. The TBMP also
addresses electronic filing, access to the TTAB’s electronic database via the Internet,
and contains suggested formats for some of the TTAB’s filings. The TTAB also
disseminates its decisions from 1997 to the present to the public through its home page
on the USPTO website.
4.

Efforts to Identify Duplication

Every effort has been made to identify and eliminate duplication of information. This
collection provides the initial information required to give notice of opposition to the
registration of a mark, to request additional time to file an opposition to the registration
of a mark, to initiate the cancellation of a trademark registration, to request an appeal of
the Trademark Examining Attorney’s final decision, and to collect the additional papers
needed to prosecute an inter partes or ex parte appeal. This information is not collected
elsewhere within the USPTO. Where possible, the ESTTA system retrieves already
existing data and completes fields within the ESTTA forms to eliminate the need for the
filer to provide data already in the TTAB database.
5.

Minimizing the Burden to Small Entities

Since registrations, oppositions, cancellations, and appeals are voluntary activities on
the part of the public, the USPTO has not collected data to determine whether the
collection of information impacts small businesses or other small entities.
6.

Consequences of Less Frequent Collection

Less frequent collection of this information is not possible, since the information is
collected only when voluntarily submitted by the public. Failure to collect this
information would prevent parties from exercising their right to file an opposition to the
registration of a mark, request an extension of time to file an opposition to a mark, to
cancel a federally registered trademark, to appeal any final decision of the Trademark
Examining Attorney in charge of the requested registration of a mark, and to file the
papers needed to further prosecute an inter partes or ex parte appeal. The information
could not be collected less frequently. If the collection of information was not
conducted, the USPTO could not comply with the requirements of 15 U.S.C. §§1063,
1064, and 1070, and 37 CFR Part 2, 2.101-102, 2.104, 2.111 – 2.112, and 2.141 to
2.142
7.

Special Circumstances in the Conduct of Information Collection

There are no special circumstances associated with this collection of information.

7

8.

Consultation Outside the Agency

The 60-Day Federal Register Notice was published on May 24, 2007 (Vol. 72, No. 100).
The public comment period ended on July 23, 2007. No comments were received from
the public.
Large and well-organized bar associations frequently communicate their views to the
USPTO. Also, the Trademark Public Advisory Committee was created by the 1999
American Inventors Protection Act to advise the Director of the USPTO on the agency’s
operations, including its goals, performance, budget, and user fees. The Committee
has nine voting members who are appointed by and serve at the pleasure of the
Secretary of Commerce. The statute also provides non-voting membership on the
Committee for the agency’s three recognized unions. The appointments include
inventors, lawyers, corporate executives, entrepenuers, and academicians with
significant experience in management, finance, science, technology, labor relations, and
intellectual property issues. The members of the Trademark Public Advisory Committee
reflect the broad array of the USPTO’s stakeholders. This diversity of interests is an
effective tool in helping the USPTO nurture and protect the intellectual property that is
the underpinning of America’s strong economy.
9.

Payment or Gifts to Respondents

This information collection does not involve a payment or gift to any respondent.
Response to this information collection is necessary to file an opposition to the
registration of a mark, to petition for an extension of time to file an opposition to the
registration of a mark, to petition to cancel a trademark registration, to file a notice of
appeal of any final decision of the Trademark Examining Attorney in charge of the
requested registration of a mark, and to file the additional papers necessary for the
further prosecution of the inter partes or ex parte case.
10.

Assurance of Confidentiality

Trademark applications are open to public inspection. The case files for oppositions,
extensions of time to oppose a registration, petitions to cancel a trademark registration,
and appeals are open to the public for review and do not require confidentiality except
for certain documents filed under a claim of confidentiality, which are not available for
public review. Confidential papers may be filed either electronically or in paper, under
separate cover, as specified in 37 CFR 2.126(d).
11.

Justification for Sensitive Questions

None of the required information is considered to be of a sensitive nature.

