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pdfSUPPORTING STATEMENT
United States Patent and Trademark Office
Substantive Submissions Made During the Prosecution
of the Trademark Application
OMB CONTROL NUMBER 0651-0054
(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 amend their registrations to delete goods or services that
are no longer being used by the registrant. Registered marks remain on the register for
ten years and can be renewed, but will be canceled 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. Registrants may also surrender a registration
and, in limited situations, petition the Director to reinstate a registration that has been
cancelled.
The rules implementing the Trademark Act are set forth in 37 CFR Part 2. These rules
mandate that each register entry include the mark, the goods and/or services in
connection with which the mark is used, ownership information, dates of use, and
certain other information. The USPTO also provides similar information concerning
pending applications. The register and pending application information may be
accessed by an individual or by businesses to determine the availability of a mark. By
accessing the USPTO’s information, parties may reduce the possibility of initiating use
of a mark previously adopted by another. The Federal trademark registration process
may thereby lessen the filing of papers in court and between parties.
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 in the inventory at this time to take
into account a new method of electronic submission of information when a TEAS form
having dedicated data fields is not yet available (i.e., TEAS Global forms). The new
information includes: Response to Intent-to-Use (ITU)/Divisional Unit Office Action,
Response to Petition to Revive Deficiency Letter, Petition to the Director Under
Trademark Rule 2.146, Due Diligence Petition Under Trademark Rule 2.66, Petition to
Revive with Request to Delete Section 1(b) Basis or to Delete ITU Goods/Services After
NOA, and Request to Divide Application. With the introduction of the TEAS Global
Forms, the information in this collection can be collected in three different formats:
paper format, electronically using the original TEAS forms, or electronically using the
TEAS Global Forms. Information regarding the Request to Divide was previously
collected in paper form, but is now being offered in the TEAS Global format as well, with
the name changed to Request to Divide Application.
Table 1 identifies the statutory and regulatory provisions pursuant to which the USPTO
collects the information:
Table 1: Information Requirements for Substantive Submissions Made During Prosecution of the
Trademark Application
Requirement
Statute
Rule
Trademark/Service Mark Allegation of Use (Statement of
Use/Amendment to Allege Use)
15 U.S.C. § 1051(c) and
(d)(1)
37 CFR Part 2, 2.76, 2.86
and 2.88
Request for Extension of Time to File a Statement of Use
15 U.S.C. § 1051(d)(2)
37 CFR Part 2, 2.89
Petition to Revive Abandoned Application – Failure to Respond
Timely to Office Action
15 U.S.C. §§ 1062(b) and
1123
37 CFR Part 2, 2.61-2.66
Petition to Revive Abandoned Application – Failure to File Timely
Statement of Use or Extension Request
15 U.S.C. § 1051(d)(4)
37 CFR Part 2, 2.66, 2.88,
and 2.89
Request to Delete Section 1(b) Basis, Intent to Use
15 U.S.C. § 1123
37 CFR Part 2, 2.35
Request for Express Abandonment (Withdrawal) of Application
15 U.S.C. § 1123
37 CFR Part 2, 2.68
Request to Divide Application
15 U.S.C. § 1123
37 CFR Part 2, 2.87
Response to Intent-to-Use (ITU) Divisional Unit Office Action
15 U.S.C. § 1123
37 CFR Part 2, 2.87
Response to Petition to Revive Deficiency Letter
15 U.S.C. §§ 1051(d)(4),
1062(b), and 1123
37 CFR Part 2, 2.61, 2.632.66, 2.88, and 2.89
Petition to the Director Under Trademark Rule 2.146
15 U.S.C. § 1123
37 CFR Part 2, 2.35, 2.63,
2.84, 2.101, 2.102, 2.146,
2.165, 2.176 and 2.186
Due Diligence Petition Under Trademark Rule 2.66
15 U.S.C. §§ 1062(b) and
1123
37 CFR Part 2, 2.66 and
2.146
Petition to Revive with Request to Delete Section 1(b) Basis or to
Delete ITU Goods/Services After NOA
15 U.S.C. §§ 1062(b) and
1123
37 CFR Part 2, 2.35, 2.66,
and 2.77
2.
Needs and Uses
The USPTO uses the information described in this collection to process the substantive
submissions made during prosecution of the trademark application. The information in
2
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.
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 Ref. A, the 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 Substantive Submissions Made During Prosecution of the Trademark
Application
Form and Function
Trademark/Service Mark Allegation of
Use (Amendment to Allege
Use/Statement of Use) (TEAS)
Form #
PTO Form
1553
Needs and Uses
•
•
(Ref. B)
Trademark/Service Mark Allegation of
Use (Amendment to Allege
Use/Statement of Use) (Paper)
PTO Form
1553
Request for Extension of Time to File a
Statement of Use (TEAS)
PTO Form
1581
•
•
•
(Ref. C)
Request for Extension of Time to File a
Statement of Use (Paper)
•
PTO Form
1581
•
•
Petition to Revive Abandoned
Application – Failure to Respond Timely
to Office Action (TEAS)
(Ref. D)
Form 2194
•
•
3
Used by the public to electronically complete and file a
notification to the USPTO that a mark for which registration is
sought is in use in commerce.
Used by the USPTO to review electronically filed applications
for registration.
