SUPPORTING STATEMENT
United States Patent and Trademark Office
Post Registration (Trademark Registration)
OMB CONTROL NUMBER 0651-0055
October 2018
1. Necessity of Information Collection
The United States Patent and Trademark Office (USPTO) administers the Trademark Act, 15 U.S.C. § 1501 et seq., which provides for the Federal registration of trademarks, service marks, collective trademarks and service marks, collective membership marks, and certification marks. Individuals and businesses that use or intend to use such marks in commerce may file an application to register their marks with the 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 cancelled unless the owner files with the USPTO a declaration attesting to the continued use (or excusable non-use) of the mark in commerce, and a renewal application, within specific deadlines. Applicants may also request to amend or divide a registration, respond to a post-registration Office action, and surrender a registration.
The rules implementing the 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 used by another. Thus, the Federal trademark registration process may reduce unnecessary litigation and its accompanying costs and burdens.
Table 1 provides the specific statutes and regulations authorizing the USPTO to collect the information discussed above:
Table 1: Information Requirement
IC # |
Requirement |
Statute |
Rule |
1 |
Declaration of Use of Mark in Commerce Under Section 8
|
15 U.S.C. § 1058 |
37 CFR 2.160-2.166, 2.168 |
2 |
Combined Declaration of Use of Mark in Commerce and Application for Renewal of Registration of a Mark Under Sections 8 and 9
|
15 U.S.C. §§ 1058 and 1059 |
37 CFR 2.160-2.166, 2.181-2.186 |
3 |
Declaration of Incontestability of a Mark Under Section 15
|
15 U.S.C. § 1065 |
37 CFR 2.167 |
4 |
Combined Declaration of Use and Incontestability Under Sections 8 and 15
|
15 U.S.C. §§ 1058 and 1065 |
37 CFR 2.160-2.168 |
5 |
Surrender of registration for cancellation
|
15 U.S.C. § 1057 |
37 CFR 2.172 |
6 |
Section 7 Request
|
15 U.S.C. § 1057 |
37 CFR 2.171-2.176 |
7 |
Response to Office Action for Post-Registration Matters
|
15 U.S.C. §§ 1057-1061 |
37 CFR 2.160-2.168, 2.171-2.176 |
8 |
Request to Divide Registration
|
15 U.S.C. § 1057 |
37 CFR 2.171(b) |
9 |
Section 12(c) Affidavit
|
15 U.S.C. § 1058 |
37 CFR 2.160 |
Needs and Uses
The USPTO uses the information described in this collection to process post registration submissions. The information in this collection is a matter of public record and is used by the public for a variety of private business purposes related to establishing and enforcing trademark rights. The information is available at USPTO facilities, and also can be accessed at the USPTO website. Additionally, the USPTO provides the information to other entities, including Patent and Trademark Resource Centers (PTRCs). The PTRCs maintain the information for use by the public.
The information in this collection can be submitted in paper format or electronically through the Trademark Electronic Application System (TEAS).
The information collected, maintained, and used in this collection is based on OMB and USPTO guidelines. This includes the basic information quality standards established in the Paperwork Reduction Act (44 U.S.C. Chapter 35), OMB Circular A-130, and in the USPTO information quality guidelines.
