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pdfSUPPORTING STATEMENT
United States Patent and Trademark Office
Trademark Trial and Appeal Board (TTAB) Actions
OMB CONTROL NO. 0651-0040
(March 2014)
A.
JUSTIFICATION
1.
Necessity of Information Collection
This collection of information is required by the Trademark Act of 1946, Sections 13, 14,
and 20, 15 U.S.C.1063, 1064, and 1070, respectively. Under the Trademark Act, any
individual or entity that adopts a trademark or service mark to identify its goods or
services may apply to federally register its mark. The mark will remain on the register
for ten years and is renewable in ten-year increments. Section 14 of the Trademark Act
allows individuals and entities to file a petition to cancel a registration of a mark, while
Section 13 allows individuals and entities who believe that they would be damaged by
the registration of a mark to file an opposition, or an extension of time to file an
opposition, to the registration of a mark. Section 20 of the Trademark Act allows
individuals and entities to file an appeal from any final decision of the Trademark
Examining Attorney assigned to review an application for registration of a mark.
The United States Patent and Trademark Office (USPTO) administers the Trademark
Act pursuant to 37 CFR Part 2, which contains the various rules that govern the filing of
petitions to cancel the registration of a mark, notices of opposition to the registration of a
mark, extensions of time to file an opposition, appeals, and other papers filed in
connection with inter partes and ex parte proceedings.
These petitions, notices, extensions, and additional papers are filed with the Trademark
Trial and Appeal Board (TTAB). The TTAB decides inter partes cases and ex parte
appeals. The TTAB is an administrative tribunal empowered to determine the right to
register as the issue may be presented in such cases. The Chief Administrative
Trademark Judge and 20 administrative trademark judges decide proceedings filed with
the TTAB. A panel of three judges decides each case when it is ready for final decision
on the merits. The TTAB follows the Federal Rules of Civil Procedure when applicable,
and the “Trademark Rules” in 37 CFR Part 2.
The USPTO is also part of the Madrid Protocol, an international agreement governing
trademark protection, and accepts these international filings. Under the Madrid
Protocol, parties can file oppositions to extensions of protection under the Madrid
Protocol, as well as file requests for extensions of time to oppose these extensions of
protection. Oppositions and extensions filed under the Madrid Protocol must be filed
electronically through the Electronic System for Trademark Trials and Appeals (ESTTA).
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. This information is important to the public, as both common law
trademark owners and Federal trademark registrants must actively protect their own
rights.
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.
Table 1 lists the specific statutes and regulations authorizing the USPTO to collect this
information and outlines how this information is used by the public and the USPTO:
Table 1: Information Requirements and Needs and Uses of Information Collected
Item
#
1
Requirement
Petition to Cancel
Statute
15 U.S.C.
§ 1064
Rule
Form #
37 CFR 2.111 and
2.112
No Form
Associated;
Suggested
Format
Needs and Uses
1
Electronic Petition
to Cancel
15 U.S.C.
§ 1064
37 CFR 2.111 and
2.112
PTO 2188
2
Notice of
Opposition
15 U.S.C.
§ 1063
37 CFR 2.101 and
2.104
No Form
Associated;
Suggested
Format
2
Used by the public to request the
cancellation of a trademark
registration in whole or in part.
Used by the public to submit the
required fee.
Used by the USPTO to institute a
cancellation proceeding and to
notify the registrant of the
grounds for cancellation.
Used by the public to request the
cancellation of a trademark
registration in whole or in part
electronically.
Used by the public to submit the
required fee electronically.
Used by the USPTO to institute a
cancellation proceeding and to
notify the registrant of the
grounds for cancellation
electronically.
Used by the public to oppose
registration of a pending
trademark application within 30
days after the publication of the
application being opposed or
within the extension of time for
filing an opposition.
Used by the USPTO to process
an opposition to the registration of
a mark.
Item
#
2
Requirement
Statute
Electronic Notice of
Opposition
15 U.S.C.
§ 1063
Rule
Form #
37 CFR 2.101 and
2.104
PTO 2120
Needs and Uses
3
Extension of Time
to File an
Opposition
15 U.S.C.
§ 1063
37 CFR 2.102
No Form
Associated
3
Electronic Request
for Extension of
Time to File an
Opposition
15 U.S.C.
§ 1063
37 CFR 2.102
PTO 2153
3
Used by the public to submit an
opposition to the registration of a
pending trademark application
within 30 days after the
publication of the application
being opposed or within the
extension of time for filing an
opposition electronically.