8

12.

Estimate of Hour and Cost Burden to Respondents

Table 3 calculates the burden hours and costs of this information collection to the
public, based on the following factors. These estimates include Madrid submissions as
well:
•

Respondent Calculation Factors
Based on filings from the previous years, the USPTO estimates that it will receive 79,000
responses per year. The USPTO estimates that 79% of these responses will be
submitted electronically. Table 3, column (b) shows the number of responses for the
items in this collection.

•

Burden Hour Calculation Factors
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 the information in paper form. Table 3, column (a) shows the time
estimates for the items in this collection.

•

Cost Burden Calculation Factors
The USPTO estimates that it will take a combined 50/50 level of effort by associate
attorneys and paraprofessionals/paralegals to complete the requirements in this
collection. The professional hourly rate for associate attorneys in private firms is $304,
while the hourly rate for paraprofessionals/paralegals in private firms is $90. The
professional rate of $304 per hour used in this submission is the median rate for
associate attorneys in private firms that is published in the 2005 report of the Committee
on Economics of Legal Practice of the American Intellectual Property Law Association,
which summarizes the results of a survey with data on hourly billing rates. The
paraprofessional/paralegal rate of $90 used in this submission is the average/typical rate
for paralegals/legal assistants as shown in the 2004 National Utilization and
Compensation Survey published by the National Association of Legal Assistants (NALA)
in October 2004.
After calculating the average of the professional and
paraprofessional/paralegal rates, the USPTO estimates that the hourly rate for
completing the petitions, notices, requests, and other papers will be $197. This is a fullyloaded hourly rate. Table 3, column (e) shows the cost burden to the public for this
collection.

Table 3: Burden Hour/Burden Cost to Respondents
Item

Hours
(a)

Responses
(yr)
(b)

Burden
(hrs/yr)
(c)
(a) x (b)

Rate
($/hr)
(d)

Total Cost
($/hr)
(e)
(c) x (d)

Petition to Cancel

0.75

350

263

$197.00

$51,811.00

Electronic Petition to Cancel

0.75

1,250

938

$197.00

$184,786.00

Notice of Opposition

0.75

1,000

750

$197.00

$147,750.00

Electronic Notice of Opposition

0.75

5,400

4,050

$197.00

$797,850.00

9

Extension of Time to File an Opposition

0.17

600

102

$197.00

$20,094.00

Electronic Request for Extension of Time to File an
Opposition

0.17

19,000

3,230

$197.00

$636,310.00

Papers in Inter Partes Cases
• 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

0.17

9,500

1,615

$197.00

$318,155.00

Electronic Papers in Inter Partes Cases
• Answers
• Amendments to Pleadings
• Amendement 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

0.17

32,500

5,525

$197.00

$1,088,425.00

Notice of Appeal

0.25

900

225

$197.00

$44,325.00

Electronic Notice of Appeal

0.25

2,100

525

$197.00

$103,425.00

Miscellaneous Ex Parte Papers

0.17

4,500

765

$197.00

$150,705.00

Electronic Miscellaneous Ex Parte Papers

0.17

1,900

323

$197.00

$63,631.00

Total

- - - -

79,000

18,311

- - - -

$3,607,267.00

13.

Total Annualized Cost Burden

There are no capital start-up or maintenance costs associated with this information
collection. However, there are postage and recordkeeping costs, as well as filing fees,
associated with this information collection.
Postage Costs
Parties may submit the petitions to cancel, the notices of opposition, the appeals, the
extensions of time to file an opposition, and the additional papers filed in inter partes
and ex parte cases to the USPTO or serve them on the other parties involved in the
proceedings by Express or first-class mail through the United States Postal Service. All
of these papers can also be hand delivered to the TTAB.

