0651-0050 SupStmt Apr 2011

SUPPORTING STATEMENT
United States Patent and Trademark Office
Response to Office Action and Voluntary Amendment Forms
(formerly Electronic Response to Office Action
and Preliminary Amendment Forms)
OMB CONTROL NUMBER 0651-0050
(April 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 Federal registration of trademarks, service marks, collective
trademarks and service marks, collective membership marks, and certification marks.
Individuals and businesses that use such marks, or intend to use such marks, in
interstate commerce may file an application to register their marks with the United
States Patent and Trademark Office (USPTO). In some cases, the USPTO issues
Office Actions to applicants who have applied for a trademark application, requesting
additional information that was not provided with the initial submission but is required
before the issuance of a registration. Also, the USPTO may determine that the mark is
not entitled to registration, pursuant to one or more provisions of the Act. In such cases,
the USPTO may issue Office Actions advising applicants of the refusal to register the
mark. Applicants reply to these Office Actions by providing the required information
and/or by putting forth legal arguments as to why the refusal of registration should be
withdrawn.
Applicants may also supplement their applications by providing further information
voluntarily in the nature of a Voluntary Amendment Not in Response to USPTO Office
Action/Letter. The USPTO has changed the wording of this requirement from
“preliminary amendment” to “voluntary amendment” to more accurately explain that
applicants may also supplement their applications by providing further information
voluntarily.
The request for Reconsideration after Final Office Action is filed after issuance of a final
Office Action, but before the deadline for filing an appeal. Filing the Request for
Reconsideration early in the six-month response period can eliminate the need for some
appeals or petitions and reduce the need for remands on appeal.
Applicants may also file a Post-Publication Amendment in order to submit a proposed
amendment to an application that has already been approved for publication, or allowed
for registration on the Supplemental Register, by the examining attorney. If an applicant
receives a Suspension Inquiry or Letter of Suspension from the USPTO, the applicant
may use the Response to Suspension Inquiry or Letter of Suspension to file a reply.

The USPTO administers the Trademark Act through Chapter 37 of the Code of Federal
Regulations. These rules allow the USPTO to request and receive information required
to process applications.
These rules also allow applicants to submit certain
amendments to their applications.
The information solicited or received by the USPTO may include the following:
substitute drawings or specimens; amendments to marks; changes to the international
classification or to the listing of the goods and/or services; changes to the applicant’s
address or phone number; changes to the applicant’s state/country of citizenship;
changes to the applicant’s entity type; changes to the application filing basis; changes to
the correspondence address or e-mail address; information regarding the dates of use
of the mark; disclaimers of certain components of the mark; descriptions of the mark;
references to related, pre-existing registrations owned by the applicant; translations and
transliterations of non-English wording in the mark; descriptions of uses of the mark;
consent of an individual, if any, whose name, portrait, or signature is a component of the
mark; and information concerning the use of the mark in another form.
The forms in this collection are available in electronic format through the Trademark
Electronic Application System (TEAS), which may be accessed through the USPTO
Web site. The TEAS forms allow users to pay any fees by credit card, by an
authorization to charge a USPTO deposit account, or by electronic funds transfer (EFT).
Applicants may also submit the information in paper format by mail, fax or hand
delivery, as appropriate.
The USPTO is proposing to include six new items into the inventory at this time to take
into account a new method of electronic submission of information for which a dedicated
TEAS form is not yet available (i.e., TEAS Global forms). The new information includes:
Substitute Trademark/Servicemark Application, Principal Register; Substitute
Certification Mark; Substitute Collective Membership Mark; Substitute Collective
Trademark/Servicemark; and Petition to Amend Basis Post-Publication. All of these
items are available as either TEAS Global or paper submissions. The sixth item is the
Request for Reconsideration After Final Office Action and is available in both TEAS and
in paper.
The USPTO is revising the title of this collection to remove the word “electronic” and to
change the wording from “preliminary amendment” to “voluntary amendment” to more
accurately explain that applicants may also supplement their applications by providing
further information voluntarily in the nature of a Voluntary Amendment Not in Response
to USPTO Office Action/Letter.
This collection includes information that was not submitted with the initial application
and is needed by the USPTO to review applications for trademark registration. Table 1
identifies the statutory and regulatory provisions that require the USPTO to collect the
information:

2

Table 1: Information Requirements to Collect Information Submitted After the Initial Trademark
Application
Requirement