Used by the public to notify the USPTO that a mark for which
registration is sought is in use in commerce.
Used by the USPTO to complete processing of applications for
registration.
Used by the public to electronically complete and file a request
for a six-month extension of time to file a statement that the
mark for which registration is sought is in use in commerce.
Used by the USPTO to grant an extension of time to
electronically file statements that the mark for which registration
is sought is in use in commerce.
Used by the public to request a six-month extension of time to
file a statement that the mark for which registration is sought is
in use in commerce.
Used by the USPTO to grant an extension of time to file a
statement that the mark for which registration is sought is in
use in commerce.
Used by the public to electronically complete and file a petition
to the USPTO to revive an application that was abandoned
because of a failure to submit a timely response to an office
action.
Used by the USPTO to process electronically filed petitions to
revive an application that was abandoned because of a failure
to submit a timely response to an office action.
Form and Function
Form #
Petition to Revive Abandoned
Application – Failure to Respond Timely
to Office Action (Paper)
No Form
Associated
Needs and Uses
•
•
Petition to Revive Abandoned
Application – Failure to File Timely
Statement of Use or Extension Request
(TEAS)
Form 2195
•
•
(Ref. E)
Petition to Revive Abandoned
Application – Failure to File Timely
Statement of Use or Extension Request
(Paper)
No Form
Associated
Request to Delete Section 1(b) Basis,
Intent to Use (TEAS)
Form 2200
•
•
•
(Ref. F)
•
Request to Delete Section 1(b) Basis,
Intent to Use (Paper)
No Form
Associated
•
•
Request for Express Abandonment
(Withdrawal) of Application (TEAS)
Form 2202
•
•
(Ref. G)
Request for Express Abandonment
(Withdrawal) of Application (Paper)
No Form
Associated
•
•
Request to Divide Application
(TEAS Global)
TEAS Global
Form
•
•
(Ref. H)
•
Request to Divide Application (Paper)
No Form
Associated
•
Response to Intent-to-Use (ITU)
Divisional Unit Office Action
(TEAS Global)
(Ref. I)
TEAS Global
Form
•
•
•
4
Used by the public to petition the USPTO to revive an
application that was abandoned because of a failure to submit
a timely response to an office action.
Used by the USPTO to process a request to revive an
application that was abandoned because of a failure to submit
a timely response to an office action.
Used by the public to electronically complete and file a petition
to revive an application that was abandoned because of a
failure to file a timely statement of use or extension request.
Used by the USPTO to process electronically filed petitions to
revive an application that was abandoned because of a failure
to file a timely statement of use or extension request.
Used by the public to petition the USPTO to revive an
application that was abandoned because of a failure to file a
timely statement of use or extension request.
Used by the USPTO to process a petition to revive an
application that was abandoned because of a failure to file a
timely statement of use or extension request.
Used by the public to electronically complete and file a request
to delete a particular statutory filing basis, section 1(b) basis,
from an entire class of goods and/or services from an
application.
Used by the USPTO to process electronically filed requests to
delete a section 1(b) basis from an application.
Used by the public to submit a request to delete a particular
statutory filing basis, section 1(b) basis, from an entire class of
goods and/or services from an application.
Used by the USPTO to process requests to delete a section
1(b) basis from an application.
Used by the public to electronically complete and file a request
to withdraw an application.
Used by the USPTO to process electronically filed requests to
withdraw an application.
Used by the public to submit a request to withdraw an
application.
Used by the USPTO to process requests to withdraw an
application.
Used by the public to electronically request that an application
for registration that identifies multiple goods and/or services be
divided into two or more separate applications.
Used by the USPTO to process electronic requests for
applications for registration that identify multiple goods and/or
services to be divided into two or more separate applications.
Used by the public to request that an application for registration
that identifies multiple goods and/or services be divided into
two or more separate applications.
Used by the USPTO to process requests for applications for
registration that identify multiple goods and/or services to be
divided into two or more separate applications.
Used by the public to electronically submit information in
response to an Office Action received from the USPTO after it
is determined from the initial review that the request to divide is
incomplete.
Used by the public to electronically pay additional fees.
Used by the USPTO to collect information that the applicant did
not supply in the original request to divide and which the
USPTO needs to complete the review of these requests.
Form and Function
Response to Intent-to-Use (ITU)
Divisional Unit Office Action
(Paper)
Form #
No Form
Associated
Needs and Uses
•
•
Response to Petition to Revive
Deficiency Letter (TEAS Global)
TEAS Global
Form
•
(Ref. J)
•
•
Response to Petition to Revive
Deficiency Letter (Paper)
No Form
Associated
•
•
Petition to the Director Under
Trademark Rule 2.146 (TEAS Global)
TEAS Global
Form
•
•
(Ref. K)
Petition to the Director Under
Trademark Rule 2.146 (Paper)
No Form
Associated
•
•
Due Diligence Petition Under
Trademark Rule 2.66 (TEAS Global)
TEAS Global
Form
•
(Ref. L)
•
Due Diligence Petition Under
Trademark Rule 2.66 (Paper)
No Form
Associated
•
•
Petition to Revive with Request to
Delete Section 1(b) Basis or to Delete
ITU Goods/Services After NOA
(TEAS Global)
(Ref. M)
TEAS Global
Form
•
•
5
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 request to divide is incomplete.
