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pdfSUPPORTING STATEMENT
United States Patent and Trademark Office
Trademark Petitions
OMB CONTROL NUMBER 0651-0061
(June 2012)
A.
JUSTIFICATION
1.
Necessity of Information Collection
The United States Patent and Trademark Office (USPTO) administers the Trademark
Act, 15 U.S.C. § 1051 et seq., which provides for the registration of trademarks, service
marks, collective trademarks and collective service marks, collective membership
marks, and certification marks. Individuals and businesses that use or intend to use
such marks in commerce may file an application to register their marks with the USPTO.
Individuals and businesses may also submit various communications to the USPTO,
including letters of protest, requests to make special, responses to petition inquiry
letters, petitions to make special, requests to restore a filing date, and requests for
reinstatement.
A letter of protest is an informal procedure whereby third parties who object to the
registration of a mark in a pending application may bring to the attention of the USPTO
evidence bearing on the registrability of the mark. A letter of protest must identify the
application being protested and the proposed grounds for refusing registration and
include relevant evidence to support the protest.
A request to make special may be submitted where an applicant requests that initial
examination of an application be advanced out of its regular order because the mark in
the application was the subject of an inadvertently cancelled or expired previous
registration.
A response to a petition inquiry letter is submitted by a petitioner who is responding to a
notice of deficiency that the USPTO issued after receiving an incomplete Petition to the
Director. A petition may be considered incomplete if, for example, it does not include
the fee required by 37 CFR 2.6 or if it includes an unverified assertion that is not
supported by evidence.
The USPTO generally examines applications in the order in which they are received. A
petition to make special is a request by the applicant to advance the initial examination
of an application out of its regular order.
A request to restore a filing date is submitted by an applicant who previously filed an
application that was denied a filing date. The request must include evidence showing
that the applicant is entitled to the earlier filing date.
If an applicant has proof that an application was inadvertently abandoned due to a
USPTO error, an applicant may file a request to reinstate the application instead of a
formal petition to revive. To support such a request, the applicant must include clear
evidence of the USPTO error.
The information in this collection can be submitted in paper format or electronically
through the Trademark Electronic Application System (TEAS). The USPTO has
developed a TEAS Global Form format that permits the agency to collect information
electronically for which a TEAS form with dedicated data fields is not yet available. With
the introduction of the TEAS Global Forms, the information in this collection can be
collected in paper format or electronically using the TEAS Global Forms.
As part of this renewal, the USPTO proposes to add four TEAS Global Forms – for
responses to petition inquiry letter, petitions to make special, requests to restore filing
date, and requests for reinstatement – into the collection. The paper equivalents for the
response to petition inquiry letter, petition to make special, request to restore filing date,
and request for reinstatement will be added as well.
Although this collection does have electronic forms, there are no official paper forms for
these filings. Individuals and businesses can submit their own paper forms following the
USPTO’s rules and guidelines to ensure that all of the necessary information is
provided.
Table 1 identifies the proposed statutory and regulatory provisions that require the
USPTO to collect this information:
Table 1: Information Requirements for Trademark Petitions
Requirement
Statute
Rule
Letter of Protest
15 U.S.C. §§ 1051 and 1123
37 CFR 2.146
Request to Make Special
15 U.S.C. §§ 1051 and 1123
37 CFR 2.146
Response to Petition to Director Inquiry Letter
15 U.S.C. §§ 1051 and 1123
37 CFR 2.146
Petition to Make Special
15 U.S.C. §§ 1051 and 1123
37 CFR 2.146
Request to Restore Filing Date
15 U.S.C. §§ 1051 and 1123
37 CFR 2.146
Request for Reinstatement
15 U.S.C. §§ 1051 and 1123
37 CFR 2.146
2.
Needs and Uses
The USPTO uses the information described in this collection to process letters of
protest, requests to make special, responses to petition inquiry letters, petitions to make
special, requests to restore filing date, and requests for reinstatement. The information
is used by the public for a variety of private business purposes related to establishing
and enforcing trademark rights. Information relating to the registration of a trademark is
made publicly available by the USPTO. The release of information in a letter of protest
is controlled and may be available upon request only.
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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., OMB and specific
operating unit guidelines.
