00xx Just Trademark Petitions

SUPPORTING STATEMENT
United States Patent and Trademark Office
Trademark Petitions
OMB CONTROL NUMBER 0651-00xx

A.

JUSTIFICATION

1.

Necessity of Information Collection

The United States Patent and Trademark Office (USPTO) administers the Trademark
Act, 15 U.S.C. § 1051 et seq., which provides for the registration of trademarks, service
marks, collective trademarks and collective service marks, collective membership
marks, and certification marks. Individuals and businesses that use or intend to use
such marks in commerce may file an application to register their marks with the USPTO.
Individuals and businesses may also submit various communications to the USPTO,
including letters of protest and requests to make special.
A letter of protest is an informal procedure whereby third parties who object to the
registration of a mark in a pending application may submit evidence relevant to the
registrability of the mark to the attention of the USPTO. A letter of protest should
include an explanation of which application is being protested and relevant evidence to
support the protest.
A request to make special may be submitted where an applicant’s prior registration for
the same mark on the same goods and/or services was cancelled due to the inadvertent
failure to file a post registration maintenance document and should include an
explanation of why special action is appropriate.
The USPTO is proposing to include these two items in the inventory at this time
because of a new method of submission in a “global format” that would standardize
some formatting involving the electronic collection of this information. Both of these
items are covered under 15 U.S.C. § 1051.
Table 1 identifies the proposed statutory and regulatory provisions that require the
USPTO to collect this information:
Table 1: Information Requirements for Trademark Petitions
Requirement

Statute

Rule

Letter of Protest

15 U.S.C. § 1051

37 CFR 2.146

Request to Make Special

15 U.S.C. § 1051

37 CFR 2.146

2.

Needs and Uses

The USPTO uses the information described in this collection to process letters of
protest and requests to make special. The information is used by the public for a variety
of private business purposes related to establishing and enforcing trademark rights.
Information relating to the registration of a trademark is made publicly available by the
USPTO. The release of information in a letter of protest is controlled and may be
available upon request only.
The Information Quality Guidelines set forth in 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.,
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.
Table 2 lists the information identified in this collection and explains how this information
is used by the public and by the USPTO:
Table 2: Needs and Uses of Trademark Petitions
Form and Function
TEAS Letter of Protest

Form #
No Form
Associated

Needs and Uses
•
•

Letter of Protest

No Form
Associated

•
•

TEAS Request to Make Special

No Form
Associated

•
•

Request to Make Special

No Form
Associated

•
•

3.

Used by the public to electronically submit an objection
regarding a pending application.
Used by the USPTO to decide whether the protest should be
granted.
Used by the public to submit an objection regarding a pending
application.
Used by the USPTO to decide whether the protest should be
granted.
Used by applicants to electronically submit a request that an
application be examined expeditiously in those cases where a
formal petition is not required.
Used by the USPTO to act upon a request to make special.
Used by applicants to submit a request that an application be
examined expeditiously in those cases where a formal petition
is not required.
Used by the USPTO to act upon a request to make special.

Use of Information Technology

The USPTO provides electronic forms for filing many submissions through the
Trademark Electronic Application System (TEAS), which is accessible via the USPTO
web site. The forms filed are received within seconds after transmission, and a
confirmation of filing is immediately sent to the user by e-mail.