Statute

Rule

Response to Office Action

15 U.S.C. §§ 1056 and 1062

37 CFR Part 2, 2.61(b), 2.62, 2.63,
2.71 and 2.77

Substitute Trademark/Servicemark Application,
Principal Register

15 U.S.C. §§ 1051, 1053, 1054,
1056, 1061, 1062, 1091, 1094,
1095, 1126 and 1141

37 CFR Part 2, 2.21-2.24, 2,32,
2,34-2.38, 2,41-2.47, 2,51-2.54,
2,56, 2,62-2.63, 2.71-2.77, 2.86 and
7.25-7.31

Substitute Certification Mark

15 U.S.C. §§ 1051, 1053, 1054,
1056, 1061, 1062, 1091, 1094,
1095, 1126 and 1141

37 CFR Part 2, 2.21-2.24, 2,32,
2,34-2.38, 2,41-2.47, 2,51-2.54,
2,56, 2,62-2.63, 2.71-2.77, 2.86 and
7.25-7.31

Substitute Collective Membership Mark

15 U.S.C. §§ 1051, 1053, 1054,
1056, 1061, 1062, 1091, 1094,
1095, 1126 and 1141

37 CFR Part 2, 2.21-2.24, 2,32,
2,34-2.38, 2,41-2.47, 2,51-2.54,
2,56, 2,62-2.63, 2.71-2.77, 2.86 and
7.25-7.31

Substitute Collective Trademark/Servicemark

15 U.S.C. §§ 1051, 1053, 1054,
1056, 1061, 1062, 1091, 1094,
1095, 1126 and 1141

37 CFR Part 2, 2.21-2.24, 2,32,
2,34-2.38, 2,41-2.47, 2,51-2.54,
2,56, 2,62-2.63, 2.71-2.77, 2.86 and
7.25-7.31

Voluntary Amendment Not in Response to USPTO
Office Action/Letter

15 U.S.C. §§ 1051 and 1062

37 CFR Part 2, 2.71-2.75 and 2.77

Request for Reconsideration After Final Office
Action

15 U.S.C. §§ 1051 and 1062

37 CFR Part 2, 2.61(b), 2.62, 2.64,
2.71, 2.72 and 2.75

Post-Publication Amendment

15 U.S.C. § 1051

37 CFR Part 2, 2.71-2.75, 2.77 and
2.84

Petition to Amend Basis Post-Publication

15 U.S.C. §§ 1051

37 CFR Part 2, 2.77 and 2.84

Response to Suspension Inquiry or Letter of
Suspension

15 U.S.C. §§ 1051 and 1062

37 CFR Part 2, 2.62 and 2.67

2.

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
trademark rights. The information is available at USPTO facilities and can also be
accessed at the USPTO’s 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.
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.

3

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. (See Reference A.)
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 Information Submitted After the Initial Trademark Application
Form and Function
Response to Office Action (TEAS)
Response to Office Action (Paper)

Form #

Needs and Uses

PTO-1957

•

Substitute Trademark/Servicemark Application,
Principal Register (TEAS Global)
Substitute Trademark/Servicemark Application,
Principal Register (Paper)
•
Substitute Certification Mark (TEAS Global)
Substitute Certification Mark (Paper)
•
•

Substitute Collective Membership Mark
(TEAS Global)
Substitute Collective Membership Mark (Paper)
Substitute Collective Trademark/Servicemark
(TEAS Global)
Substitute Collective Trademark/Servicemark
(Paper)

Used by the public to submit information in response to
an Office Action received from the USPTO after it is
determined from the initial review that the application
for registration of a trademark/service mark, collective
membership mark, or a certification mark is incomplete,
and/or to submit arguments in response to a refusal of
registration.
Used by the public to submit information in response to
an Office Action received from the USPTO after it is
determined from the initial review that the wrong
application form was used.
Used by the public to pay additional fees.
Used by the USPTO to collect information that the
applicant did not supply in the original application for
registration of a trademark/service mark, collective
membership mark, or a certification mark, and which
the USPTO needs to complete the review of these
applications.