Used by the USPTO to process
an opposition to the registration of
a mark electronically.
Used by the public to request
additional time to file an
opposition to a trademark
registration prior to the expiration
of the 30-day period.
Used by the USPTO to extend
the time for filing an opposition an
additional 30 days, and to grant
further extensions in accordance
with TTAB rules.
Used by the USPTO to notify the
applicant of each extension of
time for filing an opposition.
Used by the public to
electronically request additional
time to file an opposition to a
trademark registration prior to the
expiration of the 30-day period.
Used by the USPTO to extend
the time for filing an opposition an
additional 30 days, and to grant
further extensions in accordance
with TTAB rules.
Used by the USPTO to notify the
applicant of each extension of
time for filing an opposition.
Item
#
4
Requirement
Statute
Papers in Inter
Partes Cases
Answers
Amendments
to Pleadings
Amendment of
Application or
Registration
during
Proceeding
Motions (such
as consent
motions,
motions to
extend,
motions to
suspend, etc.)
Evidence
Briefs
Surrender of
Registration
Abandonment
of Application
Documents
Related to
Concurrent
Use
Applications
Notice of
Intent to
Appeal a
TTAB
Decision
Not
Applicable
Rule
Form #
No Form
Associated
Needs and Uses
37 CFR 2.106 & 2.114
37 CFR 2.107 & 2.115
37 CFR 2.133
37 CFR 2.120, 2.125,
2.127 and 2.129
37 CFR 2.122-125
37 CFR 2.128
37 CFR 2.134
37 CFR 2.135
37 CFR 2.299
37 CFR 2.145
4
Used by the public to file papers,
such as motions and briefs,
needed to prosecute inter partes
cases.
Used by the USPTO to process
inter partes cases.
Used by the USPTO as a
suspense copy for appeals of
TTAB decisions filed with a
federal court.
Item
#
4
5
Requirement
Statute
Electronic Papers
in Inter Partes
Cases
Answers
Amendments
to Pleadings
Amendment of
Application or
Registration
during
Proceeding
Motions (such
as consent
motions,
motions to
extend,
motions to
suspend, etc.)
Evidence
Briefs
Surrender of
Registration
Abandonment
of Application
Documents
Related to
Concurrent
Use
Applications
Notice of
Intent to
Appeal a
TTAB
Decision
Not
Applicable
Notice of Appeal
15 U.S.C.
§ 1070
Rule
Form #
PTO 2151
Needs and Uses
37 CFR 2.106 & 2.114
37 CFR 2.107 & 2.115
37 CFR 2.133
37 CFR 2.120, 2.125,
2.127 and 2.129
37 CFR 2.122-125
37 CFR 2.128
37 CFR 2.134
37 CFR 2.135
37 CFR 2.299
37 CFR 2.145
37 CFR 2.102
No Form
Associated
5
Electronic Notice of
Appeal
15 U.S.C.
§ 1070
37 CFR 2.102
PTO 2190
6
Miscellaneous Ex
Parte Papers
Used by the public to
electronically file papers, such as
motions and briefs, needed to
prosecute inter partes cases.
Used by the USPTO to process
inter partes cases.
Used by the USPTO as a
suspense copy for appeals of
TTAB decisions filed with a
federal court.
Not
Applicable
37 CFR 2.144
No Form
Associated
5
Used by the public to appeal a
final decision of the Trademark
Examining Attorney refusing
registration of a trademark within
six months of the mailing date of
the final refusal to register the
mark.
Used by the public to submit the
required fees.
Used by the USPTO to institute
and process an appeal.
Used by the public to
electronically file an appeal of the
Trademark Examining Attorney’s
final decision refusing registration
of a trademark within six months
of the mailing date of the final
refusal to register the mark.
Used by the public to submit the
required fees.
Used by the USPTO to institute
and process an appeal.
Used by the public to file papers
in ex parte appeal cases.
Used by the USPTO to process
ex parte cases.
Item
#
6
Requirement
Electronic
Miscellaneous Ex
Parte Papers
Statute
Not
Applicable
Rule
Form #
37 CFR 2.144
PTO 2189
Needs and Uses
3.
Used by the public to file papers
in ex parte appeal cases
electronically.
Used by the USPTO to process
ex parte cases.
