0651-0055 SupStmt Jul 2011 final

SUPPORTING STATEMENT
United States Patent and Trademark Office
Proposed Addition to
Post Registration (Trademark Processing)
OMB CONTROL NUMBER 0651-0055
(July 2011)

A.

JUSTIFICATION

1.

Necessity of Information Collection

This collection of information is required by 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 United States Patent and
Trademark Office (USPTO).
Such individuals and businesses may also submit various communications to the
USPTO, including requests to correct or amend their registrations. Registered marks
remain on the register for ten years and can be renewed, but will be cancelled unless
the owner files with the USPTO a declaration attesting to the continued use (or
excusable non-use) of the mark in commerce within specific deadlines. Applicants may
also surrender a registration and, in limited situations, petition the Director to reinstate a
registration that has been cancelled or expired.
This package is being submitted in support of a notice of proposed rulemaking,
“Changes in Requirements for Specimens and for Affidavits or Declarations of
Continued Use or Excusable Nonuse in Trademark Cases” (RIN 0651-AC49). The
USPTO proposes to revise the Trademark Rules of Practice (37 CFR Part 2) and the
Rules of Practice for Filings Pursuant to the Madrid Protocol (37 CFR Part 7) to provide
for the USPTO to require: (1) any information, exhibits, and affidavits or declarations
deemed reasonably necessary to (a) examine an affidavit or declaration of continued
use or excusable nonuse in trademark cases, or (b) for the USPTO to assess the
accuracy and integrity of the register; and (2) upon request, more than one specimen in
connection with a use-based trademark application, an allegation of use, an amendment
to a registered mark, or an affidavit or declaration of continued use in trademark cases.
In support of this proposed rulemaking, the USPTO is submitting this information
collection to introduce the following new information requirements:
•
•

Response to Office Action for Post-Registration Matters (TEAS Global)
Response to Office Action for Post-Registration Matters (Paper)

The Trademark Act gives the Director discretion regarding the number of specimens to
require, 15 U.S.C. §§ 1051(a)(1) and (d)(1), 1058(b)(1)(C) and 1141k(b)(1)(C).
However, the current Trademark Rules of Practice and Madrid Rules mandate the
submission of only one specimen per class in connection with use-related filings. See
37 CFR 2.34(a)(1)(iv), 2.56(a), 2.76(b)(2), 2.88(a)(3) and (b), 2.88(b)(2), 2.161(g), and
7.37(g). Similarly, the current rules require only one specimen to be submitted in
connection with the amendment to a registered mark. See 37 CFR 2.173(b)(3). In
addition, although the current Trademark Rules of Practice allow the USPTO to require
additional information or exhibits deemed reasonably necessary to the examination of a
pending application (37 CFR 2.61(b), no counterpart rule exists in the post-registration
context to facilitate proper examination of an affidavit or declaration of continued use or
excusable nonuse.
To ensure that the USPTO may properly examine amendments, affidavits, or
declarations, and the nature and veracity of the use claimed therein, additional
specimens or other information or exhibits, such as a photograph of the mark appearing
on certain goods, may be needed. Accompanying affidavits or declarations to verify
information or exhibits may also be needed. One purpose of the proposed rule is to
ensure that the USPTO can require of trademark applicants or registrants any additional
specimens or other information, exhibits, and affidavits or declarations necessary to
properly examine an applicant’s or registrant’s claim to be using the mark. Also, the
USPTO wishes to ensure its ability to have such requirements as part of a project to
assess and improve the accuracy and integrity of the register. Another purpose of the
rule is to harmonize the requirements that can be made as part of the examination of
use allegations made in post-registration maintenance documents with the requirements
currently authorized in the examination of use allegations made prior to registration.
The USPTO estimates that requirements for additional specimens or other evidence of
use would issue in a small subset of cases, approximately 3,165. Thus, the impact of
the proposed rule would be minimal.
In support of the proposed rule, the USPTO is also proposing to include two new items
in the inventory at this time, one of which takes into account a new method of electronic
submission of information for which a dedicated Trademark Electronic Application
System (TEAS) form is not yet available (i.e., “Global Forms”). The TEAS Global
Forms are an interim workaround as the USPTO develops additional specific TEAS
forms covering items that are currently collected only in paper. A Global Form will allow
the user to submit documents electronically by identifying a document type through a
drop-down list, entering text in a free-text box, and attaching files in JPG or PDF format.
This allows for electronic filing of documents for which there is not currently a dedicated
TEAS form.
Table 1 identifies the statutory and regulatory provisions pursuant to which the USPTO
collects the information:

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Table 1: Information Requirements for Proposed Addition to Post Registration (Trademark
Processing)
Requirement
Response to Office Action for Post-Registration Matters

2.

Statute
15 U.S.C. §§ 1057-1059

Rule
37 CFR Part 2, 2.160, 2.161, 2.163,
2.164, 2.168, 2.173, and 2.175

Needs and Uses

The USPTO uses the information described in this collection to process postregistration submissions. The proposed rule will ensure that the USPTO may properly
examine post-registration amendments, affidavits, or declarations, and the nature and
veracity of the use claimed therein. There is one electronic form associated with this
rulemaking.
The information in this collection is a matter of public record and is used by the public
for a variety of private business purposes related to establishing and enforcing
trademark rights. The information is available at USPTO facilities, and also can be
accessed at the USPTO Web site. Additionally, the USPTO provides the information to
other entities, including Patent and Trademark Depository Libraries (PTDLs). The
PTDLs maintain the information for use by the public.
Apart from the substantive components and burden statements, the TEAS forms also
include a link to the USPTO’s Web Privacy Policy. This “Privacy Policy Statement” link
is located above the PRA burden statement found at the end of the “Wizard” and at the
end of the forms themselves. The 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.
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 this information collection and its supporting statement
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.
Table 2 lists the information identified in this collection and explains how this information
is used by the public and by the USPTO:

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Table 2: Needs and Uses of Post Registration (Trademark Processing)
Form and Function

Form #

Response to Office Action for PostRegistration Matters
(TEAS Global)
(Ref. B)

TEAS Global
Form

Response to Office Action for PostRegistration Matters
(Paper)

No Form
Associated

Needs and Uses
•
•

•
•

3.

Used by the public to respond to an Office action that a postregistration examiner has issued or pay an additional fee
related to a post-registration matter.
Used by the USPTO to collect information that the registrant
did not supply in the original post-registration maintenance or
amendment documents and that the USPTO needs to
complete the review of these documents or to run quality
assurance projects for the register.
Used by the public to respond to an Office action that a postregistration examiner has issued or pay an additional fee
related to a post-registration matter.
Used by the USPTO to collect information that the registrant
did not supply in the original post-registration maintenance or
amendment documents and that the USPTO needs to
complete the review of these documents or to run quality
assurance projects for the register.

Use of Information Technology

The USPTO currently offers four IT systems in support of this collection that are
accessible through the online Trademark Electronic Business Center (TEBC). The
TEBC provides descriptions of the systems, and the systems feature online “help”
programs. Thus, the USPTO offers the public a single source for a variety of IT
systems useful both for making submissions to the USPTO and for tracking the status of
these submissions.
The USPTO provides online electronic forms through the web-accessible Trademark
Electronic Application System (TEAS). Once completed, TEAS forms are transmitted to
the USPTO via the Internet. The TEAS forms include “help” instructions, as well as a
“Form Wizard” that tailors the form to the particular characteristics of the application or
registration in question, based on responses provided by the user to questions posed by
the “Wizard.” The forms filed are received within seconds after transmission, and a
confirmation of filing is immediately issued via e-mail to the user.
Users do not affix digital signatures to the TEAS forms. Instead, these forms are signed
using a combination of alphanumeric characters that the user selects and types
between two forward slashes. TEAS forms can be signed in this manner, or the text
form of the application can be e-mailed to a second party who can then electronically
sign the application. The forms can also be signed by printing the signature page of the
form, signing it in ink, scanning the signed page, and then transmitting the entire form
and scanned signature page to the USPTO.
The USPTO maintains an online image database of the electronic trademark application
or registration file wrapper entitled the Trademark Document Retrieval (TDR) system.
The USPTO also maintains an online system called the Trademark Application and
Registration Retrieval (TARR) system, which provides users with information regarding
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0651-0055 Jul 2011 RIN 0651-AC49