Table 2 lists the information identified in this collection and explains how this information
is used by the public and by the USPTO:
Table 2: Needs and Uses of Trademark Petitions
Form and Function
Letter of Protest
(TEAS Global)
Form #
None
Needs and Uses
Letter of Protest
(Paper)
No Form
Request to Make Special
(TEAS Global)
None
Request to Make Special
(Paper)
No Form
Response to Petition to Director Inquiry
Letter
(TEAS Global)
None
Response to Petition to Director Inquiry
Letter
(Paper)
No Form
Petition to Make Special
(TEAS Global)
None
Petition to Make Special
(Paper)
No Form
Request to Restore Filing Date
(TEAS Global)
None
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Used by the public to electronically submit an objection
regarding a pending application.
Used by the USPTO to decide whether the protest should be
accepted.
Used by the public to submit an objection regarding a pending
application.
Used by the USPTO to decide whether the protest should be
accepted.
Used by the public to submit an electronic request to advance
initial examination of an application out of its regular order
because the mark in the application was the subject of an
inadvertently cancelled or expired previous registration.
Used by the USPTO to act upon a request to make special.
Used by the public to submit a request to advance initial
examination of an application out of its regular order because
the mark in the application was the subject of an inadvertently
cancelled or expired previous registration.
Used by the USPTO to act upon a request to make special.
Used by the public to respond electronically to a notice of
deficiency that the USPTO issued after the filing of an
incomplete Petition to the Director.
Used by the USPTO to collect information that the petitioner
did not supply in the original Petition to the Director and which
the USPTO need to complete the review of the petition.
Used by the public to respond electronically to a notice of
deficiency that the USPTO issued after the filing of an
incomplete Petition to the Director.
Used by the USPTO to collect information that the petitioner
did not supply in the original Petition to the Director and which
the USPTO need to complete the review of the petition.
Used by the public to submit an electronic petition seeking to
advance initial examination of an application out of its regular
order.
Used by the USPTO to act upon a petition to make special.
Used by the public to submit a petition seeking to advance
initial examination of an application out of its regular order.
Used by the USPTO to act upon a petition to make special.
Used by the public to electronically submit evidence that a
previously filed application that was denied a filing date met the
filing date requirements and to request that the earlier filing
date be restored.
Used by the USPTO to act upon a request to restore a filing
date.
Request to Restore Filing Date
(Paper)
No Form
Request for Reinstatement
(TEAS Global)
None
Request for Reinstatement
(Paper)
No Form
3.
Used by the public to submit evidence that a previously filed
application that was denied a filing date met the filing date
requirements and to request that the earlier filing date be
restored.
Used by the USPTO to act upon a request to restore a filing
date.
Used by the public to submit an electronic request for
reinstatement of an application that was abandoned.
Used by the USPTO to act upon a request for reinstatement.
Used by the public to submit a request for reinstatement of an
application that was abandoned.
Used by the USPTO to act upon a request for reinstatement.
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
TEAS forms covering items that are currently collected only in paper. A TEAS Global
Form allows 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.
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
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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 for the user to choose from
several search tools, is updated daily, and is easy to use.
The USPTO also maintains an online database called Trademark Status & Document
Retrieval (TSDR), which features information regarding the status of trademark
applications and registrations as well as 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 application and registration files are
present in TSDR.
These systems are all accessible on the USPTO Web site. 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 letters of protest, requests to make special,
responses to petition inquiry letters, petitions to make special, requests to restore filing
date, and requests for reinstatement are submitted to the USPTO. This collection does
not solicit any data already available at the USPTO. This collection does not create a
duplication of effort.
5.
Minimizing the Burden to Small Entities
The USPTO believes that the submission of the information provided places no undue
burden on small business or other small entities. The same information is required from
every customer and is not available from any other source.
6.
Consequences of Less Frequent Collection
This information collection could not be conducted less frequently, since the information
is collected only when voluntarily submitted by the public. If the information were not
collected, the public would not be able to submit letters of protest, requests to make
special, responses to petition inquiry letters, petitions to make special, requests to
restore filing date, and requests for reinstatement and the USPTO could not comply with
the requirements of the Trademark Act 15 U.S.C. §§ 1051 and 1123 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.
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8.
Consultation Outside the Agency
The 60-Day Notice was published in the Federal Register on February 22, 2012 (77 Fed
Reg. 10482). The public comment period ended on April 23, 2012. No public
comments were received.