Use of Information Technology
The information in this collection can be submitted in paper format or electronically
through ESTTA when a party files a petition to cancel a trademark registration, an
opposition to the registration of a trademark, a request to extend the time to file an
opposition, a notice of appeal, or additional papers for inter partes and ex parte
proceedings with the USPTO. However, notices of opposition and extensions of time to
file notices of opposition against the extensions of protection under the Madrid Protocol
must be filed electronically through ESTTA. Only notices of appeal for ex parte appeals
can be submitted by facsimile, in accordance with 37 CFR 2.195(d)(3).
ESTTA can be accessed through the USPTO’s web site and allows filers to timely
complete and submit forms to the TTAB electronically. They can also print out the
completed form and mail it to the USPTO. ESTTA provides step-by-step instructions
and help screens for completing the forms. The system prompts the filer to validate the
required fields and sign the submission before it is electronically submitted to the TTAB.
Upon transmission, the form will be assigned an ESTTA tracking number. The forms
that are filed through ESTTA are time-stamped with the official filing date when received
on the USPTO server. In cases where a fee is required, the time-stamp is applied when
the payment process is completed and the receipt screen is displayed. The filing date is
also controlled by Eastern Standard Time. The official filing date and time can be found
on the confirmation web screen and in the e-mail confirmation. Once the form has been
submitted electronically, the USPTO will immediately provide the sender with an
acknowledgment of receipt via e-mail.
The information submitted through ESTTA moves directly into the Trademark Trial and
Appeal Board Information System (TTABIS), the TTAB’s electronic workflow system.
Electronically submitted forms need not be processed or scanned by hand, thereby
eliminating the delays caused by the processing and scanning of paper filings. The
TTAB’s electronic workflow system processes all incoming and outgoing documents
electronically and permits staff to prepare correspondence, track cases, generate
reports for management, and monitor proceedings in an effective, secure, and timely
manner. Information regarding TTAB proceedings is available within the USPTO over
the Intranet and by the public over the Internet via TTABVue. TTABIS users will have
the ability to add electronic notes and highlights directly to TTABIS electronic
documents.
6
The TTAB disseminates the information collected through the notices of opposition,
extensions of time to oppose, petitions to cancel, and miscellaneous papers in inter
partes and ex parte proceedings electronically through TTABVue. This system can be
accessed through the TTAB’s homepage on the USPTO’s website. TTABVue provides
online images of the TTAB filings indexed by prosecution history entry. It allows users
to view proceedings with scanned incoming filings from either paper or Internet filings.
Other features include the capability to print and enlarge the incoming document to a
readable size.
TTABIS allows the public and the TTAB staff to retrieve information concerning TTAB
proceedings from the TTAB’s internal databases electronically using the Internet. Staff
and customers can search, view, and print specific information using their browser.
This provides a single point of access for querying information through a user-friendly
interface. Information can be retrieved from TTABVue using a proceeding number, a
plaintiff or defendant name, the mark, any words within an index, the trademark serial
number, or registration number.
The revised edition of the Trademark Trial and Appeal Board’s Manual of Procedure
(TBMP) is only available online through the USPTO’s web site. The TBMP provides
guidance to practitioners litigating cases before the TTAB and describes current TTAB
practice, statutory changes and new rules that have been promulgated since 1995,
video conferencing for final hearings, and telephone conferences. The TBMP
addresses electronic filing, access to the TTAB’s electronic database via the Internet,
and contains suggested formats for some of the TTAB’s filings. The TTAB also
disseminates its decisions from 1997 to the present to the public through its home page
on the USPTO website.
4.
Efforts to Identify Duplication
Every effort has been made to identify and eliminate duplication of information. This
collection provides the initial information required to give notice of opposition to the
registration of a mark, to request additional time to file an opposition to the registration
of a mark, to initiate the cancellation of a trademark registration, to request an appeal of
the Trademark Examining Attorney’s final decision, and to collect the additional papers
needed to prosecute an inter partes or ex parte appeal. This information is not collected
elsewhere within the USPTO. Where possible, the ESTTA system retrieves already
existing data and completes fields within the ESTTA forms to eliminate the need for the
filer to provide data already in the TTAB database.
5.
Minimizing the Burden to Small Entities
Since registrations, oppositions, cancellations, and appeals are voluntary activities on
the part of the public, the USPTO has not collected data to determine whether the
collection of information impacts small businesses or other small entities.