Used by the USPTO to collect information that the applicant did
not supply in the original request to divide and which the
USPTO needs to complete the review of these requests.
Used by the public to electronically submit information in
response to an Office Action received from the USPTO after it
is determined from the initial review that the petition to revive is
incomplete.
Used by the public to electronically pay additional fees.
Used by the USPTO to collect information that the applicant did
not supply in the original petition and which the USPTO needs
to complete the review of the petition.
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 petition to revive is incomplete.
Used by the USPTO to collect information that the applicant did
not supply in the original petition and which the USPTO needs
to complete the review of the petition.
Used by the public to electronically file a petition to the Director
pursuant to Trademark Rule 2.146.
Used by the USPTO to process electronic petitions to the
Director filed pursuant to Trademark Rule 2.146.
Used by the public to file a petition to the Director pursuant to
Trademark Rule 2.146.
Used by the USPTO to process electronic petitions to the
Director filed pursuant to Trademark Rule 2.146.
Used by the public to electronically file a petition to revive an
application that was abandoned because of a failure to file a
response to an Office Action or a timely statement of use or
extension request when the petition is filed more than two
months after the issue date of the notice of abandonment.
Used by the USPTO to process electronic petitions to revive an
application that was abandoned because of a failure to file a
response to an office action or a timely statement of use or
extension request when the petition is filed more than two
months after the issue date of the notice of abandonment.
Used by the public to file a petition to revive an application that
was abandoned because of a failure to file a response to an
Office Action or a timely statement of use or extension request
when the petition is filed more than two months after the issue
date of the notice of abandonment.
Used by the USPTO to process petitions to revive an
application that was abandoned because of a failure to file a
response to an office action or a timely statement of use or
extension request when the petition is filed more than two
months after the issue date of the notice of abandonment.
Used by the public to electronically file a petition to the USPTO
to revive an application that was abandoned because of a
failure to submit a timely response to a Notice of Allowance
and to request deletion of a basis or of specified goods and/or
services.
Used by the USPTO to process electronic petitions to revive an
application that was abandoned because of a failure to submit
a timely response to an office action that also included a
request to delete a basis or specified goods and/or services.
Form and Function
Form #
Petition to Revive with Request to
Delete Section 1(b) Basis or to Delete
ITU Goods/Services After NOA (Paper)
No Form
Associated
Needs and Uses
•
•
3.
Used by the public to file a petition to the USPTO to revive an
application that was abandoned because of a failure to submit
a timely response to a Notice of Allowance and to request
deletion of a basis or of specified goods and/or services.
Used by the USPTO to process a petition to revive an
application that was abandoned because of a failure to submit
a timely response to an office action that also included a
request to delete a basis or specified goods and/or services.
Use of Information Technology
The USPTO provides online electronic forms through the Web-accessible Trademark
Electronic Application System (TEAS). 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 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 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. Additionally, filers who submit drawings of marks that
are not “standard character” drawings must attach digitized images of these drawings to
their submissions.
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 method allows for electronic filing of documents when
there is not currently a TEAS form with dedicated data fields for the particular purpose.
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)
6
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 has 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 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 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 information is collected only when allegations of use, requests for extension of time
to file a statement of use, petitions to revive abandoned applications, requests to delete
section 1(b) basis, intent to use, requests for express abandonment, requests to divide,
responses to intent-to-use (ITU) divisional unit office action, responses to petition to
revive deficiency letter, petitions to the director under trademark rule 2.146, due
diligence petitions under trademark rule 2.66, and petitions to revive with request to
delete section 1(b) basis or to delete ITU goods/services after NOA 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 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
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 allege use of a trademark/service mark,
request an extension of time to file a statement of use, petition to revive abandoned
applications, request that a section 1(b) basis be deleted from their applications, request
7
express abandonment, file a request to divide an application, or file the other responses
and petitions in this collection. The information could not be collected less frequently. If
this information was not collected, 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 March 1, 2011 (76 Fed
Reg. 11208). The public comment period ended on May 2, 2011. 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. 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 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
Trademark applications and registrations are open to public inspection. Confidentiality
is not required in the processing of trademark applications.
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 website,
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.
8
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 expects that it will receive 289,521 responses per year for this collection,
with 279,139 responses (96.5%) filed electronically.
•
Burden Hour Calculation Factors
The USPTO estimates that it will take the public an average of 5 to 30 minutes (0.08 to
0.50 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 either complete and electronically file the
associated form or mail the completed request.
•
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 $325 per hour used in
this submission is the median rate for attorneys in private firms as published in that
report. The USPTO expects that the information in this collection will be prepared by
attorneys, although some submissions may be prepared by pro se applicants and
registrants. This is a fully loaded hourly rate.