the status of trademark applications and registrations. The data in the TARR system is
updated daily.
The USPTO provides a web-based record of registered marks, and marks for which
applications for registration have been submitted, called the Trademark Electronic
Search System (TESS). TESS can be used by potential applicants for trademark
registration to assist in the determination of whether or not a particular mark may be
available. The data in TESS is identical to the data reviewed by examining attorneys at
the USPTO in their determination of 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.
The Trademark Reporting and Monitoring (TRAM) System is also maintained by the
USPTO. This system is an internal USPTO database only and provides support to all
facets of Trademark operations. TRAM supports Trademark operations from the receipt
of a new application in the USPTO, through processing and examination of the
application, and into the post-registration activities required to maintain registered
trademarks.
Bibliographic data in TRAM for pending applications and active
registrations is updated on a real-time basis. The TRAM System maintains current
location and status information on applications and registrations. Data is received in an
electronic format that permits expedited transfer to TRAM, thereby reducing processing
steps and improving the reliability and quality of the data that is transferred.
Please note that electronic forms can only be submitted via TEAS; filers may not e-mail
their own forms to the USPTO. Additionally, filers who submit drawings of marks that
are not “standard character” drawings must attach digitized images of these drawings to
their submissions.
There is a new method of electronic submission of information for which a dedicated
TEAS form is not yet available (i.e., “Global Forms”). The TEAS Global Forms are an
interim workaround as the USPTO develops additional specific TEAS forms covering
items that are currently collected only in paper. A Global Form will allow the user to
submit documents electronically by identifying a document type through a drop-down
list, entering text in a free-text box, and attaching files in JPG or PDF format. This
method allows for electronic filing of documents for which there is not currently a
dedicated TEAS form.
4.

Efforts to Identify Duplication

This collection does not solicit any data already available at the USPTO. The
information consists basically of a registrant’s response to a requirement for additional
specimens or other information, exhibits, and affidavits or declarations necessary to
properly examine the registrant’s claim to be using the mark. This collection does not
create a duplication of effort.

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5.

Minimizing the Burden to Small Entities

The same information is required from every customer regardless of entity size, 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 in connection with the examination of post registration maintenance
documents for which statutory filing deadlines exist. If the information were not
collected, the public would not be able to submit a Response to Office Action for PostRegistration Matters. If this information were not collected, the USPTO could not
comply with the requirements of the Trademark Act under 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 USPTO will be forwarding a notice of proposed rulemaking, entitled “Changes in
Requirements for Specimens and for Affidavits or Declarations of Continued Use or
Excusable Nonuse in Trademark Cases” (RIN 0651-AC49), to the Federal Register for
publication.
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.
9.

Payment or Gifts to Respondents

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

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10.

Assurance of Confidentiality

Trademark applications and registrations are open to public inspection. The information
collected from the registrant in response to Office Actions is available for inspection by
the public. Confidentiality is not required in the processing of this 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 3,165 responses per year for
this proposed addition, with 1,899 of them filed electronically.

•

Burden Hour Calculation Factors
The USPTO estimates that it will take the public an average of 20 to 23 minutes (0.335
to 0.383 hours) 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 form.

•

Cost Burden Calculation Factors
The professional rate of $325 per hour used in this submission to calculate respondent
cost burden is the median rate for attorneys in private firms as published in the 2009
report of the Committee on Economics of Legal Practice of the American Intellectual
Property Law Association. This report summarized the results of a survey with data on
hourly billing rates. This is a fully-loaded hourly rate.
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 Proposed Addition to Post Registration
(Trademark Processing)
Item

Hours
(a)

Responses
(yr)
(b)

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

Rate
($/hr)
(d)

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

Response to Office Action for Post-Registration Matters
(TEAS Global)