Table 2 outlines how this collection of information is used by the public and the USPTO:
Table 2: Needs and Uses
IC Number
|
Form and Function |
Form # |
Needs and Uses |
1 |
Declaration of Use of Mark in Commerce Under Section 8 (electronic and paper) |
PTO Form 1563 |
|
2 |
Combined Declaration of Use of Mark in Commerce and Application for Renewal of Registration of a Mark Under Sections 8 and 9 (electronic and paper) |
PTO Form 1963 |
|
3 |
Declaration of Incontestability of a Mark Under Section 15 (electronic and paper) |
PTO Form 1573 |
|
4 |
Combined Declaration of Use and Incontestability Under Sections 8 and 15 (electronic and paper) |
PTO Form 1583 |
|
5 |
Surrender of registration for cancellation (electronic) |
PTO Global Form |
|
5 |
Surrender of registration for cancellation (paper) |
No form associated |
|
6 |
Section 7 Request (electronic)
|
PTO Form 1597 |
|
6 |
Section 7 Request (paper)
|
No form associated |
|
7 |
Response to Post-Registration Office Action (electronic) |
PTO Global Form |
|
7 |
Response to Post-Registration Office Action (paper) |
No form associated |
|
8 |
Request to Divide Registration (electronic) |
PTO Global Form |
|
8 |
Request to Divide Registration (paper) |
No form associated |
|
9 |
Section 12(c) Affidavit (electronic) |
PTO Global Form |
|
9 |
Section 12(c) Affidavit (paper) |
No form associated |
|
3. Use of Information Technology
The USPTO operates three IT systems that support this information collection:
Trademark Electronic Application System (TEAS)
Trademark Status and Document Retrieval System (TSDR)
Trademark Electronic Search System (TESS)
The USPTO provides online electronic forms through the Trademark Electronic Application System (TEAS). Once completed, TEAS forms are transmitted to the USPTO via the Internet. The TEAS forms include “help” instructions and a “Form Wizard” that tailors the form to the particular characteristics of the application or registration in question. TEAS forms improve efficiency by providing users with alternatives to paper forms and also reduces the processing time for such forms.
The USPTO maintains an online image database, called the Trademark Status and Document Retrieval (TSDR) system, which includes images of each of the documents that make up the “electronic file wrapper” of a trademark application or registration, and also provides users with information regarding the status of trademark applications and registrations. The TSDR system is updated daily.
The USPTO provides a web-based record of registered marks and marks for which applications for registration have been submitted, called the Trademark Electronic Search System (TESS). TESS can be used by potential applicants for trademark registration to assist in determining whether or not a particular mark is available. This data is also 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.
All three systems are accessible through the Trademark Electronic Business Center (TEBC). The TEBC provides descriptions of the systems and features online “help” programs. The Business Center offers the public a single portal for a variety of trademark options for making submissions to the USPTO and for tracking the status of these submissions.
In addition to the three systems mentioned above, the Trademark applications processing is internally supported by the Trademark Reporting and Monitoring (TRAM) system. TRAM assists trademark operations from receipt of new applications to the publications of trademarks and post-registration activities.
4. Efforts to Identify Duplication
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
Since registration of a trademark/service mark is a voluntary activity on the part of the public, the USPTO has not collected data to determine if the collection of information impacts small businesses or other small entities.
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 any of the information collection items listed above to the USPTO to provide the information contained on those items. If this information were 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.
Consultation Outside the Agency
The 60-Day Notice was published in the Federal Register on April 27, 2018 (83 Fed. Reg. 18537). The comment period ended on June 26, 2018. No public comments were received.
The USPTO has long-standing relationships with several large and well-organized groups who frequently communicate their views, such as the American Bar Association (ABA), American Intellectual Property Law Association (AIPLA), and International Trademark Association (INTA), as well as business groups and users of our public facilities.
In addition, the Trademark Public Advisory Committee (TPAC) 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 TPAC reflect the broad array of USPTO’s stakeholders and embrace the USPTO’s e-government initiative. This diversity of interests is an effective tool in helping the USPTO nurture and protect the intellectual property that is the underpinning of America’s strong economy.
Views expressed by these groups are considered in developing proposals for information collection requirements and during the renewal of an information collection. No comments or viewpoints were expressed regarding the present renewal.
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.
The TEAS forms also include links to the USPTO’s Web Privacy Policy and to the form’s burden statement at the bottom of each page.
11. Justification for Sensitive Questions
None of the required information in this collection is considered to be of a sensitive nature.
12. Estimate of Hour and Cost Burden to Respondents
Table 3 calculates the anticipated burden hours and costs of this information collection to the public, based on the following factors:
Respondent Calculation Factors
The USPTO estimates that it will receive approximately 204,362 total responses per year for this collection.
The USPTO estimates that approximately 98% of the annual responses for this collection will be submitted electronically via TEAS, which customers may access through the USPTO’s Web site.
Burden Hour Calculation Factors
The USPTO estimates that it will take the public approximately between 5 minutes (0.08 hours) and 40 minutes (0.67 hours) to complete the information in this collection. This includes the time to gather the necessary information, create the documents, and submit the completed request to the USPTO.