(Ref. B)
Voluntary Amendment Not in Response to
USPTO Office Action/Letter (TEAS)
Voluntary Amendment Not in Response to
USPTO Office Action/Letter (Paper)

PTO-1966

•

•

(Ref. C)

•

Request for Reconsideration After Final Office
Action (TEAS)
Request for Reconsideration After Final Office
Action (Paper)

PTO-1960

•
•

(Ref. D)

Post-Publication Amendment (TEAS)
Post-Publication Amendment (Paper)

•

PTO-1771

Petition to Amend Basis Post-Publication
(TEAS Global)
Petition to Amend Basis Post-Publication
(Paper)

•

•
•

(Ref. E)

4

Used by the public to voluntarily submit information to
the USPTO, prior to examination, that was not
submitted in the original application for registration of a
trademark/service mark, collective membership mark,
or a certification mark.
Used by the public, prior to examination, to voluntarily
submit amendments to the information submitted in the
original application for registration of a
trademark/service mark, collective membership mark,
or a certification mark.
Used by the USPTO to review an application for
registration of a trademark/service mark, collective
membership mark, or a certification mark.
Used by the public to request reconsideration of an
examining attorney’s final refusal or requirement.
Used by the USPTO to streamline and promote
efficiency in the process once a final action has issued
in an application for trademark registration.
Used by the USPTO to eliminate the need for some
appeals or petitions, and reduce the need for remands
of applications on appeal.
Used by the public to submit a proposed amendment to
an application that has already been approved for
publication or allowed for registration on the
Supplemental Register by the examining attorney.
Used by the public to submit a petition to amend the
basis after publication.
Used by the USPTO to determine whether a proposed
amendment is acceptable and whether republication of
the mark is required.

Form and Function
Response to Suspension Inquiry or Letter of
Suspension (TEAS)
Response to Suspension Inquiry or Letter of
Suspension (Paper)

Form #

Needs and Uses

PTO-1822

•
•

Used by the public to submit a response to a
suspension inquiry or letter of suspension received from
the USPTO.
Used by the USPTO to consider responses from
applicants to actions related to suspended applications.

(Ref. F)

3.

Use of Information Technology

TEAS provides a useful service for all trademark filers. TEAS forms are completed
online and transmitted to the USPTO electronically 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 and the mark 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 to the user by e-mail.
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 hand 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.
Please note that electronic forms can only be submitted via TEAS; filers may not e-mail
their own forms to the USPTO.
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 TEAS
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.
The USPTO also maintains an online database called Trademark Document Retrieval
(TDR), which features images of each of the documents 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.

5

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. TESS can be used by potential
applicants for trademark registration 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 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 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 these 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.
4.

Efforts to Identify Duplication

This collection does not solicit any data already available at the USPTO. The
information collected is information that was requested by the USPTO in an Office
Action, information that an applicant did not provide in the original application,
arguments made by the applicant about why registration should not be refused, an
amendment submitted by an applicant after an application is approved for publication,
or information and/or arguments submitted by an applicant in response to the initial or
continued suspension of an application.
5.

Minimizing the Burden to Small Entities

The USPTO expects that the submission of the information provided places no undue
burden on small businesses 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

Less frequent collection of this information is not possible. The information is collected
either in response to a USPTO Office Action or submitted voluntarily. The request for
reconsideration is the applicant’s response to a substantive refusal to register and
arguments made by the applicant about why registration should not be refused; and if
the information were not collected, the public would not be able to submit amendments
after an application has been approved for publication or respond to actions related to
suspensions.

6

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 November 13, 2009 (74
Fed. Reg. 58599). The public comment period ended on January 12, 2010. The
USPTO received no public comments in response to the Notice.
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. The TPAC 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 the 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.
10.

Assurance of Confidentiality

The initial application for registration of a trademark is open to public inspection. The
information collected from the applicant in response to the items in this collection is also
available for inspection by the public. Confidentiality is not required in the processing of
this information.
Apart from the substantive components and burden statements, the TEAS forms also
include a link to the USPTO’s Web Privacy Policy. The “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.

7

11.

Justification for Sensitive Questions

None of the required information 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 expects that it will receive approximately 224,183 responses to this
information collection annually.
•

Burden Hour Calculation Factors
The USPTO expects that it will take the public approximately 10 minutes (0.17 hours) to
35 minutes (0.58 hours) to gather the necessary information, create the document, and
submit the completed request, depending upon the type of request and the method of
submission (electronic or paper).