7
6.
Consequences of Less Frequent Collection
Less frequent collection of this information is not possible, since the information is
collected only when voluntarily submitted by the public. Failure to collect this
information would prevent parties from exercising their right to file an opposition to the
registration of a mark, request an extension of time to file an opposition to a mark, to
cancel a federally registered trademark, to appeal any final decision of the Trademark
Examining Attorney in charge of the requested registration of a mark, and to file the
papers needed to further prosecute an inter partes or ex parte appeal. The information
could not be collected less frequently. If the collection of information was not
conducted, the USPTO could not comply with the requirements of 15 U.S.C. §§ 1063,
1064, and 1070, and 37 CFR Part 2, 2.101-102, 2.104, 2.111–2.112, and 2.141 to 2.142
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 Federal Register Notice was published on November 14, 2013 (78 Fed.
Reg. 68419). The public comment period ended on January 13, 2014. No comments
were received from the public.
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 are open to public inspection. The case files for oppositions,
extensions of time to oppose a registration, petitions to cancel a trademark registration,
and appeals are open to the public for review and do not require confidentiality except
for certain documents filed under a claim of confidentiality, which are not available for
public review. Confidential papers may be filed either electronically or in paper, under
separate cover, as specified in 37 CFR 2.126(d). The TTAB has a standard order
allowing for the submission of confidential material, but parties are free to agree to
alternative arrangements.
11.
Justification for Sensitive Questions
None of the required information is considered to be sensitive.
8
12.
Estimate of Hour and Cost Burden to Respondents
Table 2 calculates the burden hours and costs of this information collection to the
public, based on the following factors. These estimates include Madrid submissions as
well.
Respondent Calculation Factors
The USPTO estimates that it will receive approximately 76,017 responses per year for
this collection. Approximately 70,100 of these responses will be filed electronically.
These estimates are based on the Agency’s long-standing institutional knowledge of and
experience with the type of information collected by these items.
Burden Hour Calculation Factors
The USPTO estimates that the responses in this collection will take the public
approximately 10 to 30 minutes (0.17 to 0.50 hours) to complete, depending on the
request. This includes the time to gather the necessary information, prepare the
petitions, notices, extensions, or additional papers, and submit the completed request to
the USPTO. The USPTO calculates that, on balance, it takes the same amount of time
to gather the necessary information, create the document, and submit it to the TTAB,
whether the public submits the information in paper form or electronically.
These estimates are based on the Agency’s long-standing institutional knowledge of and
experience with the type of information collected and the length of time necessary to
complete responses containing similar or like information.
Cost Burden Calculation Factors
The USPTO estimates that it will take a 50/50 level of effort by attorneys and
paraprofessional/paralegals to complete the requirements in this collection. The USPTO
uses a professional rate of $389 per hour, which is the mean rate for attorneys in private
firms as shown in the 2013 Report of the Economic Survey, published by the Committee
on Economics of Legal Practice of the American Intellectual Property Law Association
(AIPLA). The hourly rate for paraprofessional/paralegals is $122, based on the
average/typical rate for paraprofessionals/paralegals as shown in the 2010 National
Utilization and Compensation Survey published by the National Association of Legal
Assistants (NALA) in October 2010. After calculating the average of these two rates, the
USPTO estimates that the hourly rate for completing the petitions, notices, requests, and
other papers will be $256.
Based on the Agency’s long-standing institutional knowledge of and experience with the
type of information collected, the Agency expects $256 is an accurate estimate of the
cost per hour to collect this information.
Table 2: Burden Hour/Burden Cost to Respondents
Item
#
Item
Hours
(a)
Responses
(yr)
(b)
Burden
(hrs/yr)
(c)
(a) x (b)
Rate
($/hr)
(d)
Total Cost
($/hr)
(e)
(c) x (d)
1
Petition to Cancel
0.50
77
39
$256.00
$9,984.00
1
Electronic Petition to Cancel
0.50
1,500
750
$256.00
$192,000.00
9
Item
#
Item
Hours
(a)
Responses
(yr)
(b)
Burden
(hrs/yr)
(c)
(a) x (b)
Rate
($/hr)
(d)
Total Cost
($/hr)
(e)
(c) x (d)
2
Notice of Opposition
0.50
140
70
$256.00
$17,920.00
2
Electronic Notice of Opposition
0.50
5,500
2,750
$256.00
$704,000.00
3
Extension of Time to File an Opposition
0.17
70
12
$256.00
$3,072.00
3
Electronic Request for Extension of Time
to File an Opposition
0.17
17,000
2,890
$256.00
$739,840.00
4
Papers in Inter Partes Cases
Answers
Amendments to Pleadings
Amendment of Application or
Registration During Proceeding
Motions (such as consent motions,
motions to extend, motions to
suspend, etc.)