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Electronic forms do not currently exist for all possible types of trademark submissions to
the USPTO. Filers may not email their own forms to the USPTO. In order to provide
filers with many of the benefits of electronic filing for a submission where a true
electronic form does not currently exist within TEAS, the USPTO is creating a new type
of submission in a “global format.” This new method of submission will allow the user to
identify the type of document being filed by selecting from a drop-down list and then
uploading a document in either the JPG or PDF format containing the matter being filed.
Using this approach will provide the same benefits of a “regular” TEAS filing, namely,
electronic confirmation of receipt at the USPTO; entry of the appropriate prosecution
history label in the Trademark Reporting and Monitoring (TRAM) database (viewable
externally in the Trademark Application and Registration Retrieval (TARR) system);
upload for viewing in the Trademark Document Retrieval (TDR) system; and automatic
routing to the proper work unit. However, such filings will not result in the automated
upload of data into the USPTO databases, which is one of the primary benefits of true
electronic filing, i.e., an actual TEAS form relies on tagged data elements that permit
direct upload of data absent manual intervention, thereby avoiding data entry errors. If
a specific TEAS form is developed and placed in production, then that option would be
removed entirely from the pull-down list of the global form, and only true electronic filing
would then be possible for that form.
The USPTO maintains an online database called Trademark Document Retrieval
(TDR), which features images of each document that make up the “electronic file
wrapper” of a particular trademark application or registration. Currently images of
virtually all pending trademark applications are present in TDR, and TDR also features
images of many trademark registration files. Over time, the USPTO will upload images
of the files of all live trademark registrations into TDR. Another online record system
provided by the USPTO is the Trademark Application and Registration Retrieval (TARR)
system, which provides users with information regarding the status of trademark
applications and registrations. The data in the TARR system is updated daily.
In addition to providing a system that allows the electronic transmission of trademark
submissions, the USPTO also provides the public with online access to various
trademark records. One such online product is the Trademark Electronic Search
System (TESS), a web-based record of registered marks and marks for which
applications for registration have been submitted. Potential applicants for trademark
registration can use TESS to assist in the determination of whether a particular mark
may be available. The data in TESS is identical to the data reviewed by examining
attorneys at the USPTO when determining whether marks for which registration is
sought are confusingly similar to marks in existing registrations or to marks in pending
applications for registration. TESS allows for the user to choose from four different
search tools, is updated daily, and is easy to use.
These systems are all accessible through the Trademark Electronic Business Center
(TEBC) on the USPTO web site. The TEBC provides descriptions of the systems, and
the systems feature online “help” programs. Thus, the USPTO offers a single source for
a variety of systems useful both for making submissions to the USPTO and for tracking
the status of these submissions.
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4.

Efforts to Identify Duplication

This information is collected only when letters of protest and requests to make special
are submitted to the USPTO. This collection does not solicit any data already available
at the USPTO. This collection does not create a duplication of effort.
5.

Minimizing the Burden to Small Entities

The USPTO believes that the submission of the information provided places no undue
burden on small business or other small entities. The same information is required from
every customer and is not available from any other source.
6.

Consequences of Less Frequent Collection

This information collection could not be conducted less frequently, since the information
is collected only when voluntarily submitted by the public. If the information were not
collected, the public would not be able to submit letters of protest or requests to make
special and the USPTO could not comply with the requirements of the Trademark Act
15 U.S.C. § 1051 and 37 CFR Part 2.
7.

Special Circumstances in the Conduct of Information Collection

There are no special circumstances associated with this collection of information.
8.

Consultation Outside the Agency

The 60-Day Notice was published in the Federal Register on May 18, 2009 (74 Fed
Reg. 23168). The public comment period ended on July 17, 2009. No public comments
were received.
Large and well-organized bar associations frequently communicate their views to the
USPTO. Also, the Trademark Public Advisory Committee (T-PAC) was created by the
American Inventors Protection Act of 1999 to advise the Director of the USPTO on the
agency’s operations, including its goals, performance, budget, and user fees. T-PAC
includes 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. Members include inventors,
lawyers, corporate executives, entrepreneurs, and academicians with significant
experience in management, finance, science, technology, labor relations, and
intellectual property issues. The members of T-PAC reflect the broad array of USPTO’s
stakeholders and embrace the USPTO’s e-government initiative. 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. Additional feedback
solicited through the USPTO-monitored mailbox of [email protected] helped the
USPTO determine that its customers were very interested in the “global format”
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approach to help bridge the gap where true electronic forms have yet to be developed.
Again, the global format, while not quite as beneficial to the USPTO as a true TEAS
form, will nonetheless provide many advantages to both the applicant and the USPTO.
9.

Payment or Gifts to Respondents

This information collection does not involve a payment or gift to any respondent.
10.

Assurance of Confidentiality

The initial trademark applications and registrations are open to public inspection.
Confidentiality is not required in the processing of this information.
The USPTO Web Privacy Policy Statement explains how the USPTO handles any
personal information collected from the public through the web site, and how it handles
e-mails. Additionally, the statement also explains what information is collected through
the USPTO’s Kids Pages, and whether and why the USPTO uses cookies to collect
information.
11.

Justification for Sensitive Questions

None of the required information in this collection is considered to be of a sensitive
nature.
12.

Estimate of Hour and Cost Burden to Respondents

Table 3 calculates the anticipated burden hours and costs of this information collection
to the public, based on the following factors:
•

Respondent Calculation Factors
The USPTO estimates that it will receive approximately 953 responses per year for this
collection, with 477 of them filed electronically.