Table 3: Burden Hour/Burden Cost to Respondents for Substantive Submissions Made During
Prosecution of the Trademark Application
Item
Hours
(a)
Responses
(yr)
(b)
Burden
(hrs/yr)
(c)
(a) x (b)
Rate
($/hr)
(d)
Total Cost
($/hr)
(e)
(c) x (d)
Trademark/Service Mark Allegation of Use
(Amendment to Allege Use/Statement of Use) (TEAS)
(PTO Form 1553)
0.25
73,525
18,381
$325.00
$5,973,825.00
Trademark/Service Mark Allegation of Use
(Amendment to Allege Use/Statement of Use) (Paper)
0.33
4,361
1,439
$325.00
$467,675.00
Request for Extension of Time to File a Statement of
Use (TEAS)
(PTO Form 1581)
0.13
176,715
22,973
$325.00
$7,466,225.00
Request for Extension of Time to File a Statement of
Use (Paper)
0.17
4,531
770
$325.00
$250,250.00
Petition to Revive Abandoned Application – Failure to
Respond Timely to Office Action (TEAS)
(PTO Form 2194)
0.20
15,396
3,079
$325.00
$1,000,675.00
9
Item
Hours
(a)
Responses
(yr)
(b)
Rate
($/hr)
(d)
Burden
(hrs/yr)
(c)
(a) x (b)
Total Cost
($/hr)
(e)
(c) x (d)
Petition to Revive Abandoned Application – Failure to
Respond Timely to Office Action (Paper)
0.25
810
203
$325.00
$65,975.00
Petition to Revive Abandoned Application – Failure to
File Timely Statement of Use or Extension Request
(TEAS)
(PTO Form 2195)
0.17
810
138
$325.00
$44,850.00
Petition to Revive Abandoned Application – Failure to
File Timely Statement of Use or Extension Request
(Paper)
0.20
43
9
$325.00
$2,925.00
Request to Delete Section 1(b) Basis, Intent to Use
(TEAS)
(PTO Form 2200)
0.08
1,380
110
$325.00
$35,750.00
Request to Delete Section 1(b) Basis, Intent to Use
(Paper)
0.17
69
12
$325.00
$3,900.00
Request for Express Abandonment (Withdrawal) of
Application (TEAS)
(PTO Form 2202)
0.08
5,548
444
$325.00
$144,300.00
Request for Express Abandonment (Withdrawal) of
Application (Paper)
0.17
277
47
$325.00
$15,275.00
Request to Divide Application (TEAS Global)
0.13
5,211
677
$325.00
$220,025.00
Request to Divide Application (Paper)
0.17
261
44
$325.00
$14,300.00
Response to Intent-to-Use (ITU) Divisional Unit Office
Action (TEAS Global)
0.50
2
1
$325.00
$325.00
Response to Intent-to-Use (ITU) Divisional Unit Office
Action (Paper)
0.50
1
1
$325.00
$325.00
Response to Petition to Revive Deficiency Letter
(TEAS Global)
0.20
100
20
$325.00
$6,500.00
Response to Petition to Revive Deficiency Letter
(Paper)
0.25
5
1
$325.00
$325.00
Petition to the Director Under Trademark Rule 2.146
(TEAS Global)
0.25
310
78
$325.00
$25,350.00
Petition to the Director Under Trademark Rule 2.146
(Paper)
0.33
16
5
$325.00
$1,625.00
Due Diligence Petition Under Trademark Rule 2.66
(TEAS Global)
0.25
140
35
$325.00
$11,375.00
Due Diligence Petition Under Trademark Rule 2.66
(Paper)
0.33
7
2
$325.00
$650.00
Petition to Revive with Request to Delete Section 1(b)
Basis or to Delete ITU Goods/Services After NOA
(TEAS Global)
0.50
2
1
$325.00
$325.00
Petition to Revive with Request to Delete Section 1(b)
Basis or to Delete ITU Goods/Services After NOA
(Paper)
0.50
1
1
$325.00
$325.00
289,521
48,471
- - - -
$15,753,075.00
Total
- - - -
10
13.
Total Annualized (Non-hour) Cost Burden
There are no capital start-up, maintenance, or record keeping costs. There is, however,
non-hour cost burden in the way of filing fees and postage costs.
Filing fees of $37,276,200 are associated with this collection. Filing fees are based on
per class filing of goods and services; therefore, the total filing fees can vary depending
on the number of classes. The filing fees shown here are the minimum fees associated
with this information collection.