10

Using the Express Mail service is beneficial because it establishes the filing date of the
papers. For example, papers that are mailed on the due date are considered to be
timely filed with the TTAB, even if the TTAB receives the paper after the due date, if it
was submitted using the Express Mail service. 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 $16.25 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 for an estimated cost of $19.50. The USPTO estimates that out of 16,850
petitions, notices, extensions, appeals, and additional papers filed, up to 1,011
submissions per year may be mailed to the USPTO and other parties using Express
Mail, for an estimated postage cost of $19,715 per year.
The USPTO believes that 89% of 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 parte proceedings that are filed in paper will be sent by first-class
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 58 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 for an estimated cost of $1.04. The USPTO estimates that out
of 16,850 petitions, notices, extensions, appeals, and additional papers filed, up to
14,997 submissions per year may be mailed to the USPTO and other parties by firstclass mail, for a postage cost of $15,597.
Therefore, the USPTO estimates that the total postage cost for this collection for
filing the various papers with the TTAB and serving copies on the other parties
involved in proceedings before the TTAB using both Express and first-class mail
for this collection is $35,312 per year.
Recordkeeping Costs
The USPTO 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 will take 5 seconds (0.001 hours) to print the
acknowledgment receipt and that 62,150 petitions, notices, extensions, and other
papers will be submitted electronically, for a burden of 62 hours per year. The USPTO
believes that paraprofessionals will print these copies, at a rate of $90 per hour. Using
this rate, the USPTO estimates that the recordkeeping costs will be approximately
$5,580 per year (62,150 petitions x 0.001 hours = 62 hours x $90 = $5,580).

11

Therefore, the USPTO estimates that the total recordkeeping cost for this
collection will be $5,580 per year.
Filing Fees
There is also annual non-hour cost burden in the way of filing fees associated with this
collection. The petitions to cancel and the notices of opposition have filing fees of $300,
while the filing fee for the notices of appeal is $100. These fees are set to recover the
aggregate cost to the USPTO for processing the petitions, oppositions, and appeals.
These fees are per class of identified goods and/or services; therefore the total filing
fees can vary depending on the number of classes involved in a proceeding.
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.
Table 4 shows the annual filing fees for parties filing the petitions to cancel, the notices
of opposition, and the notices of appeal. The total filing fees of $2,700,000 shown
below are the minimum fees associated with this information collection.
Table 4: Filing Fees for the Petitions to Cancel, Oppositions, and Appeals – Nonhour Cost Burden
Item

Responses
(yr)
(a)

Petition to Cancel

Filing Fees
(b)

Total Non-Hour
Cost Burden
(yr)
(a) x (b)

350

$300.00

$105,000.00

Electronic Petition to Cancel

1,250

$300.00

$375,000.00

Notice of Opposition

1,000

$300.00

$300,000.00

Electronic Notice of Opposition

5,400

$300.00

$1,620,000.00

600

$0.00

$0.00

Electronic Request for Extension of Time to File an Opposition

19,000

$0.00

$0.00

Papers in Inter Partes Cases
• 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

9,500

$0.00

$0.00

Extension of Time to File an Opposition

12

32,500

$0.00

$0.00

900

$100.00

$90,000.00

Electronic Notice of Appeal

2,100

$100.00

$210,000.00

Miscellaneous Ex Parte Papers

4,500

$0.00

$0.00

Electronic Miscellaneous Ex Parte Papers

1,900

$0.00

$0.00

79,000

---------------

$2,700,000.00

Electronic Papers in Inter Partes Cases
• 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

Totals

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 $2,740,892 per year.
14.