0.335

1,899

636

$325.00

$206,700.00

Response to Office Action for Post-Registration Matters
(Paper)

0.383

1,266

484

$325.00

$157,300.00

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Item

Hours
(a)

Total

- - - -

Responses
(yr)
(b)

Rate
($/hr)
(d)

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

3,165

1,120

- - - -

Total Cost
($/hr)
(e)
(c) x (d)
$364,000.00

The proposed addition to this information collection, plus the approved burden in the
current inventory, will result in the total burden estimates shown below:
Current inventory responses = 127,136
Current inventory burden hours = 17,466
Current inventory burden hour costs = $5,414,460
Impact on responses due to the proposed addition = increase of 3,165
Impact on burden hours due to the proposed addition = increase of 1,120
Impact on burden hour costs due to the proposed addition = increase of $364,000
Total estimated responses after the proposed addition = 130,301
Total estimated burden hours after the proposed addition = 18,586
Total estimated burden hour costs after the proposed addition = $5,778,460
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 1,266 submissions are made via first class mail with a postage
cost of 44 cents. Therefore, a total estimated mailing cost of $557 is incurred for this
collection.
Table 4 calculates the postage costs for this collection of information:
Table 4: Postage Costs for Proposed Addition to Post Registration (Trademark Processing)
Item

Responses
(yr)
(a)

Postage Costs
(b)

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

Response to Post-Registration Office Action (Paper)

1,266

$0.44

$557.00

Total

1,266

- - - - -

$557.00

In sum, the total annual non-hour cost burden for this proposed addition in the form of
postage costs amounts to $557. When added to the previously approved burden for
this collection of $41,793,757, the total annual (non-hour) costs for this collection would
be $41,794,314.

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Currently approved annual (non-hour) costs = $41,793,757
Impact due to the proposed addition = increase of $557
Total estimated annual (non-hour) costs after the proposed addition = $41,794,314

14.

Annual Cost to the Federal Government

The USPTO estimates that it takes a GS-7, step 5 employee between 12 and 15
minutes (0.20 and 0.25 hours) to process the information in this collection. The hourly
rate for a GS-7, step 5, is currently $22.92. When 30% is added to account for a fullyloaded hourly rate (benefits and overhead), the rate per hour for a GS-7, step 5
employee, is $29.80 ($22.92 + $6.88).
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 Proposed Addition to Post
Registration (Trademark Processing)
Item

Hours
(a)

Responses
(yr)
(b)

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

Rate
($/hr)
(d)

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

Response to Office Action for Post-Registration
Matters (TEAS Global)

0.200

1,899

380

$29.80

$11,324.00

Response to Office Action for Post-Registration
Matters (Paper)

0.250

1,266

317

$29.80

$9,447.00

- - - - -

3,165

697

- - - - -

$20,771.00

Total

Current government cost burden = $295,053
Impact due to the proposed addition = increase of $20,771
Total estimated government cost burden after the proposed addition = $315,824
15.

Reason for Change in Burden

This information collection is currently approved by OMB with a total of 127,136
responses and 17,466 burden hours per year. Due to the proposed addition, the
USPTO estimates that the total annual responses will be 130,301 and the annual
burden hours will amount to 18,586, which is an increase of 3,165 responses and 1,120
burden hours from the currently approved burden for this collection. This burden
increase is due to a program change resulting from the addition of two new items.
There is no change for the remaining items in this collection. Therefore, this
information collection would have a total burden increase of 1,120 hours due to
program changes.
This collection was previously approved with an estimated respondent cost burden of
$5,414,460. The changes in the final rulemaking would increase the cost burden by

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$364,000 due to the addition of two new items, increasing the respondent cost burden
to $5,778,460.
For this proposed addition, the USPTO estimates that the total annual (non-hour) costs
will increase by $557, from $41,793,757 to $41,794,314 per year. This increase is due
to the addition of postage costs as a result of the proposed rulemaking. Therefore, this
collection has an increase in annual (non-hour) cost burden of $557 as a program
change.
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.
B.

USPTO Information Quality Guidelines
Response to Office Action for Post-Registration Matters (TEAS Global Form)

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