•

Cost Burden Calculation Factors
In 2009 the Committee on Economics of Legal Practice of the American Intellectual
Property Law Association (AIPLA) published a report that summarized the results of a
survey with data on hourly billing rates. The professional rate of $325 per hour used in
this submission is the median rate for attorneys in private firms as published in that
report. The USPTO expects that the information in this collection will be prepared by
attorneys. This is a fully loaded hourly rate.

Table 3: Burden Hour/Burden Cost to Respondents for Information Collected After Submission of
the Initial Trademark Application
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 (TEAS)

0.45

173,000

77,850

$325.00

$25,301,250.00

Response to Office Action (Paper)

0.53

8,650

4,585

$325.00

$1,490,125.00

Substitute Trademark/Servicemark
Application, Principal Register (TEAS Global)

0.50

1

1

$325.00

$325.00

Substitute Trademark/Servicemark
Application, Principal Register (Paper)

0.50

1

1

$325.00

$325.00

Substitute Certification Mark (TEAS Global)

0.50

1

1

$325.00

$325.00

Substitute Certification Mark (Paper)

0.50

1

1

$325.00

$325.00

Substitute Collective Membership Mark
(TEAS Global)

0.50

1

1

$325.00

$325.00

Substitute Collective Membership Mark
(Paper)

0.50

1

1

$325.00

$325.00

Substitute Collective Trademark/Servicemark
(TEAS Global)

0.50

1

1

$325.00

$325.00

8

Rate
($/hr)
(d)

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

Hours
(a)

Substitute Collective Trademark/Servicemark
(Paper)

0.50

1

1

$325.00

$325.00

Voluntary Amendment Not in Response to
USPTO Office Action/Letter (TEAS)

0.28

9,600

2,688

$325.00

$873,600.00

Voluntary Amendment Not in Response to
USPTO Office Action/Letter (Paper)

0.33

480

158

$325.00

$51,350.00

Request for Reconsideration After Final
Office Action (TEAS)

0.50

15,400

7,700

$325.00

$2,502,500.00

Request for Reconsideration After Final
Office Action (Paper)

0.58

770

447

$325.00

$145,275.00

Post-Publication Amendment (TEAS)

0.33

2,900

957

$325.00

$311,025.00

Post-Publication Amendment (Paper)

0.41

145

59

$325.00

$19,175.00

Petition to Amend Basis Post-Publication
(TEAS Global)

0.17

3,000

510

$325.00

$165,750.00

Petition to Amend Basis Post-Publication
(Paper)

0.25

150

38

$325.00

$12,350.00

Response to Suspension Inquiry or Letter of
Suspension (TEAS)

0.17

9,600

1,632

$325.00

$530,400.00

Response to Suspension Inquiry or Letter of
Suspension (Paper)

0.25

480

120

$325.00

$39,000.00

Total

- - - -

224,183

96,752

- - - -

$31,444,400.00

13.

Responses
(yr)
(b)

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

Item

Total Annualized Cost Burden

There are no operation, maintenance or record keeping costs associated with this
information collection. Customers incur postage costs when submitting non-electronic
information to the USPTO by mail though the United States Postal Service. The
USPTO expects that the majority (98%) of the paper forms are submitted to the USPTO
via first-class mail. The USPTO estimates that these submissions will typically weigh
approximately one ounce and that the first-class postage rate for these submissions is
44 cents. Out of 10,679 paper submissions, the USPTO estimates that 10,465 will be
mailed, for a total non-hour respondent cost burden of $4,607 in postage costs.
Table 4: Postage Costs for Information Collected After Submission of the Initial Trademark
Application
Item

Responses
(a)

Response to Office Action
Substitute Trademark/Servicemark Application, Principal Register

9

Postage Costs
($)
(b)

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

8,477

$0.44

$3,730.00

1

$0.44

$1.00

Item

Responses
(a)

Postage Costs
($)
(b)

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

Substitute Certification Mark

1

$0.44

$1.00

Substitute Collective Membership Mark

1

$0.44

$1.00

Substitute Collective Trademark/Servicemark

1

$0.44

$1.00

Voluntary Amendment Not in Response to USPTO Office
Action/Letter

470

$0.44

$207.00

Request for Reconsideration after Final Office Action

755

$0.44

$332.00

Post-Publication Amendment

142

$0.44

$62.00

Petition to Amend Basis Post-Publication

147

$0.44

$65.00

Response to Suspension Inquiry or Letter of Suspension

470

$0.44

$207.00

10,465

- - - -

$4,607.00

Total

There are no filing fees associated with this collection. However, filing fees that were
incurred but not paid when another document was submitted may be provided together
with responses to Office Actions, requests for reconsideration, or voluntary
amendments. The USPTO calculates these fees as part of other information collections
containing those items.
14.