Annual Cost to the Federal Government

For the most part, personnel employed on a contractual basis process all of the papers
filed in Board proceedings in the paper format. The TTAB staff does not process certain
papers filed in Board proceedings, such as the miscellaneous papers filed in both ex
parte and inter pates proceedings. These papers are processed entirely by contract
personnel. The TTAB staff only partially processes notices of opposition, petitions for
cancellation, and notices of appeal. These papers are processed initially by the
contract personnel. The contract personnel scan each paper listed above into the
electronic application record. The USPTO believes that contract personnel with an
hourly rate comparable to that of a GS-9, step 5 will process these papers, and
estimates that it takes, on average, approximately 4 minutes (0.07 hours) to process
each paper. The hourly rate for a GS-9, step 5, is currently $25. Generally, an
additional 30% of the hourly rate is added to account for a fully loaded rate that covers
both overhead and benefits. Since this work is being performed by contract personnel,
the USPTO will only pay for the overhead costs, not the benefits. Therefore, the
USPTO believes that approximately 15% will be added to the hourly rate. When 15% is
added to account for a hourly rate including overhead, the cost per hour for the contract
personnel is approximately $25 + $3.75 = $28.75.
The TTAB staff process the extensions of time to file an opposition. In addition to the
initial processing performed by the contract personnel, the TTAB staff also processes
the notices of opposition, the petitions for cancellation, and the notices of appeal. The
USPTO believes that a GS-11, step 5 will process these papers and estimates that it

13

takes approximately 10 minutes (0.17 hours) to complete the processing of extensions
of time to file a notice of opposition and 24 minutes (0.40 hours) to complete the
processing of notices of opposition, petitions for cancellation, and notices of appeal.
The hourly rate for a GS-11, step 5 is currently $30.25. When 30% is added to account
for a fully loaded hourly rate (benefits and overhead), the cost per hour for a GS-11,
step 5 is $30.25 + $9.08 = $39.33.
Although the TTAB staff does not process the majority of papers submitted
electronically through ESTTA, they do perform additional processing for 40% of the
electronic notices of opposition and 34% of the electronic notices of appeal. Out of
5,400 notices of opposition and 2,100 notices of appeal filed electronically, TTAB staff
perform additional processing for approximately 2,160 notices of opposition and 714
notices of appeal. The USPTO believes that a GS-11, step 5 will process these papers
and estimates that it takes approximately 24 minutes (0.40 hours) to complete
processing them. The hourly rate for a GS-11, step 5 is currently $30.25. When 30% is
added to account for a fully loaded hourly rate (benefits and overhead), the cost per
hour for a GS-11, step 5 is $30.25 + $9.08 = $39.33.
The TTAB staff does not process the extensions of time to file a notice of opposition,
notices of opposition, petitions to cancel, notices of appeal, and miscellaneous papers
filed in both ex parte and inter partes proceedings submitted electronically through
ESTTA. ESTTA enters the information into the file electronically and then passes the
information to the TTABIS database. This database then processes the information
electronically and updates the appropriate TTABIS application file. In addition, ESTTA
automatically institutes 60% of the notices of opposition and 66% of the notices of
appeal. There is no human intervention at all during this process.
Table 5 calculates the processing hours and costs of this information collection to the
Federal Government.
Table 5: Burden Hour/Burden Cost to the Federal Government
Item

Hours
(a)

Responses
(yr)
(b)

Burden
(hrs/yr)
(c)
(a) x (b)

Rate
($/hr)
(d)

Total Cost
($/hr)
(e)
(c) x (d)

Petition to Cancel

0.07
0.40

350

25
140

$24.23

$606.00
$3,392.00

Electronic Petition to Cancel

0.00

1,250

0

$0.00

$0.00

Notice of Opposition

0.07
0.40

1,000

70
400

$28.75
$39.33

$2,013.00
$15,732.00

Electronic Notice of Opposition

0.40
0.00

2,160
3,240

864
0

$39.33
$0.00

$33,981.00
$0.00

Extension of Time to File an Opposition

0.17
0.40

600

102
240

$28.75
$39.33

$2,933.00
$9,439.00

Electronic Request for Extension of Time to File
an Opposition

0.00

19,000

0

$0.00

$0.00

14

Papers in Inter Partes Cases
• Answers
• Amendments to Pleading
• 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

0.07

9,500

665

$28.75

$19,119.00

Electronic Papers in Inter Partes Cases
• Answers
• Amendments to Pleading
• 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