Table 4 calculates the filing fees associated with this collection of information:
Table 4: Filing Fees – Non-hour Cost Burden for Substantive Submissions Made During
Prosecution of the Trademark Application
Item
Responses
(yr)
(a)
Filing fee*
($)
(b)
Total Non-Hour
Cost Burden
(yr)
(a) x (b)
(c)
Trademark/Service Mark Allegation of Use (Amendment to Allege
Use/Statement of Use) (TEAS)
73,525
$100.00
$7,352,500.00
Trademark/Service Mark Allegation of Use (Amendment to Allege
Use/Statement of Use) (Paper)
4,361
$100.00
$436,100.00
Request for Extension of Time to File a Statement of Use (TEAS)
176,715
$150.00
$26,507,250.00
Request for Extension of Time to File a Statement of Use (Paper)
4,531
$150.00
$679,650.00
Petition to Revive Abandoned Application – Failure to Respond Timely to
Office Action (TEAS)
15,396
$100.00
$1,539,600.00
Petition to Revive Abandoned Application – Failure to Respond Timely to
Office Action (Paper)
810
$100.00
$81,000.00
Petition to Revive Abandoned Application – Failure to File Timely Statement
of Use or Extension Request (TEAS)
810
$100.00
$81,000.00
Petition to Revive Abandoned Application – Failure to File Timely Statement
of Use or Extension Request (Paper)
43
$100.00
$4,300.00
Request to Delete Section 1(b) Basis, Intent to Use (TEAS)
1,380
$0.00
$0.00
Request to Delete Section 1(b) Basis, Intent to Use (Paper)
69
$0.00
$0.00
Request for Express Abandonment (Withdrawal) of Application (TEAS)
5,548
$0.00
$0.00
Request for Express Abandonment (Withdrawal) of Application (Paper)
277
$0.00
$0.00
5,211
$100.00
$521,100.00
261
$100.00
$26,100.00
Response to Intent-to-Use (ITU) Divisional Unit Office Action (TEAS Global)
2
$0.00
$0.00
Response to Intent-to-Use (ITU) Divisional Unit Office Action (Paper)
1
$0.00
$0.00
100
$0.00
$0.00
Request to Divide Application (TEAS Global)
Request to Divide Application (Paper)
Response to Petition to Revive Deficiency Letter (TEAS Global)
11
Item
Responses
(yr)
(a)
Response to Petition to Revive Deficiency Letter (Paper)
Filing fee*
($)
(b)
Total Non-Hour
Cost Burden
(yr)
(a) x (b)
(c)
5
$0.00
$0.00
310
$100.00
$31,000.00
16
$100.00
$1,600.00
140
$100.00
$14,000.00
Due Diligence Petition Under Trademark Rule 2.66 (Paper)
7
$100.00
$700.00
Petition to Revive With Request to Delete Section 1(b) Basis or to Delete ITU
Goods/Services After NOA (TEAS Global)
2
$100.00
$200.00
Petition to Revive With Request to Delete Section 1(b) Basis or to Delete ITU
Goods/Services After NOA (Paper)
1
$100.00
$100.00
Petition to the Director Under Trademark Rule 2.146 (TEAS Global)
Petition to the Director Under Trademark Rule 2.146 (Paper)
Due Diligence Petition Under Trademark Rule 2.66 (TEAS Global)
Total
*Note: All fees listed are based on per class filing.
289,521
- - - - -
$37,276,200.00
Applicants and registrants incur postage costs when submitting non-electronic
information to the USPTO by mail through the United States Postal Service. The
USPTO expects that the majority of submissions for these paper forms are made via
first class mail. First class postage is 44 cents. Therefore, a total estimated mailing
cost of $4,569 is incurred for this collection.
Table 5 calculates the postage costs for the substantive submissions made during
prosecution of the trademark application:
Table 5: Postage Costs for Substantive Submissions Made During Prosecution of the Trademark
Application
Item
Responses
(yr)
(a)
Postage Costs
(b)
Total Cost
(yr)
(a) x (b)
Trademark/Service Mark Allegation of Use (Amendment to Allege
Use/Statement of Use)
4,361
$0.44
$1,919.00
Request for Extension of Time to File a Statement of Use
4,531
$0.44
$1,994.00
810
$0.44
$356.00
Petition to Revive Abandoned Application – Failure to File Timely
Statement of Use or Extension Request
43
$0.44
$19.00
Request to Delete Section 1(b) Basis, Intent to Use
69
$0.44
$30.00
Request for Express Abandonment (Withdrawal) of Application
277
$0.44
$122.00
Request to Divide Application
261
$0.44
$115.00
Response to Intent-to-Use (ITU) Divisional Unit Office Action
1
$0.44
$1.00
Response to Petition to Revive Deficiency Letter
5
$0.44
$2.00
Petition to Revive Abandoned Application – Failure to Respond Timely
to Office Action
12
Item
Postage Costs
(b)
Responses
(yr)
(a)
Petition to the Director Under Trademark Rule 2.146
Total Cost
(yr)
(a) x (b)
16
$0.44
$7.00
Due Diligence Petition Under Trademark Rule 2.66
7
$0.44
$3.00
Petition to Revive With Request to Delete Section 1(b) Basis or to
Delete ITU Goods/Services After NOA
1
$0.44
$1.00
10,382
- - - - -
$4,569.00
Total
In sum, the total annual non-hour cost burden for this collection in the form of filing fees
($37,276,200) and postage costs ($4,569) amounts to $37,280,769.
14.
Annual Cost to the Federal Government
The USPTO estimates that it takes a GS-7, step 5 employee between 11 and 14
minutes to process an allegation of use. The direct rate of pay for a GS-7, step 5 is
$22.92. When 30% is added to account for a fully loaded hourly rate (benefits and
overhead), the cost per hour for a GS-7, step 5 is $22.92 + $6.88, for a rate of $29.80.
The USPTO estimates that it takes a GS-11, step 5 employee between 6 and 11
minutes to process an extension request, between 6 and 11 minutes to process a
request to delete a section 1(b) filing basis, between 3 and 9 minutes to process a
petition to revive, between 24 and 30 minutes to process a response to an ITU Office
action, and between 24 and 30 minutes to process a request to divide an application.
The current hourly rate for a GS-11, step 5 is $33.92. 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 $33.92 + $10.18, for a rate of $44.10.
The USPTO estimates that it takes a GS-12, step 5 employee between 30 and 45
minutes to process a due diligence petition under Trademark Rule 2.66, between 15
and 18 minutes to process a petition to revive with request to delete a section 1(b) filing
basis or to delete ITU goods/services after NOA, and between 15 and 18 minutes to
process a response to a petition to revive deficiency letter. The current hourly rate for a
GS-12, step 5 is $40.66. When 30% is added to account for a fully loaded hourly rate
(benefits and overhead), the cost per hour for a GS-12, step 5 is $40.66 + $12.20, for a
rate of $52.86.