Large and well-organized bar associations frequently communicate their views to the
USPTO. Also, the Trademark Public Advisory Committee (T-PAC) was created by the
American Inventors Protection Act of 1999 to advise the Director of the USPTO on the
agency’s operations, including its goals, performance, budget, and user fees. T-PAC
includes nine voting members who are appointed by and serve at the pleasure of the
Secretary of Commerce. The statute also provides non-voting membership on the
Committee for the agency’s three recognized unions. Members include inventors,
lawyers, corporate executives, entrepreneurs, and academicians with significant
experience in management, finance, science, technology, labor relations, and
intellectual property issues. The members of T-PAC reflect the broad array of USPTO
stakeholders and embrace the USPTO’s e-government initiative. This diversity of
interests is an effective tool in helping the USPTO nurture and protect the intellectual
property that is the underpinning of America’s strong economy. Additional feedback
solicited through the USPTO-monitored mailbox of [email protected] helped the
USPTO determine that its customers were very interested in the “Global Form format”
approach to help bridge the gap where electronic forms with dedicated data fields have
yet to be developed. The Global Forms, while not quite as beneficial to the USPTO as
a TEAS form with dedicated data fields, nonetheless provides many advantages to both
the applicant and the USPTO.
9.
Payment or Gifts to Respondents
This information collection does not involve a payment or gift to any respondent.
10.
Assurance of Confidentiality
Trademark applications and registrations are open to public inspection. Confidentiality
is not required in the processing of this information.
The USPTO Web Privacy Policy Statement explains how the USPTO handles any
personal information collected from the public through the web site, and how it handles
e-mails. Additionally, the statement also explains what information is collected through
the USPTO’s Kids Pages, and whether and why the USPTO uses cookies to collect
information.
11.
Justification for Sensitive Questions
None of the required information in this collection is considered to be of a sensitive
nature.
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12.
Estimate of Hour and Cost Burden to Respondents
Table 3 calculates the anticipated burden hours and costs of this information collection
to the public, based on the following factors:
Respondent Calculation Factors
The USPTO estimates that it will receive approximately 2,135 responses per year for
this collection, with 912 or 43% filed electronically. Estimates are based upon agency
long-standing institutional knowledge of and experience with the type of information
collected and long-standing representative rates of accrual or reduction of similar or like
information.
Burden Hour Calculation Factors
The USPTO estimates that it will take the public an average of 30 minutes (0.50 hours)
to one hour to complete the collections of information described in this submission,
depending on the nature of the information. This includes time to gather the necessary
information, create the documents, and mail the completed paper request. The time
estimates shown for the electronic forms in this collection are based on the average
amount of time needed to complete and electronically file the associated information.
Estimates are based upon agency long-standing institutional knowledge of and
experience with the type of information collected and the length of time necessary to
complete similar or like information.
Cost Burden Calculation Factors
The USPTO uses a professional rate of $371 per hour for respondent rate cost burden
calculations, which is the mean rate for attorneys in private firms as shown in the 2011
AIPLA Report of the Economic Survey published by the American Intellectual Property
Law Association (AIPLA). The USPTO expects that the information in this collection will
be prepared by attorneys, although some submissions may be prepared by pro se
registrants.
Table 3: Burden Hour/Burden Cost to Respondents for Trademark Petitions
Item
Hours
(a)
Responses
(yr)
(b)
Burden
(hrs/yr)
(c)
(a) x (b)
Rate
($/hr)
(d)
Total Cost
($/hr)
(e)
(c) x (d)
Letter of Protest
(TEAS Global)
0.83
187
155
$371.00
$57,505.00
Letter of Protest
(Paper)
1.00
1,063
1,063
$371.00
$394,373.00
Request to Make Special
(TEAS Global)
0.50
90
45
$371.00
$16,695.00
Request to Make Special
(Paper)
0.67
10
7
$371.00
$2,597.00
Response to Petition to Director Inquiry Letter
(TEAS Global)
0.50
19
10
$371.00
$3,710.00
Response to Petition to Director Inquiry Letter
(Paper)
0.67
5
3
$371.00
$1,113.00
Petition to Make Special
(TEAS Global)
0.50
135
68
$371.00
$25,228.00
7
Item
Hours
(a)
Responses
(yr)
(b)
Burden
(hrs/yr)
(c)
(a) x (b)
Rate
($/hr)
(d)
Total Cost
($/hr)
(e)
(c) x (d)
Petition to Make Special
(Paper)
0.67
15
10
$371.00
$3,710.00
Request to Restore Filing Date
(TEAS Global)
0.50
1
1
$371.00
$371.00
Request to Restore Filing Date
(Paper)
0.67
10
7
$371.00
$2,597.00
Request for Reinstatement
(TEAS Global)
0.50
480
240
$371.00
$89,040.00
Request for Reinstatement
(Paper)
0.67
120
80
$371.00
$29,680.00
Total
- - - -
2,135
1,689
- - - -
$626,619.00
13.