0

32,500

0

$0.00

$0.00

Notice of Appeal

0.07
0.40

900

63
360

$28.75
$39.33

$1,811.00
$14,159.00

Electronic Notice of Appeal

0.40
0.00

714
1,386

286
0

$39.33
$0.00

$11,248.00
$0.00

Miscellaneous Ex Parte Papers

0.07

4,500

315

$28.75

$9,056.00

0

1,900

0

$0.00

$0.00

- - - - -

79,000

3,530

Electronic Miscellaneous Ex Parte Papers
Total

- - - - -

$123,489.00

Please note that since the previous renewal of this collection, the TTAB has made some
changes in how they process the petitions, notices, requests for extensions, and
miscellaneous papers in ex parte and inter partes cases in this collection. These
changes have made some adjustments to the costs, besides the addition of the
miscellaneous papers in ex parte and inter partes cases submitted in paper format into
this collection, adjustments to the burden estimates, and the annual increases in the
hourly rates for government personnel. There have been changes in who processes
the forms, if the forms need to be processed at all, and changes in the time estimates.
In the previous renewal, TTAB personnel processed all of the information in this
collection, with the exception of the request for extension and the electronic papers in
inter partes cases. For this renewal, it has been determined that the TTAB personnel
no longer process all of this information. Contract personnel working on behalf of the
TTAB now process all of the petitions, notices, extension requests, and miscellaneous
papers that are filed in paper. The petitions to cancel, notices of opposition, extensions
of time, and notices of appeal are processed by both TTAB and contract personnel.

15

TTAB personnel do not process the miscellaneous papers filed in ex parte and inter
partes proceedings; these papers are processed entirely by contract personnel. In the
previous renewal, GS-7 staff processed the petitions to cancel, the notices of
opposition, and the extension request to submit a notice of opposition. It has now been
determined that GS-9 and GS-11 rated personnel process these papers.
In the previous renewal, it was reported that TTAB staff processed the electronic
petition to cancel and the electronic miscellaneous papers filed in ex parte cases.
These papers are no longer processed manually; they are now processed entirely
electronically without human intervention. In the past, all of the notices of opposition
and appeal that were submitted electronically through ESTTA were processed by TTAB
personnel. This is no longer the case. Currently, TTAB personnel process only 40% of
the notices of opposition filed electronically and 34% of the notices of appeal filed
electronically. The rest of the submissions are processed entirely electronically without
human intervention.
The last significant change in how these papers are processed are adjustments in the
processing times for the petitions to cancel, the notices of opposition, the extensions of
time to file an opposition, and the notices of appeal that are filed in paper. In the
previous renewal, these papers were processed entirely by TTAB personnel. Since that
submission, these papers are now processed by both TTAB personnel and contract
personnel working on behalf of the TTAB. This has necessitated adjustments in the
processing estimates for these papers. For the petitions to cancel, the notices of
opposition, and the notices of appeal, these adjustments have been very slight, from a
previous estimate of 30 minutes to the current estimate of 28 minutes. In the case of
the extensions of time, the adjustment has been significant, from the previous estimate
of 6 minutes to the current estimate of 34 minutes.
The USPTO’s total estimated cost for processing the information in this collection
is estimated at $123,489 per year.
15.

Reason for Change in Burden

Summary of Changes Since the Previous Renewal
The OMB approved the renewal for this information collection on September 30, 2004,
with 46,900 responses, 12,505 burden hours, and $2,556,962 in annualized (non-hour)
costs. On August 31, 2005, OMB approved a change worksheet which decreased the
responses to 38,360, the burden hours to 10,315, and the annualized (non-hour) cost
burden to $2,120,658.
With this renewal, the USPTO estimates that the total burden and annualized (nonhour) costs for this collection will be 79,000 responses, 18,311 burden hours, and
$2,740,892 in annualized costs. This is an increase of 40,640 responses, 7,996 burden
hours, and $620,234 in annualized costs over the currently approved burden for this
collection. The increases in the responses and burden hours are due to administrative