Annual Cost to the Federal Government

The USPTO expects that it takes a GS-7, step 5 employee between 6 minutes (0.10
hours) and 15 minutes (0.25) to process the items in this collection. The hourly rate for
a GS-7, step 5, is currently $22.92 according to the U.S. Office of Personnel
Management’s (OPM’s) wage chart, including locality pay for the Washington, DC area.
When 30% is added to account for a fully loaded hourly rate (benefits and overhead),
the rate per hour for a GS-7, step 5, 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 Information Collected After
Submission of the Initial Trademark Application
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 (TEAS)

0.20

173,000

34,600

$29.80

$1,031,080.00

Response to Office Action (Paper)

0.25

8,650

2,163

$29.80

$64,457.00

Substitute Trademark/Servicemark Application, Principal
Register (TEAS Global)

0.20

1

1

$29.80

$30.00

10

Rate
($/hr)
(d)

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

Hours
(a)

Substitute Trademark/Servicemark Application, Principal
Register (Paper)

0.25

1

1

$29.80

$30.00

Substitute Certification Mark (TEAS Global)

0.20

1

1

$29.80

$30.00

Substitute Certification Mark (Paper)

0.25

1

1

$29.80

$30.00

Substitute Collective Membership Mark (TEAS Global)

0.20

1

1

$29.80

$30.00

Substitute Collective Membership Mark (Paper)

0.25

1

1

$29.80

$30.00

Substitute Collective Trademark/Servicemark
(TEAS Global)

0.20

1

1

$29.80

$30.00

Substitute Collective Trademark/Servicemark (Paper)

0.25

1

1

$29.80

$30.00

Voluntary Amendment Not in Response to USPTO
Office Action/Letter (TEAS)

0.13

9,600

1,248

$29.80

$37,190.00

Voluntary Amendment Not in Response to USPTO
Office Action/Letter (Paper)

0.15

480

72

$29.80

$2,146.00

Request for Reconsideration after Final Office Action
(TEAS)

0.20

15,400

3,080

$29.80

$91,784.00

Request for Reconsideration after Final Office Action
(Paper)

0.25

770

193

$29.80

$5,751.00

Post-Publication Amendment (TEAS)

0.20

2,900

580

$29.80

$17,284.00

Post-Publication Amendment (paper)

0.23

145

33

$29.80

$983.00

Petition to Amend Basis Post-Publication (TEAS Global)

0.20

3,000

600

$29.80

$17,880.00

Petition to Amend Basis Post-Publication (Paper)

0.23

150

35

$29.80

$1,043.00

Response to Suspension Inquiry or Letter of Suspension
(TEAS)

0.10

9,600

960

$29.80

$28,608.00

Response to Suspension Inquiry or Letter of Suspension
(paper)

0.13

480

62

$29.80

$1,848.00

224,183

43,634

- - - - -

$1,300,294.00

Total

15.

Responses
(yr)
(b)

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

Item

- - - - -

Reason for Change in Burden

Summary of Changes Since the Previous Renewal
OMB previously approved the renewal of this collection in April of 2006. In April of 2008
OMB approved a proposed addition that added in two new TEAS forms along with their
paper equivalents, which increased the number of responses and burden hours for the
collection.
This collection is currently approved with a total of 124,800 responses and 21,545
burden hours per year. For this renewal, the USPTO expects that the total annual
responses will be 224,183 and the total annual burden hours will be 96,752, an increase