Total Annual (Non-hour) Cost Burden
The total (non-hour) respondent cost burden for this collection is estimated to be
$15,551 per year, which includes $15,000 in fees and $551 in postage.
Fees
The only item in this collection with a filing fee is the Petition to Make Special, with a
total of $15,000 per year.
150 responses for the Petition to Make Special, at $100 each = $15,000.
Postage Costs
The non-electronic items in this collection have associated first-class postage costs
when submitted by mail, for a total of $551 per year.
Table 4: Postage Cost to Respondents for Trademark Petitions
Item
Responses
(yr)
(a)
Letter of Protest
Postage Costs
(b)
Total Cost
(yr)
(a x b)
1,063
$0.45
$478.00
10
$0.45
$5.00
5
$0.45
$2.00
Petition to Make Special
15
$0.45
$7.00
Request to Restore Filing Date
10
$0.45
$5.00
120
$0.45
$54.00
1,223
- - - -
$551.00
Request to Make Special
Response to Petition to Director Inquiry Letter
Request for Reinstatement
TOTAL
8
14.
Annual Cost to the Federal Government
The USPTO estimates that it takes a GS-15, step 5, 30 minutes (0.50 hours) to process
the Letter of Protest and the Response to Petition to Director Inquiry Letter when they
are submitted via TEAS and 40 minutes (0.67 hours) when they are submitted on paper.
The hourly rate for a GS-15, step 5 is currently $67.21. When 30% is added to account
for a fully loaded hourly rate (benefits and overhead), the cost per hour is $87.37
($67.21+ $20.16).
The USPTO estimates that it takes a GS-11, step 5, 30 minutes (0.50 hours) to process
the Request to Make Special and the Request for Reinstatement when they are
submitted via TEAS and 40 minutes (0.67 hours) when they are submitted on paper.
The hourly rate for a GS-11, step 5 is currently $33.92. When 30% is added to account
for a fully loaded hourly rate (benefits and overhead), the cost per hour is $44.10
($33.92+ $10.18).
The USPTO estimates that it takes a GS-11, step 5, 20 minutes (0.33 hours) to process
the Petition to Make Special and the Request to Restore Filing Date when they are
submitted via TEAS and 30 minutes (0.50 hours) when they are submitted on paper.
The hourly rate for a GS-11, step 5 is currently $33.92. When 30% is added to account
for a fully loaded hourly rate (benefits and overhead), the cost per hour is $44.10
($33.92+ $10.18).
Estimates of the number of respondents are based upon agency long-standing
institutional knowledge of and experience with the type of information collected and
long-standing representative rates of accrual or reduction of similar or like information.
Estimates of the number of hours are based upon agency long-standing institutional
knowledge of and experience with the type of information collected and the length of
time necessary to complete similar or like information.
Table 5 calculates the processing hours and costs of this information collection to the
Federal Government:
Table 5: Burden Hour/Burden Cost to the Federal Government for Trademark Petitions
Item
Hours
(a)
Responses
(yr)
(b)
Burden
(hrs/yr)
(c)
(a) x (b)
Rate
($/hr)
(d)
Total Cost
($/hr)
(e)
(c) x (d)
Letter of Protest (TEAS Global)
0.50
187
94
$87.37
$8,213.00
Letter of Protest (Paper)
0.67
1,063
712
$87.37
$62,207.00
Request to Make Special (TEAS Global)
0.50
90
45
$44.10
$1,985.00
Request to Make Special (Paper)
0.67
10
7
$44.10
$309.00
Response to Petition to Director Inquiry Letter
(TEAS Global)
0.50
19
10
$87.37
$874.00
Response to Petition to Director Inquiry Letter
(Paper)
0.67
5
3
$87.37
$262.00
9
Item
Hours
(a)
Responses
(yr)
(b)
Burden
(hrs/yr)
(c)
(a) x (b)
Rate
($/hr)
(d)
Total Cost
($/hr)
(e)
(c) x (d)
Petition to Make Special
(TEAS Global)
0.33
135
45
$44.10
$1,985.00
Petition to Make Special
(Paper)
0.50
15
8
$44.10
$353.00
Request to Restore Filing Date
(TEAS Global)
0.33
1
1
$44.10
$44.00
Request to Restore Filing Date
(Paper)
0.50
10
5
$44.10
$221.00
Request for Reinstatement
(TEAS Global)
0.50
480
240
$44.10
$10,584.00
Request for Reinstatement
(Paper)
0.67
120
80
$44.10
$3,528.00
2,135
1,250
- - - - -
$90,565.00
Total
15.