16

adjustments, while the increases in the annualized (non-hour) costs are due to both
program changes and administrative adjustments.
Changes in Burden Estimates Since the 60-Day Federal Register Notice
In the 60-Day Federal Register Notice published on May 24, 2007 for this renewal, the
USPTO reported that this collection would have 78,589 responses, 18,566 burden
hours, $3,657,502 in total respondent cost burden, and $2,915,634 in estimated total
annual non-hour respondent cost burden per year.
Since the publication of the 60-Day Federal Register Notice, the USPTO decided that
the estimated estimates for all of the information requirements in this collection should
be readjusted. The USPTO now estimates that this collection will have 79,000
responses, 18,311 burden hours, $3,607,267 in total respondent cost burden, and
$2,740,892 in estimated total annual non-hour respondent cost burden per year.
Overall, the new estimates have increased the number of responses, but decreased the
burden hours, total respondent cost burden, and estimated total annual non-hour
respondent cost burden.
The new estimates adjust the distribution of the estimated responses between the paper
and electronic filings. For the most part, the adjustments have lowered the number of
paper filings and increased the number of electronic filings, with the exception of the
electronic request for extension, where the responses decreased, and the paper
miscellaneous ex parte papers, where the responses increased. Due to these two
exceptions, the overall annual burden hours and total respondent cost burden estimated
in this renewal submission have decreased over those originally reported in the 60-Day
Federal Register Notice, despite the increase in the number of responses.
Despite the overall increase in the number of electronic submissions that the USPTO
now estimates, the agency now believes that the total estimated annual non-hour
respondent cost burden will be less than that originally reported in the 60-Day Notice.
The USPTO believes that the new estimated reductions in the postage costs and filing
fees outlined in this renewal submission will offset the increases in the recordkeeping
costs.
Changes in Respondent Cost Burden
When this collection was previously approved in September 2004, the USPTO
estimated that it took a combined 50/50 level of effort by associate attorneys and
paraprofessionals/paralegals to complete all of the requirements in this collection. The
estimated hourly rate for the associate attorneys was $286, while the estimated hourly
rate for the paraprofessionals/paralegals was $81. The estimated average of these
rates was $183.50 per hour.
The hourly rates for the associate attorneys and paraprofessionals/paralegals have
increased since the last renewal. Based on rates provided by the Committee on

17

Economics of Legal Practice of the American Intellectual Property Law Association, the
estimated hourly billing rate for associate attorneys has increased from $286 to $304.
Based on rates provided by the National Association of Legal Assistants, the estimated
hourly billing rate for paraprofessionals/paralegals has increased from $81 to $90. With
these increases, the USPTO now estimates that the average of these hourly billing
rates is $197.
Since the previous renewal, the USPTO submitted a change worksheet adjusting the
number of responses (and associated costs) for the information collection. The change
worksheet, which was approved in September 2005, decreased the respondent cost
burden by $401,863, from the previously approved burden of $2,294,669 to $1,892,806.
With this renewal submission, the USPTO estimates that the total respondent cost
burden will increase by $1,714,461, from $1,892,806 to $3,607,267 per year.
Changes in Responses and Burden Hours
For this renewal, the USPTO estimates that the annual responses for this collection will
increase by 40,640 responses, from 38,360 to 79,000 responses per year. The USPTO
estimates that the total burden hours for this collection will increase by 7,996 hours,
from 10,315 to 18,311 burden hours per year. These changes are due to administrative
adjustments, as follows:
•