Evidence
Briefs
Surrender of Registration
Abandonment of Application
Documents Related to Concurrent
Use Applications
Notice of Intent to Appeal a TTAB
decision
0.17
3,100
527
$256.00
$134,912.00
4
Electronic Papers in Inter Partes Cases
Answers
Amendments to Pleadings
Amendement of Application or
Registration During Proceeding
Motions (such as consent motions,
motions to extend, motions to
suspend, etc.)
Evidence
Briefs
Surrender of Registration
Abandonment of Application
Documents Related to Concurrent
Use Applications
Notice of Intent to Appeal a TTAB
decision
0.17
37,000
6,290
$256.00
$1,610,240.00
5
Notice of Appeal
0.25
130
33
$256.00
$8,448.00
5
Electronic Notice of Appeal
0.25
2,600
650
$256.00
$166,400.00
6
Miscellaneous Ex Parte Papers
0.17
2,400
408
$256.00
$104,448.00
6
Electronic Miscellaneous Ex Parte Papers
0.17
6,500
1,105
$256.00
$282,880.00
- - - -
76,017
15,524
- - - -
$3,974,144.00
Total
10
13.
Total Annual (Non-hour) Cost Burden
The total annual (non-hour) respondent cost burden for this collection is calculated in
Table 3 below. This collection has no capital start-up, maintenance, or recordkeeping
costs.
Filing Fees
There is annual (non-hour) cost burden in the way of filing fees associated with this
collection. The petitions to cancel and the notices of opposition have filing fees of $300,
while the filing fee for the notices of appeal is $100. These fees are set to recover the
aggregate cost to the USPTO for processing the petitions, oppositions, and appeals.
These fees are per class of identified goods and/or services; therefore the total filing
fees can vary depending on the number of classes involved in a proceeding.
There are no filing fees for the extensions of time to file an opposition. The additional
papers that are filed in ex parte and inter partes proceedings do not have their own
specific fees.
Table 3 shows the annual filing fees for parties filing the petitions to cancel, the notices
of opposition, and the notices of appeal. The total filing fees of $2,438,100 shown
below are the minimum fees associated with this information collection.
Postage
The petitions to cancel, the notices of opposition and appeal, the extensions of time to
file an opposition, and the additional papers filed in inter partes and ex parte cases may
be submitted to the USPTO or served on the other parties by Express or first-class mail
through the United States Postal Service. These papers can also be forwarded by other
services or hand delivered to the TTAB. Using the Express Mail service is beneficial
because it establishes the filing date of the papers. For example, papers that are
mailed by Express Mail on the due date are considered to be timely filed with the TTAB,
even if the TTAB receives the paper after the due date.
The USPTO estimates that 6% of the petitions, notices, extensions, and additional inter
partes and ex parte papers that are filed in paper form will be submitted using Express
Mail. The USPTO estimates that the average submission will weigh 2 ounces and that
the respondent will be mailing the original to the TTAB and serving copies on the other
parties involved in the proceedings. The USPTO estimates that it costs an average of
$19.99 for a standard flat rate envelope to send the petitions, notices, extensions,
appeals, and additional papers by Express Mail to the TTAB. To account for the service
of papers on other parties, the USPTO is adding an additional 20% of the postage rate
($4), for an estimated cost of $23.99.
The USPTO estimates that the remaining petitions to cancel, the notices of opposition
and appeal, the extensions of time to file an opposition, and the additional papers filed
11
in inter partes and ex parte proceedings that are filed in paper form (roughly 94%) will
be sent by first-class mail. The USPTO estimates that the average submission will
weigh 2 ounces and that the respondent will mail the original to the TTAB and serve
copies on the other parties involved in the proceedings. The USPTO estimates that it
costs 70 cents to mail the petitions, notices, extensions, appeals, and additional papers
to the TTAB. To account for the service of papers on other parties, the USPTO is
adding an additional 80% of the postage rate (56 cents), for an estimated cost of $1.26.