Cost Burden Calculation Factors
The USPTO uses a professional rate of $438 per hour for respondent cost burden calculation, which is the hourly rate for intellectual property attorneys in private firms, as shown in the 2017 Report of the Economic Survey published by the American Intellectual Property Law Association (AIPLA). ‘
Table 3: Burden Hours/Burden Cost to Respondents
IC #
|
Item |
Estimated response time (a) |
Estimated responses (b) |
Estimated burden (c) (a) x (b) |
Rate (d) |
Estimated Cost (e) (c) x (d) |
1
|
Declaration of Use of Mark in Commerce Under Section 8 (TEAS) |
0.25 (15 minutes) |
19,466 |
4,866.50 |
$438.00 |
$2,131,527.00 |
1
|
Declaration of Use of Mark in Commerce Under Section 8 (Paper) |
0.42 (25 minutes) |
1 |
0.42 |
$438.00 |
$183.96 |
2
|
Combined Declaration of Use of Mark in Commerce and Application for Renewal of Registration of a Mark Under Sections 8 & 9 (TEAS) |
0.25 (15 minutes) |
82,337 |
20,584.25 |
$438.00 |
$9,015,901.50 |
2
|
Combined Declaration of Use of Mark in Commerce and Application for Renewal of Registration of a Mark Under Sections 8 & 9 (Paper) |
0.42 (25 minutes) |
4 |
1.68 |
$438.00 |
$735.84 |
3
|
Declaration of Incontestability of a Mark Under Section 15 (TEAS) |
0.08 (5 minutes) |
973 |
77.84 |
$438.00 |
$34,093.92 |
3
|
Declaration of Incontestability of a Mark Under Section 15 (paper) |
0.17 (10 minutes) |
1 |
0.17 |
$438.00 |
$74.46 |
4
|
Combined Declaration of Use and Incontestability Under Sections 8 and 15 (TEAS) |
0.25 (15 minutes) |
77,863 |
19,465.75 |
$438.00 |
$8,525,998.50 |
4
|
Combined Declaration of Use and Incontestability Under Sections 8 and 15 (Paper) |
0.42 (25 minutes) |
4 |
1.68 |
$438.00 |
$735.84 |
5
|
Surrender of registration for cancellation (TEAS Global) |
0.08 (5 minutes) |
413 |
33.04 |
$438.00 |
$14,471.52 |
5
|
Surrender of registration for cancellation (Paper) |
0.25 (15 minutes) |
1 |
0.25 |
$438.00 |
$109.50 |
6
|
Section 7 Request (TEAS) |
0.42 (25 minutes) |
6,277 |
2,636.34 |
$438.00 |
$1,154,716.92 |
6
|
Section 7 Request (paper) |
0.50 (30 minutes) |
1 |
0.50 |
$438.00 |
$219.00 |
7
|
Response to Office Action for Post-Registration Matters (TEAS Global) |
0.50 (30 minutes) |
14,000 |
7,000 |
$438.00 |
$3,066,000.00 |
7
|
Response to Office Action for Post-Registration Matters (Paper) |
0.67 (40 minutes) |
1 |
0.67 |
$438.00 |
$293.46 |
8
|
Request to Divide Registration (TEAS Global) |
0.33 (20 minutes) |
3,017 |
995.61 |
$438.00 |
$436,077.18 |
8
|
Request to Divide Registration (paper) |
0.50 (30 minutes) |
1 |
0.50 |
$438.00 |
$219.00 |
9
|
Section 12(c) Affidavit (TEAS Global) |
0.17 (10 minutes) |
1 |
0.17 |
$438.00 |
$74.46 |
9
|
Section 12(c) Affidavit (paper) |
0.33 (20 minutes) |
1 |
0.33 |
$438.00 |
$144.54 |
|
Total |
- - - |
204,362 |
55,665.70 |
- - - |
$24,381,576.60 |
13. Total Annual (Non-hour) Cost Burden
This collection has non-hourly cost burden in both fees paid by the public and associated postage costs for mailing items to the USPTO.
Fees
There are filing fees associated with this collection for a total of $92,122,675 per year as outlined in Table 4 below. Filing fees are based on per-class filing of goods and services; therefore, the total filing fees can vary depending on the number of classes. The filing fees shown here are the minimum fees associated with this information collection.