The additional papers that are filed in inter partes cases can be submitted
electronically through ESTTA or they can be filed with the TTAB in paper. The
electronic submissions of these papers are covered in the currently approved
collection. When these papers were made available through ESTTA, the USPTO
believed that the ability to file these papers electronically would eliminate the need
for paper filings. The USPTO has determined that although the number of paper
filings is decreasing in favor of electronic filings, there are still a substantial number
of these documents being submitted in paper. Since the TTAB is still receiving
paper submissions of these documents, the USPTO is taking this opportunity to add
the paper submissions of the inter partes papers into the collection. The USPTO
estimates that 9,500 papers in inter partes proceedings will be filed per year in
paper. The USPTO estimates that it will take 10 minutes to complete these
submissions, adding 1,615 hours per year to the USPTO’s inventory. Therefore,
this collection takes a net burden increase of 1,615 hours per year as an
administrative adjustment.

•

The miscellaneous papers that are filed in ex partes cases can be submitted
electronically through ESTTA or they can be filed with the TTAB in paper. The
electronic submissions of these papers are covered in the currently approved
collection. When these papers were made available through ESTTA, the USPTO
believed that the ability to file these papers electronically would eliminate the need
for paper filings. The USPTO has determined that although the number of paper
filings is decreasing in favor of electronic filings, there are still a substantial number
of these documents being submitted in paper. Since the TTAB is still receiving

18

paper submissions of these documents, the USPTO is taking this opportunity to add
the paper submissions of the miscellaneous papers in ex parte cases into the
collection. The USPTO estimates that 4,500 papers in ex parte cases will be filed
per year in paper. The USPTO estimates that it will take 10 minutes to complete
these submissions, adding 765 hours per year to the USPTO’s inventory.
Therefore, this collection takes a net burden increase of 765 hours per year as
an administrative adjustment.
•

The USPTO believes that the public will file fewer petitions to cancel, notices of
opposition, extensions of time to file an opposition, and notices of appeal in paper
since this information can be submitted electronically through ESTTA. The USPTO
estimates that the number of petitions, notices, and extensions filed in paper will
decrease by 6,000 responses per year, from 8,850 responses to 2,850 responses.
The USPTO believes that this in turn will reduce the burden for this collection by
2,175 hours per year, from 3,515 hours to 1,340 hours. Therefore, this collection
takes a net burden decrease of 2,175 hours per year as an administrative
adjustment.

•

The USPTO believes that more filers will choose to submit their petitions to cancel,
notices of opposition, extensions of time to file an opposition, papers in inter partes
cases, notices of appeal, and miscellaneous ex parte papers electronically rather
than filing them in paper. The USPTO estimates that the number of petitions,
notices, extensions, and additional papers in ex parte and inter partes cases filed
electronically will increase by 32,640 responses per year, from 29,510 responses to
62,150 responses. The USPTO estimates that this in turn will increase the burden
for this collection by 7,791 hours per year, from 6,800 hours to 14,591 hours.
Therefore, this collection takes a net burden increase of 7,791 hours per year
as an administrative adjustment.

The USPTO estimates that the total net burden for this collection will increase by 7,996
hours per year, from 10,315 hours to 18,311 hours per year. In total, the USPTO
estimates that 10,171 hours will be added to the collection, but this will be offset by a
reduction of 2,175 hours, for a total net burden increase of 7,996 hours resulting from
administrative adjustments. In sum, this information collection has a net burden
increase of 7,996 hours per year resulting from administrative adjustments.
Changes in Annual (Non-Hour) Costs
For this renewal, the USPTO estimates that the annual (non-hour) costs for this
collection will increase by $620,234, from $2,120,658 to $2,740,892 per year. This
change is due to both program changes and administrative adjustments, as follows:
•

Although more filers are choosing to submit their petitions, notices, extensions, and
additional papers in ex parte and inter partes cases electronically through ESTTA,
the USPTO believes that the first-class postage fees for this collection will increase
by $11,477 per year, from $4,120 to $15,597. This increase is due partly to