- - - - -
Reason for Change in Burden
Summary of Changes Since the Previous Renewal
OMB previously approved the renewal of this information collection in September of
2009 with 953 responses and 862 burden hours, and $209 in annual (non-hour) costs.
There have been no interim approvals.
For this renewal, the USPTO estimates that the total annual responses will be 2,135
and the total annual burden hours will be 1,689. This increase of 827 burden hours is
due to both administrative adjustments and program changes.
The currently approved annual (non-hour) cost burden for this collection is $209. For
this renewal, the USPTO estimates that the total annual (non-hour) costs will be
$15,551. This increase of $15,342 is due to both administrative adjustments and
program changes.
Change in Burden Estimates Since the 60-Day Federal Register Notice
There has been no change to the estimated responses and burden hours since the
publication of the 60-Day Federal Register Notice. However, the respondent cost
burden has increased by $52,359 due to an increase in the estimated hourly rate.
The 60-Day Federal Register Notice reported total (non-hour) cost burden in the amount
of $15,550. (Non-hour) cost burden is being increased in this submission to $15,551
due to an adjustment to the postage costs.
10
Changes in Respondent Cost Burden
The total respondent cost burden for this collection has increased by $359,399, from
$267,220 to $626,619, from the previous renewal of this collection in September 2009,
due to:
Increase in estimated hourly rate. The 2009 renewal used an estimated rate
of $310 per hour for attorneys to prepare the information in this collection. For
the current renewal, the USPTO is using the updated rate of $371 per hour for
attorneys.
Increase in estimated burden hours. The total estimated burden hours have
increased from 862 in the 2009 renewal to 1,689 for the current renewal due to
an increase in the estimated number of annual filings for this collection and the
addition of four new TEAS Global forms and their paper equivalents.
Changes in Responses and Burden Hours
For this renewal, the USPTO estimates that the total annual responses will increase by
1,182 (from 953 to 2,135) and the total burden hours will increase by 827 (from 862 to
1,689) from the currently approved burden for this collection. These changes are due to
the following administrative adjustments and program changes:
Administrative Adjustments:
Increase of 397 estimated annual responses for the Letter of Protest and the
Request to Make Special from 953 to 1,350; a burden increase of 408 hours.
Program Changes:
Increase of 785 estimated annual responses for the four new TEAS Global
forms being added to the collection along with their paper equivalents; a burden
increase of 419 hours.
Changes in Annual (Non-Hour) Costs
For this renewal, the USPTO estimates that the annual (non-hour) costs will increase by
$15,342, from $209 to $15,551, due to administrative adjustments and program
changes, as follows:
Administrative Adjustments:
Increase of $274 in postage costs. This collection is currently approved with a
total of $209 in postage costs for the two original requirements in the collection.
First-class postage has increased slightly since 2009 along with the increase in
the responses, bringing the postage costs for the two original requirements to
$483.
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Program Changes:
16.
Increase of $68 in postage costs. Postage for the paper versions of the four
new requirements in this collection amounts to $68.
Increase of $15,000 in filing fees. For this renewal, the USPTO estimates that
filing fees will be added to this collection as a result of a new requirement, the
Petition to Make Special, in the amount of $15,000.
Project Schedule
There is no plan to publish this information for statistical use.
17.
Display of Expiration Date of OMB Approval
The forms in this information collection will display the OMB Control Number and the
date on which OMB’s approval of this information collection expires.
18.
Exception to the Certificate Statement
This collection of information does not include any exceptions to the certificate
statement.
B.
COLLECTIONS OF INFORMATION EMPLOYING STATISTICAL METHODS
This collection of information does not employ statistical methods.
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| File Type | application/pdf |
| File Title | SF-12 SUPPORTING STATEMENT |
| Author | Galaxy Scientific Corporation |
| File Modified | 2012-07-19 |
| File Created | 2012-07-19 |