The USPTO estimates that it takes a GS-13, step 5 employee between 2 and 6 minutes
to process a request for express abandonment. The current hourly rate for a GS-13,
step 5 is $48.35. When 30% is added to account for a fully loaded hourly rate (benefits
and overhead), the cost per hour for a GS-12, step 5 is $48.35 + $14.51, for a rate of
$62.86.
The USPTO estimates that it takes a GS-15, step 5 employee between 30 and 45
minutes to process a petition under Trademark Rule 2.146. The current hourly rate for
a GS-15, step 5 is $67.21. When 30% is added to account for a fully loaded hourly rate
13
(benefits and overhead), the cost per hour for a GS-12, step 5 is $67.21 + $20.16, for a
rate of $87.37.
Table 6 calculates the processing hours and costs of this information collection to the
Federal Government:
Table 6: Burden Hour/Burden Cost to the Federal Government for Substantive Submissions Made
During Prosecution of the Trademark Application
Item
Hours
(a)
Responses
(yr)
(b)
Burden
(hrs/yr)
(c)
(a) x (b)
Rate
($/hr)
(d)
Total Cost
($/hr)
(e)
(c) x (d)
Trademark/Service Mark Allegation of Use
(Amendment to Allege Use/Statement of Use) (TEAS)
0.18
73,525
13,235
$29.80
$394,403.00
Trademark/Service Mark Allegation of Use
(Amendment to Allege Use/Statement of Use) (Paper)
0.23
4,361
1,003
$29.80
$29,889.00
Request for Extension of Time to File a Statement of
Use (TEAS)
0.10
176,715
17,672
$44.10
$779,335.00
Request for Extension of Time to File a Statement of
Use (Paper)
0.18
4,531
816
$44.10
$35,986.00
Petition to Revive Abandoned Application – Failure to
Respond Timely to Office Action (TEAS)
0.05
15,396
770
$44.10
$33,957.00
Petition to Revive Abandoned Application – Failure to
Respond Timely to Office Action (Paper)
0.15
810
122
$44.10
$5,380.00
Petition to Revive Abandoned Application – Failure to
File Timely Statement of Use or Extension Request
(TEAS)
0.05
810
41
$44.10
$1,808.00
Petition to Revive Abandoned Application – Failure to
File Timely Statement of Use or Extension Request
(Paper)
0.15
43
6
$44.10
$265.00
Request to Delete Section 1(b) Basis, Intent to Use
(TEAS)
0.10
1,380
138
$44.10
$6,086.00
Request to Delete Section 1(b) Basis, Intent to Use
(Paper)
0.18
69
12
$44.10
$529.00
Request for Express Abandonment (Withdrawal) of
Application (TEAS)
0.03
5,548
166
$62.86
$10,435.00
Request for Express Abandonment (Withdrawal) of
Application (Paper)
0.10
277
28
$62.86
$1,760.00
Request to Divide Application (TEAS Global)
0.40
5,211
2,084
$44.10
$91,904.00
Request to Divide Application (Paper)
0.50
261
131
$44.10
$5,777.00
Response to Intent-to-Use (ITU) Divisional Unit Office
Action (TEAS Global)
0.40
2
1
$44.10
$44.00
Response to Intent-to-Use (ITU) Divisional Unit Office
Action (Paper)
0.50
1
1
$44.10
$44.00
Response to Petition to Revive Deficiency Letter
(TEAS Global)
0.25
100
25
$52.86
$1,322.00
14
Item
Hours
(a)
Responses
(yr)
(b)
Rate
($/hr)
(d)
Burden
(hrs/yr)
(c)
(a) x (b)
Total Cost
($/hr)
(e)
(c) x (d)
Response to Petition to Revive Deficiency Letter
(Paper)
0.30
5
2
$52.86
$106.00
Petition to the Director Under Trademark Rule 2.146
(TEAS Global)
0.50
310
155
$87.37
$13,542.00
Petition to the Director Under Trademark Rule 2.146
(Paper)
0.75
16
12
$87.37
$1,048.00
Due Diligence Petition Under Trademark Rule 2.66
(TEAS Global)
0.50
140
70
$52.86
$3,700.00
Due Diligence Petition Under Trademark Rule 2.66
(Paper)
0.75
7
5
$52.86
$264.00
Petition to Revive with Request to Delete Section 1(b)
Basis or to Delete ITU Goods/Services After NOA
(TEAS Global)
0.25
2
1
$52.86
$53.00
Petition to Revive with Request to Delete Section 1(b)
Basis or to Delete ITU Goods/Services After NOA
(Paper)
0.30
1
1
$52.86
$53.00
- - - - -
289,521
36,497
- - - - -
$1,417,690.00
Total
15.
Reason for Change in Burden
Summary of Changes Since the Previous Renewal
This information collection was approved by OMB in September of 2008 with a total of
228,115 responses and 34,684 burden hours per year. With this renewal, the USPTO
estimates that the responses will be 289,521 and the burden hours 48,471, which is an
increase of 61,406 responses and 13,787 burden hours from the currently approved
burden for this collection.