19

increased postage costs, which have offset the decrease in the number of paper
copies filed. Additional postage costs were also added into the collection at this time
to account for respondents serving copies of their petitions, notices, extensions, and
additional papers in inter partes and ex parte cases on the other parties involved in
proceedings before the TTAB. These costs were overlooked in the previous
submission. In total, the USPTO estimates that the increased postage costs and the
additional postage to cover serving papers on others involved in the proceedings
add a total $10,924 in annual (non-hour) costs to the collection due to administrative
adjustments. While researching the requirements for service of papers, it was
discovered that the TTAB recently made procedural and rule changes that affected
the service of copies. Originally, filers who submitted petitions to cancel or notices
of opposition did not have to serve copies of these papers because the TTAB would
mail copies to the parties involved in the proceedings. This has been changed,
however, so respondents are responsible for serving copies of the petitions to cancel
and the notices of opposition as well. The USPTO estimates that this change will
add $553 in annual (non-hour) costs to the collection as a program change.
Therefore, this collection has a net total increase of $11,477 in first-class
postage costs, with $553 due to program changes and $10,924 due to
administrative adjustments.
•

The USPTO also believes that the postage costs for submitting the petitions to
cancel, notices of opposition, extensions of time to file an opposition, notices of
appeal, and the additional papers in inter partes and ex parte proceeding to the
USPTO using Express Mail will increase, even though the paper filings are
decreasing in favor of electronic filing. The USPTO estimates that the express mail
costs for this collection will increase by $13,682, from $6,033 to $19,715. The
USPTO believes that a greater percentage of applications will be submitted using
Express Mail than previously, and that, coupled with increased postage rates for
Express Mail, have increased the costs. Additional costs to account for respondents
serving copies of their papers on other parties involved in the proceeding were also
added to the Express Mailing costs. In total, the USPTO estimates that the
increased postage cost, the additional postage to cover serving papers on others,
and the increased filings submitted using Express Mail add a total of $13,419 in
annual (non-hour) costs to the collection due to administrative adjustment. Any
petitions to cancel and notices of opposition that are submitted using Express Mail
have to be served on the other parties involved in proceedings as well. The USPTO
estimates that serving these copies will add $263 in annual (non-hour) costs to the
collection as a program change. Therefore, this collection has a net total
increase of $13,682 in Express Mail costs, with $263 due to program changes
and $13,419 due to administrative adjustments.

•

The USPTO strongly advises that applicants filing their papers electronically through
ESTTA keep a copy of the acknowledgment receipt as evidence that the file was
received by the USPTO. The USPTO believes that the recordkeeping costs for this
collection will increases because of estimated increases in the electronic filings.
However, this increase will be offset due to a reestimate of the hourly rate from

20

$183.50 to $90. The USPTO estimates that the recordkeeping costs will increase by
$75 per year, from $5,505 to $5,580. Therefore, this collection has a net total
increase of $75 in recordkeeping costs due to administrative adjustments.
•

The USPTO believes that the filing fees for this collection will increase due to the
increases in the electronic filings. The USPTO estimates that the filing fees for this
collection will increase by $595,000 per year, from $2,105,000 to $2,700,000.
Therefore, this collection has a net total increase of $595,000 in filing fees due
to administrative adjustments.

The USPTO estimates that this submission will increase the total net burden in annual
(non-hour) costs for this collection by $619,891. The USPTO estimates that $816 will
be added to this collection as a result of program changes and that $619,075 will be
added as a result of administrative adjustment. In sum, this information collection
has a total net burden increase of $619,891 in annual (non-hour) costs, due to
increases of $816 in program changes and $619,075 in administrative
adjustments.
16.

Project Schedule

There is no plan to publish this information for statistical use.
17.

Display of Expiration Date of OMB Approval

The forms in this information collection will display the OMB Control Number and the
OMB expiration date.
18.

Exception to the Certificate Statement

This collection of information does not include any exceptions to the certificate
statement.
B.

COLLECTIONS OF INFORMATION EMPLOYING STATISTICAL METHODS

This collection of information does not employ statistical methods.

21