Table 3: Annual (Non-hour) Cost Burden
Item
#
Type of Cost
Estimated
Annual
Responses
Amount
Totals
FEES
1
Petition to Cancel
77
$300.00
$23,100.00
1
Electronic Petition to Cancel
1,500
$300.00
$450,000.00
2
Notice of Opposition
140
$300.00
$42,000.00
2
Electronic Notice of Opposition
5,500
$300.00
$1,650,000.00
3
Extension of Time to File an Opposition
70
$0.00
$0.00
3
Electronic Request for Extension of Time to File an
Opposition
17,000
$0.00
$0.00
4
Papers in Inter Partes Cases
Answers
Amendments to Pleadings
Amendment of Application or Registration During
Proceeding
Motions (such as consent motions, motions to
extend, motions to suspend, etc.)
Evidence
Briefs
Surrender of Registration
Abandonment of Application
Documents Related to Concurrent Use
Applications
Notice of Intent to Appeal a TTAB decision
3,100
$0.00
$0.00
4
Electronic Papers in Inter Partes Cases
Answers
Amendments to Pleadings
Amendment of Application or Registration During
Proceeding
Motions (such as consent motions, motions to
extend, motions to suspend, etc.)
Evidence
Briefs
Surrender of Registration
Abandonment of Application
Documents Related to Concurrent Use
Applications
Notice of Intent to Appeal a TTAB decision
37,000
$0.00
$0.00
5
Notice of Appeal
130
$100.00
$13,000.00
5
Electronic Notice of Appeal
2,600
$100.00
$260,000.00
6
Miscellaneous Ex Parte Papers
2,400
$0.00
$0.00
12
Item
#
6
Type of Cost
Estimated
Annual
Responses
Electronic Miscellaneous Ex Parte Papers
Total Fees
Amount
Totals
6,500
$0.00
$0.00
76,017
- - - - -
$2,438,100.00
POSTAGE
1
2
3
4
5
6
14.
Petition to Cancel
5 @ $23.99
72 @ $ 1.26
77
$211.00
$120.00
$91.00
Notice of Opposition
8 @ $23.99
132 @ $ 1.26
140
$358.00
$192.00
$166.00
Extension of Time to File an Opposition
4@ $23.99
66 @ $ 1.26
70
$179.00
$96.00
$83.00
Papers in Inter Partes Cases
Answers
Amendments to Pleadings
Amendment of Application or Registration During
Proceeding
Motions (such as consent motions, motions to
extend, motions to suspend, etc.)
Evidence
Briefs
Surrender of Registration
Abandonment of Application
Documents Related to Concurrent Use
Applications
Notice of Intent to Appeal a TTAB decision
186 @ $23.99
2,914 @ $ 1.26
Notice of Appeal
8 @ $23.99
122@ $ 1.26
3,100
$8,134.00
$4,462.00
$3,672.00
130
$346.00
$192.00
$154.00
Miscellaneous Ex Parte Papers
144 @ $23.99
2,256 @ $ 1.26
2,400
$6,298.00
Total Postage for mailed submissions
5,917
- - - - -
$15,526.00
Total Annual (Non-hour) Cost Burden
- - - - -
- - - - -
$2,453,626.00
$3,455.00
$2,843.00
Annual Cost to the Federal Government
For the most part, personnel employed on a contractual basis process all of the
submissions filed in Board proceedings in paper format. The contract personnel scan
each paper into the appropriate electronic file records of the TTABIS system, and then
file and maintain for possible future use, the paper submissions. Once the documents
are in electronic format, the TTAB staff finishes the processing of the electronic form of
the document using TTABIS. The contract personnel are not involved in processing of
submissions made electronically. The USPTO estimates that contract personnel with
13
an hourly rate comparable to that of a GS-9, step 5 will process these papers, and
estimates that it takes, on average, approximately 4 minutes (0.07 hours) to process
each paper. The hourly rate for a GS-9, step 5, is currently $28.32. Generally, an
additional 30% of the hourly rate is added to account for a fully-loaded rate that covers
both overhead and benefits. Since this work is being performed by contract personnel,
the USPTO will only pay for the overhead costs, not the benefits. Therefore, the
USPTO estimates that approximately 15% will be added to the hourly rate. When 15%
is added to account for an hourly rate including overhead, the cost per hour for the
contract personnel is approximately $32.57 ($28.32 + $4.25).