11

of 99,383 responses and 75,207 burden hours. This increase in burden hours is due to
program changes, administrative adjustments, and increased workload due to an
increase in application filings.
The total annual (non-hour) cost burden for this renewal of $4,607 is an increase of
$3,090 over the currently approved total of $1,517. The increase in annual costs is due
to both program changes and administrative adjustments.
Summary of Changes Since the 60-Day Notice
The 60-Day Federal Register Notice, published in November 2009, reported that the
USPTO estimated it would receive 208,360 responses resulting in 57,416 burden hours
per year. After publication of that notice, the USPTO revised its estimate as to how
many of these submissions would be made. The revised estimate has increased the
number of responses to office actions and decreased the responses for the remaining
items in the collection. With this renewal, the USPTO is adding in paper equivalents for
the response to office action and voluntary amendment forms. The USPTO is also
adding in four substitute applications and a petition to amend basis post-publication in a
TEAS Global format along with paper equivalents, along with a TEAS request for
reconsideration form and its paper equivalent. These changes result in the present
224,183 responses and 96,752 burden hours being reported for this submission. It also
accounts for an additional $13,645,440 in respondent cost burden, from $17,798,960
reported in the 60-Day Federal Register Notice to the present $31,444,400.
Change in Respondent Cost Burden
When the renewal of this collection was approved in April 2006, the estimated hourly
rate for respondents was $286 for the reported 19,958 burden hours, yielding a
respondent cost burden of $5,707,988.
For this renewal, the USPTO is using the current professional hourly rate of $325. At
this rate, the 96,752 burden hours yield a respondent cost burden of $31,444,400,
which is an increase of $25,736,412 over the currently approved burden at the previous
hourly rate. This increase in respondent cost burden is due to both the increase in total
burden hours for the collection and the increase in the estimated hourly rate.
Changes in Responses and Burden Hours
The USPTO expects that the annual responses for this renewal will increase by 99,383,
from 124,800 to 224,183. Consequently, the USPTO expects that the total annual
burden hours will increase by 75,207, from 21,545 to 96,752. This increase in burden
hours is due to an increase in responses and new items being added into the collection.
In sum, this information collection has a total burden increase of 75,207 hours
due to program changes and administrative adjustments, as follows:
•

The USPTO expects that the number of TEAS Response to Office Actions
submitted per year will increase by 63,000 responses, from 110,000 to 173,000.
12

Therefore, this submission takes a burden increase of 59,150 hours as an
administrative adjustment.
•

The USPTO is adding the paper equivalent of the Response to Office Actions
into the collection. The USPTO estimates that it will take 32 minutes to complete
this requirement and that it will receive 8,650 responses per year. Therefore,
this submission takes a total burden increase of 4,585 hours as a program
change.

•

The USPTO is adding the Substitute Trademark/Servicemark Application,
Principal Register in the TEAS Global format into the collection. The USPTO
estimates that it will take 21 minutes to complete this requirement and that it will
receive 1 response per year. Therefore, this submission takes a total burden
increase of 1 hour as a program change.

•

The USPTO is adding the Substitute Trademark/Servicemark Application,
Principal Register in paper format into the collection. The USPTO estimates that
it will take 30 minutes to complete this requirement and that it will receive 1
response per year. Therefore, this submission takes a total burden increase
of 1 hour as a program change.

•

The USPTO is adding the Substitute Certification Mark in the TEAS Global
format into the collection. The USPTO estimates that it will take 21 minutes to
complete this requirement and that it will receive 1 response per year.
Therefore, this submission takes a total burden increase of 1 hour as a
program change.

•

The USPTO is adding the Substitute Certification Mark in paper format into the
collection. The USPTO estimates that it will take 30 minutes to complete this
requirement and that it will receive 1 response per year. Therefore, this
submission takes a total burden increase of 1 hour as a program change.

•

The USPTO is adding the Substitute Collective Membership Mark in the TEAS
Global format into the collection. The USPTO estimates that it will take 21
minutes to complete this requirement and that it will receive 1 response per year.
Therefore, this submission takes a total burden increase of 1 hour as a
program change.

•

The USPTO is adding the Substitute Collective Membership Mark in paper
format into the collection. The USPTO estimates that it will take 30 minutes to
complete this requirement and that it will receive 1 response per year.
Therefore, this submission takes a total burden increase of 1 hour as a
program change.

•

The USPTO is adding the Substitute Collective Trademark/Servicemark in the
TEAS Global format into the collection. The USPTO estimates that it will take 21

13

minutes to complete this requirement and that it will receive 1 response per year.
Therefore, this submission takes a total burden increase of 1 hour as a
program change.
•

The USPTO is adding the Substitute Collective Trademark/Servicemark in paper
format into the collection. The USPTO estimates that it will take 30 minutes to
complete this requirement and that it will receive 1 response per year.
Therefore, this submission takes a total burden increase of 1 hour as a
program change.