The USPTO estimates that the total annual (non-hour) cost burden will increase by
$9,321,801 for this renewal, from $27,958,968 currently reported on the OMB inventory
to the present $37,280,769 per year.
Summary of Changes Since the 60-Day Notice
The 60-Day Federal Register Notice, published in March 2011, reported that the
USPTO estimated it would receive 289,519 responses resulting in 48,469 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 the paper copies of the Response to Intent-to-Use (ITU)
Divisional Unit Office Action and the Petition to Revive with Request to Delete Section
1(b) Basis or to Delete ITU Goods/Services After NOA from 0 to 1. These changes
result in the present 289,521 responses and 48,471 burden hours being reported for
this submission. It also accounts for an additional $650 in respondent cost burden, from
15
$15,752,425 reported in the 60-Day Federal Register Notice to the present
$15,753,075.
Change in Respondent Cost Burden
In 2008, the estimated hourly rate for attorneys was $310. Using that rate, the reported
burden hours yielded a respondent cost burden of $10,752,040. This renewal reports
an estimated hourly rate of $325 for a respondent cost burden of $15,753,075, an
increase of $5,001,035. This increase is due to an increase in the estimated hourly rate
for attorneys, 11 additional requirements being added to the collection, as well as an
increase in total burden hours from 34,684 to 48,471.
Changes in Response and Burden Hours
The increase in burden hours for this renewal is due to a revised number of responses
and time estimates as an administrative adjustment and the addition of 11 new items
into the collection as a program change, as follows:
•
The USPTO estimates that the number of TEAS Trademark/Service Mark
Allegations of Use (Amendments to Allege Use/Statements of Use) submitted per
year will increase by 18,533 responses, from 54,992 to 73,525. Therefore, this
submission takes a burden increase of 8,482 hours as an administrative
adjustment.
•
The USPTO estimates that the number of paper Trademark/Service Mark
Allegations of Use (Amendments to Allege Use/Statements of Use) submitted per
year will decrease by 6,114 responses, from 10,475 to 4,361. Therefore, this
submission takes a burden decrease of 866 hours as an administrative
adjustment.
•
The USPTO estimates that the number of TEAS Requests for Extension of Time
to File a Statement of Use submitted per year will increase by 59,286 responses,
from 117,429 to 176,715. Therefore, this submission takes a burden
increase of 5,359 hours as an administrative adjustment.
•
The USPTO estimates that the number of paper Requests for Extension of Time
to File a Statement of Use submitted per year will decrease by 5,680 responses,
from 10,211 to 4,531. Therefore, this submission takes a burden decrease
of 966 hours as an administrative adjustment.
•
The USPTO estimates that the number of TEAS Petitions to Revive Abandoned
Applications – Failure to Respond Timely to an Office Action submitted per year
will increase by 7,381 responses, from 8,015 to 15,396. Therefore, this
submission takes a burden increase of 2,438 hours as an administrative
adjustment.
16
•
The USPTO estimates that the number of paper Petitions to Revive Abandoned
Applications – Failure to Respond Timely to an Office Action submitted per year
will decrease by 1,194 responses, from 2,004 to 810. Therefore, this
submission takes a burden decrease of 198 hours as an administrative
adjustment.
•
The USPTO estimates that the number of TEAS Petitions to Revive Abandoned
Applications – Failure to File Timely Statements of Use or Extension Requests
submitted per year will decrease by 7,205 responses, from 8,015 to 810.
Therefore, this submission takes a burden decrease of 503 hours as an
administrative adjustment.
•
The USPTO estimates that the number of paper Petitions to Revive Abandoned
Applications – Failure to File Timely Statements of Use or Extension Requests
submitted per year will decrease by 1,961 responses, from 2,004 to 43.
Therefore, this submission takes a burden decrease of 392 hours as an
administrative adjustment.
•
The USPTO estimates that the number of TEAS Requests to Delete Section 1(b)
Basis, Intent to Use submitted per year will increase by 280 responses, from
1,100 to 1,380. Therefore, this submission takes a burden increase of 55
hours as an administrative adjustment.
•
The USPTO estimates that the number of paper Requests to Delete Section 1(b)
Basis, Intent to Use submitted per year will decrease by 125 responses, from 194
to 64. Therefore, this submission takes a burden decrease of 2 hours as an
administrative adjustment.
•
The USPTO estimates that the number of TEAS Requests for Express
Abandonment (Withdrawal) of Application submitted per year will decrease by
952 responses, from 6,500 to 5,548. Even though there was a decrease in
responses, the time increased causing an increase in burden hours. Therefore,
this submission takes a burden increase of 119 hours as an administrative
adjustment.
•
The USPTO estimates that the number of paper Requests for Express
Abandonment (Withdrawal) of Application submitted per year will decrease by
4,409 responses, from 4,686 to 277. Therefore, this submission takes a
burden decrease of 281 hours as an administrative adjustment.
•
The USPTO is adding the Request to Divide in the TEAS Global format into the
collection. The USPTO estimates that it will take 8 minutes to complete this
requirement and that it will receive 5,211 responses per year. Therefore, this
submission takes a total burden increase of 677 hours as a program
change.
17
•
The USPTO estimates that the number of paper Requests to Divide submitted
per year will decrease by 1,729 responses, from 1,990 to 261. Therefore, this
submission takes a burden decrease of 115 hours as an administrative
adjustment.