Following the initial processing performed by the contract personnel, the TTAB staff also
will engage in some additional processing of extensions of time to file an opposition,
notices of opposition, petitions for cancellation, and notices of appeal. The USPTO
estimates that a GS-11, step 5 will process these papers and estimates that it takes
approximately 10 minutes (0.17 hours) to complete the processing of extensions of time
to file a notice of opposition and 30 minutes (0.50 hours) to complete the processing of
notices of opposition, petitions for cancellation, and notices of appeal. The hourly rate
for a GS-11, step 5 is currently $34.26. 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
$44.54 ($34.26+ $10.28).
Neither contractors nor TTAB staff, however, are required to process the majority of the
extensions of time to file a notice of opposition, notices of opposition, notices of appeal,
and miscellaneous papers filed in both ex parte and inter partes proceedings submitted
electronically through ESTTA. ESTTA enters the information into the file electronically
and then passes the information to the TTABIS database. This database then
processes the information electronically and updates the appropriate TTABIS case file.
In addition, ESTTA automatically institutes 74% of the notices of opposition and 82% of
the notices of appeal. There is no human intervention at all during this automatic
institution process.
Although the TTAB staff does not process the majority of papers submitted
electronically through ESTTA, they do perform additional processing for 26% of the
electronic notices of opposition, 18% of the electronic notices of appeal, and 7% of the
electronic extensions of time to file an opposition. Out of approximately 5,100 notices of
opposition and 2,500 notices of appeal filed electronically, the TTAB staff performs
additional processing for approximately 1,300 notices of opposition and 500 notices of
appeal. Out of approximately 15,700 electronic requests for extensions of time to file an
opposition, the TTAB staff performs additional processing for approximately 1,100. The
TTAB staff performs additional processing for all 1,400 petitions to cancel filed
electronically. The USPTO estimates that a GS-11, step 5 will process these papers
and estimates that it takes approximately 10 minutes (0.17 hours) to complete the
processing of extensions of time to file a notice of opposition and 30 minutes (0.50
hours) to complete the processing of notices of opposition, petitions for cancellation,
and notices of appeal. The hourly rate for a GS-11, step 5 is currently $34.26. When
14
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 $44.54 ($34.26 + $10.28).
Table 4 calculates the processing hours and costs of this information collection to the
Federal Government.
Table 4: Burden Hour/Burden Cost to the Federal Government
Item
#
1
1
2
2
3
3
4
Item
Hours
(a)
Petition to Cancel
GS-9, step 5
GS-11, step 5
0.07
0.50
Electronic Petition to Cancel
GS-11, step 5
0.50
Notice of Opposition
GS-9, step 5
GS-11, step 5
0.07
0.50
Electronic Notice of Opposition
GS-11, step 5
Processed electronically by ESTTA
0.50
0.00
Extension of Time to File an Opposition
GS-9, step 5
GS-11, step 5
0.07
0.17
Electronic Request for Extension of Time to
File an Opposition
GS-11, step 5
Processed electronically by ESTTA
0.17
0.00
0.07
Papers in Inter Partes Cases
Answers
Amendments to Pleading
Amendment of Application or
Registration during Proceeding
Motions (such as consent motions,
motions to extend, motions to
suspend, etc.)
Evidence
Briefs
Surrender of Registration
Abandonment of Application
Documents Related to Concurrent Use
Applications
Notice of Intent to Appeal a TTAB
decision
Responses
(yr)
(b)
Burden
(hrs/yr)
(c)
(a) x (b)
Rate
($/hr)
(d)
Total Cost
($/hr)
(e)
(c) x (d)
77
5
39
$32.57
$44.54
$163.00
$1,737.00
700
$44.54
$31,178.00
10
70
$32.57
$44.54
$326.00
$3,118.00
685
0
$44.54
$0.00
$30,510.00
$0.00
5
12
$32.57
$44.54
$163.00
$534.00
1,100
14,600
187
0
$44.54
$0.00
$8,329.00
$0.00
3,100
217
$32.57
$7,068.00
1,400
140
1,370
3,730
70
15
Item
#
Item
Hours
(a)
4
Electronic Papers in Inter Partes Cases
Answers
Amendments to Pleading
Amendment of Application or
Registration during Proceeding
Motions (such as consent motions,
motions to extend, motions to
suspend, etc.)