•

The USPTO expects that the number of TEAS Voluntary Amendments Not in
Response to USPTO Office Action/Letter (item renamed in this submission)
submitted per year will increase by 2,200 responses, from 7,400 to 9,600.
Therefore, this submission takes a burden increase of 1,430 hours as an
administrative adjustment.

•

The USPTO is adding the Voluntary Amendments Not in Response to USPTO
Office Action/Letter in paper format into the collection. The USPTO estimates
that it will take 20 minutes to complete this requirement and that it will receive
480 responses per year. Therefore, this submission takes a burden increase
of 158 hours as a program change.

•

The USPTO is adding the TEAS Request for Reconsideration After Final Office
Action into the collection. The USPTO estimates that it will take 30 minutes to
complete this requirement and that it will receive 15,400 responses per year.
Therefore, this submission takes a burden increase of 7,700 hours as a
program change.

•

The USPTO is adding the Request for Reconsideration After Final Office Action
in paper format into the collection. The USPTO expects that it will take 35
minutes to complete this requirement and that it will receive 770 responses per
year. Therefore, this submission takes a burden increase of 447 hours as a
program change.

•

The USPTO expects that the number of TEAS Post-Publication Amendments
submitted per year will increase by 2,000 responses, from 900 to 2,900.
Therefore, this submission takes a burden increase of 732 hours as an
administrative adjustment.

•

The USPTO expects that the number of Post-Publication Amendments in paper
format submitted per year will decrease by 755 responses, from 900 to 145.
Therefore, this submission takes a burden decrease of 211 hours as an
administrative adjustment.

•

The USPTO is adding the Petition to Amend Basis Post-Publication in the TEAS
Global format into the collection. The USPTO estimates that it will take 10

14

minutes to complete this requirement and that it will receive 3,000 responses per
year. Therefore, this submission takes a burden increase of 510 hours as a
program change.
•

The USPTO is adding the Petition to Amend Basis Post-Publication in paper
format into the collection. The USPTO expects that it will take 15 minutes to
complete this requirement and that it will receive 150 responses per year.
Therefore, this submission takes a burden increase of 38 hours as a
program change.

•

The USPTO expects that the number of TEAS Response to Suspension Inquiry
or Letter of Suspensions submitted per year will increase by 6,800 responses,
from 2,800 to 9,600. Therefore, this submission takes a burden increase of
1,156 hours as an administrative adjustment.

•

The USPTO expects that the number of Response to Suspension Inquiry or
Letter of Suspensions in paper format submitted per year will decrease by 2,320
responses, from 2,800 to 480. Therefore, this submission takes a burden
decrease of 496 hours as an administrative adjustment.

A total of 75,207 burden hours have been added to this collection as a result of
administrative adjustments and program changes. The increase in burden hours
is due to a combination of the revised number of submissions, changes in the
time it takes to complete some of the responses, and 14 requirements being
added into this collection. This results in a total net burden increase of 61,761
hours as an administrative adjustment and 13,446 hours as a program change.
Changes in Annualized (Non-hour) Costs
For this renewal, the USPTO expects that the total annual (non-hour) costs will increase
by $3,090, from $1,517 currently reported on the OMB inventory to the present $4,607.
This increase is due to eight new requirements being added to the collection, offset by a
decrease in the number of submissions for two existing items requiring postage.
Therefore, this collection has an increase in annual (non-hour) cost burden of
$3,090, with an increase of $4,338 due to program changes offset by a decrease
of $1,248 due to 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
date on which OMB’s approval of this information collection expires.

15

18.

Exception to the Certificate Statement

No exceptions to the certificate statement are included in this collection of information.

B.

COLLECTIONS OF INFORMATION EMPLOYING STATISTICAL METHODS

This collection of information does not employ statistical methods.

16

REFERENCES
A.
B.

C.
D.
E.
F.

USPTO Information Quality Guidelines
PTO-1957 Response to Office Action (TEAS)
Substitute Trademark/Servicemark Application, Principal Register (TEAS Global)
Substitute Certification Mark (TEAS Global)
Substitute Collective Mark (TEAS Global)
Substitute Collective Trademark/Servicemark (TEAS Global)
PTO-1966 Voluntary Amendment Not in Response to USPTO Office Action/Letter
PTO-1960 Request for Reconsideration After Final Office Action
PTO-1771 Post-Publication Amendment
PTO-1822 Response to Suspension Inquiry or Letter of Suspension

17