•
The USPTO is adding the Response to Intent-to-Use (ITU) Divisional Unit Office
Action in the TEAS Global format into the collection. The USPTO estimates that
it will take 30 minutes to complete this requirement and that it will receive 2
responses per year. Therefore, this submission takes a total burden
increase of 1 hour as a program change.
•
The USPTO is adding the Response to Intent-to-Use (ITU) Divisional Unit Office
Action in the paper format into the collection. The USPTO estimates that it will
take 30 minutes to complete this requirement and that it will receive 1 responses
per year. Therefore, this submission takes a total burden increase of 1 hour
as a program change.
•
The USPTO is adding the Response to Petition to Revive Deficiency Letter in the
TEAS Global format into the collection. The USPTO estimates that it will take 12
minutes to complete this requirement and that it will receive 100 responses per
year. Therefore, this submission takes a total burden increase of 20 hours
as a program change.
•
The USPTO is adding the Response to Petition to Revive Deficiency Letter in the
paper format into the collection. The USPTO estimates that it will take 15
minutes to complete this requirement and that it will receive 5 responses per
year. Therefore, this submission takes a total burden increase of 1 hour as
a program change.
•
The USPTO is adding the Petition to the Director Under Trademark Rule 2.146 in
the TEAS Global format into the collection. The USPTO estimates that it will take
15 minutes to complete this requirement and that it will receive 310 responses
per year. Therefore, this submission takes a total burden increase of 78
hours as a program change.
•
The USPTO is adding the Petition to the Director Under Trademark Rule 2.146 in
the paper format into the collection. The USPTO estimates that it will take 20
minutes to complete this requirement and that it will receive 16 responses per
year. Therefore, this submission takes a total burden increase of 5 hours
as a program change.
•
The USPTO is adding the Due Diligence Petition Under Trademark Rule 2.66 in
the TEAS Global format into the collection. The USPTO estimates that it will take
15 minutes to complete this requirement and that it will receive 140 responses
per year. Therefore, this submission takes a total burden increase of 35
hours as a program change.
18
•
The USPTO is adding the Due Diligence Petition Under Trademark Rule 2.66 in
the paper format into the collection. The USPTO estimates that it will take 20
minutes to complete this requirement and that it will receive 7 responses per
year. Therefore, this submission takes a total burden increase of 2 hours
as a program change.
•
The USPTO is adding the Petition to Revive with Request to Delete Section 1(b)
Basis or to Delete ITU Goods/Services After NOA in the TEAS Global format into
the collection. The USPTO estimates that it will take 30 minutes to complete this
requirement and that it will receive 2 responses per year. Therefore, this
submission takes a total burden increase of 1 hour as a program change.
•
The USPTO is adding the Petition to Revive with Request to Delete Section 1(b)
Basis or to Delete ITU Goods/Services After NOA in the 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 previous submission included an Other Petitions category. The USPTO is
proposing to delete that requirement and is introducing specific petitions outlined
above in its place. Therefore, this collection takes a burden decrease of 165
hours as a program change.
A total of 13,787 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, one requirement being deleted from the collection,
and 11 requirements being added into the collection. This results in a total net
burden increase of 13,130 hours as an administrative adjustment and 657 hours
as a program change.
Changes in Annualized (Non-hour) Costs
For this renewal, the USPTO estimates that the total annual (non-hour) costs will
increase by $9,321,801, from $27,958,968 currently reported on the OMB inventory to
the present $37,280,769. This increase is due to adjustments in responses, the
addition of 11 new requirements, and an adjustment for postage fees, offset by a
deletion of one requirement. Therefore, this collection has an increase in annual
(non-hour) cost burden of $9,321,801, with an increase of $8,803,297 due to
administrative adjustments, and a net increase of $518,504 in program changes.
16.
Project Schedule
There is no plan to publish this information for statistical use.
19
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.
20
References
A.
B.
C.
D.
E.
F.
G.
H.
I.
J.
K.
L.
M.
USPTO Information Quality Guidelines
TEAS Trademark/Service Mark Allegation of Use (Amendment to Allege Use/Statement
of Use) (Form 1553)
TEAS Request for Request for Extension of Time to File a Statement of Use (Form
1581)
TEAS Petition to Revive Abandoned Application – Failure to Respond Timely to Office
Action (Form 2194)
Petition to Revive Abandoned Application – Failure to File Timely Statement of Use or
Extension Request (Form 2195)
TEAS Request to Delete Section 1(b) Basis, Intent to Use (Form 2200)
TEAS Request for Express Abandonment (Withdrawal) of Application (Form 2202)
Request to Divide Application (TEAS Global)
Response to Intent-to-Use (ITU) Divisional Unit Office Action (TEAS Global)
Response to Petition to Revive Deficiency Letter (TEAS Global)
Petition to the Director Under Trademark Rule 2.146 (TEAS Global)
Due Diligence Under Trademark Rule 1.66 (TEAS Global)
Petition to Revive with Request to Delete Section 1(b) Basis or to Delete ITU
Goods/Services After NOA (TEAS Global)
21
| File Type | application/pdf |
| File Title | SF-12 SUPPORTING STATEMENT |
| Author | Galaxy Scientific Corporation |
| File Modified | 2011-07-19 |
| File Created | 2011-07-19 |