Evidence
Briefs
Surrender of Registration
Abandonment of Application
Documents Related to Concurrent Use
Applications
Notice of Intent to Appeal a TTAB
decision
0.00
5
Notice of Appeal
GS-9, step 5
GS-11, step 5
0.07
0.50
Electronic Notice of Appeal
GS-11, step 5
Processed electronically by ESTTA
0.50
0.00
Miscellaneous Ex Parte Papers
GS-9, step 5
Electronic Miscellaneous Ex Parte Papers
5
6
6
Total
15.
Responses
(yr)
(b)
Burden
(hrs/yr)
(c)
(a) x (b)
37,000
Rate
($/hr)
(d)
Total Cost
($/hr)
(e)
(c) x (d)
0
$0.00
$0.00
10
70
$32.57
$44.54
$326.00
$3,118.00
500
2,000
250
0
$44.54
$0.00
$11,135.00
$0.00
0.07
2,600
182
$32.57
$5,928.00
0.00
6,000
0
$0.00
$0.00
- - - - -
73,332
2,442
- - - - -
$103,633.00
140
Reason for Changes in Burden from the Current Inventory
The USPTO is submitting the following changes for this renewal:
Adjusting the estimated annual responses and burden hours.
Adjusting the estimated number of mailed submissions and the estimated
postage rate.
This information collection is currently approved with a total of 71,743 responses,
14,423 burden hours, and $2,131,205 in annual (non-hour) costs. There have been no
interim approvals.
Changes in Responses and Burden Hours from the Current Inventory
The USPTO estimates total annual responses of 76,017 and total annual burden hours
of 15,524, which is an increase of 4,274 responses along with an increase of 1,101
burden hours from the currently approved burden for this collection.
16
These changes are due to administrative adjustments from updated annual response
estimates.
Table 5a: Changes in Responses and Burden Hours from the Current Inventory
Item
#
Item
Currently
approved
responses
Updated
responses
Change in
responses
(admin.)
Currently
approved
burden
hours
Updated
burden
hours
Change in
burden
hours
(admin.)
88
77
(11)
44
39
(5)
1,300
1,500
200
650
750
100
205
140
(65)
103
70
(33)
4,400
5,500
1,100
2,200
2,750
550
150
70
(80)
26
12
(14)
15,700
17,000
1,300
2,669
2,890
221
4,800
3,100
(1,700)
816
527
(289)
35,500
37,000
1,500
6,035
6,290
255
300
130
(170)
75
33
(42)
1
Petition to Cancel
1
Electronic Petition to Cancel
2
Notice of Opposition
2
Electronic Notice of Opposition
3
Extension of Time to File an
Opposition
3
Electronic Extension of Time to
File an Opposition
4
Papers in Inter Partes Cases
4
Electronic Papers in Inter Partes
Cases
5
Notice of Appeal
5
Electronic Notice of Appeal
2,800
2,600
(200)
700
650
(50)
6
Miscellaneous Ex Parte Papers
4,300
2,400
(1,900)
731
408
(323)
6
Electronic Miscellaneous Ex
Parte Papers
2,200
6,500
4,300
374
1,105
731
71,743
76,017
4,274
14,423
15,524
1,101
Totals
Changes in Annual (Non-hour) Costs from the Current Inventory
The total annual (non-hour) cost burden for this renewal submission of $2,453,626 is an
increase of $322,421 from the currently approved total of $2,131,205. This increase is
due to administrative adjustments.
Administrative Adjustments
Postage: Decrease due to a decrease in the estimated number of mailed
submissions offset by an adjustment in USPS postage rates since the previous
renewal.
Filing Fees: Increase due to an increase in the number of responses. The filing
fee amounts have stayed the same.
17
Table 5b: Changes in Annual (Non-hour) Costs from the Current Inventory
Cost
Filing Fees
Postage
Totals
16.
Currently
approved annual
cost burden
Program
changes
Administrative
adjustments
Total change
in costs
Updated
annual cost
burden
$2,107,900.00
$0.00
$330,200.00
$330,200.00
$2,438,100.00
$23,305.00
$0.00
($7,779.00)
($7,779.00)
$15,526.00
$2,131,205.00
$0.00
$322,421.00
$322,421.00
$2,453,626.00
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
OMB expiration date.
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.
18
| File Type | application/pdf |
| File Title | Trademark Trial and Appeal Board (TTAB) Actions |
| Author | USPTO |
| File Modified | 2014-03-13 |
| File Created | 2014-03-13 |