•

Burden Hour Calculation Factors
The USPTO estimates that it will take the public an average of 30 minutes (0.50 hours)
to one hour to complete the collections of information described in this submission,
depending on the nature of the information. This includes time to gather the necessary
information, create the documents, and mail the completed paper request. The time
estimates shown for the electronic forms in this collection are based on the average
amount of time needed to complete and electronically file the associated information.

•

Cost Burden Calculation Factors
The professional rate of $310 per hour used in this submission to calculate respondent
cost burden is the median rate for associate attorneys in private firms as published in the
2007 report of the Committee on Economics of Legal Practice of the American
Intellectual Property Law Association (AIPLA). This report summarized the results of a
survey with data on hourly billing rates. This is a fully-loaded hourly rate.

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The USPTO expects that the information in this collection will primarily be prepared by
attorneys, although some submissions may be prepared by pro se registrants.
Table 3: Burden Hour/Burden Cost to Respondents for Trademark Petitions
Item

Hours (a)

Responses
(yr)
(b)

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

Rate
($/hr)
(d)

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

TEAS Letter of Protest

0.83

463

384

$310.00

$119,040.00

Letter of Protest

1.00

462

462

$310.00

$143,220.00

TEAS Request to Make Special

0.50

14

7

$310.00

$2,170.00

Request to Make Special

0.67

14

9

$310.00

$2,790.00

Total

- - - -

953

862

- - - -

$267,220.00

13.

Total Annualized Non-hour Cost Burden

There are no capital start-up, maintenance, or record keeping costs, nor are there filing
fees. There is, however, non-hour cost burden in the way of postage costs.
Applicants and registrants incur postage costs when submitting non-electronic
information to the USPTO by mail through the United States Postal Service. The
USPTO estimates that 476 submissions are made via first class mail. First class
postage is 44 cents. Therefore, a total estimated mailing cost of $209 is incurred for
this collection.
Table 4 calculates the postage costs for this collection of information:
Table 4: Postage Costs for Trademark Petitions
Item

Responses
(yr)
(a)

Postage Costs
(b)

Total Cost
(yr)
(a) x (b)

TEAS Letter of Protest

463

$0.00

$0.00

Letter of Protest

462

$0.44

$203.00

TEAS Request to Make Special

14

$0.00

$0.00

Request to Make Special

14

$0.44

$6.00

953

- - - - -

$209.00

Total

In sum, the total annual non-hour cost burden for this collection in the form of postage
costs is $209.

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14.

Annual Cost to the Federal Government

The USPTO estimates that it takes a GS-14, step 5, 20 minutes (0.33 hours) to process
the Letter of Protest and a GS-12, step 5, 20 minutes (0.33 hours) to process the
Request to Make Special whether they are submitted on paper or in TEAS.
The hourly rate for a GS-14, step 5 is currently $55.78. When 30% is added to account
for a fully loaded hourly rate (benefits and overhead), the cost per hour is $72.51
($55.78 + $16.73).
The hourly rate for a GS-12 step 5 is currently $39.70. When 30% is added to account
for a fully loaded hourly rate (benefits and overhead), the cost per hour is $51.61
($39.70 + $11.91).
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 for Trademark Petitions
Item

Hours
(a)

Responses
(yr)
(b)

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

Rate
($/hr)
(d)

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

TEAS Letter of Protest

0.33

463

153

$72.51

$11,094.00

Letter of Protest

0.33

462

152

$72.51

$11,022.00

TEAS Request to Make Special

0.33

14

5

$51.61

$258.00

Request to Make Special

0.33

14

5

$51.61

$258.00

953

315

- - - - -

$22,632.00

Total

15.

- - - - -

Reason for Change in Burden

The USPTO is requesting that OMB add this new information collection to the agency’s
information collection inventory. The USPTO is submitting this new information
collection request as a result of a program change due to a new method of submission
in a “global format” that will standardize some formatting involving the electronic
collection of this information.
The USPTO estimates that it will receive 953 responses from this collection annually
and that the associated burden will be 862 hours per year. Therefore, an additional
862 burden hours per year will be added to the USPTO’s current information
collection inventory as a program change.
There is non-hour cost burden in the form of postage costs associated with this
information collection, which amounts to $209 per year. Therefore, an additional $209
per year in the way of non-hour cost burden will be added to the USPTO’s current
information collection inventory as a program change.

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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
date on which OMB’s approval of this information collection expires.
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.

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REFERENCES
A.

USPTO Information Quality Guidelines

9