Table 4: Filing Fees/Non-hour Cost Burden to Respondents
IC #
|
Item |
Estimated Annual Responses (a) |
Filing Fees ($) (b) |
Total Cost ($) (a) x (b) = (c) |
1
|
Declaration of Use of Mark in Commerce Under Section 8 (TEAS) |
19,466 |
$125.00 |
$2,433,250.00 |
1
|
Declaration of Use of Mark in Commerce Under Section 8 (paper) |
1 |
$225.00 |
$225.00 |
2
|
Combined Declaration of Use of Mark in Commerce and Application for Renewal of Registration of a Mark Under Sections 8 & 9 (TEAS) |
82,337 |
$425.00 |
$34,993,225.00 |
2
|
Combined Declaration of Use of Mark in Commerce and Application for Renewal of Registration of a Mark Under Sections 8 & 9 (paper) |
4 |
$725.00 |
$2,900.00 |
2 |
Application for Renewal (TEAS) |
82,341 |
$300.00 |
$24,702,300.00 |
2 |
Application for Renewal (paper) |
1 |
$500.00 |
$500.00 |
2 |
Issuing New Certificate of Registration (TEAS) |
2 |
$100.00 |
$200.00 |
2 |
Issuing New Certificate of Registration (paper) |
1 |
$200.00 |
$200.00 |
2 |
Certificate of Correction, Registrant’s Error (TEAS) |
4,456 |
$100.00 |
$445,600.00 |
2 |
Certificate of Correction, Registrant’s Error (paper) |
1 |
$200.00 |
$200.00 |
3
|
Declaration of Incontestability of a Mark Under Section 15 (TEAS) |
973 |
$200.00 |
$194,600.00 |
3
|
Declaration of Incontestability of a Mark Under Section 15 (paper) |
1 |
$300.00 |
$300.00 |
4
|
Combined Declaration of Use and Incontestability Under Section 8 and 15 (TEAS) |
77,863 |
$325.00 |
$25,305,475.00 |
4
|
Combined Declaration of Use and Incontestability Under Section 8 and 15 (paper) |
4 |
$525.00 |
$2,100.00 |
6 |
Section 7 Request (TEAS) |
6,277 |
$100.00 |
$627,700.00 |
6 |
Section 7 Request (paper) |
1 |
$200.00 |
$200.00 |
8 |
Request to Divide Registration (TEAS Global) |
3,017 |
$100.00 |
$301,700.00 |
8 |
Request to Divide Registration (paper) |
1 |
$200.00 |
$200.00 |
9 |
Section 12(c) Affidavit (TEAS Global) |
1 |
$100.00 |
$100.00 |
9 |
Section 12(c) Affidavit (paper) |
1 |
$200.00 |
$200.00 |
|
Total |
291,164 |
- - - |
$89,011,175.00 |
Postage Costs
The non-electronic items in this collection have associated first-class postage costs when submitted by mail for a total of $7.50.
Customers may incur postage costs when submitting materials covered by this collection to the USPTO by mail. The USPTO expects that nearly all the responses in this collection will be submitted electronically. Of the remaining responses, the vast majority will be submitted by first-class mail for a total of 15 mailed submissions. The average first-class USPS postage cost for a mailed submission is 50 cents. Therefore, the USPTO estimates that the postage costs for the mailed submissions in this collection will be $7.50.
Total
The total (non-hour) respondent cost burden for this collection is estimated to be $89,011,182.50, which includes $89,011,175.00 in fees and $7.50 in postage costs.
14. Annual Cost to the Federal Government
The USPTO employs people from levels GS-9 and GS-11 to process submissions for this information collection, and uses a combined wage rate to calculate federal cost.
The USPTO estimates that the cost of a GS-9, step 3 employee is $37.36 per hour (GS hourly rate of $28.74 with 30% ($8.62) added for benefits and overhead).
The USPTO estimates that the cost of a GS-11, step 10 employee is $55.09 per hour (GS hourly rate of $42.38 with 30% ($12.71) added for benefits and overhead).
The combined cost of these two is $46.23.
The USPTO estimates that it takes an employee approximately between 4 minutes (0.07 hours) and 30 minutes (0.50 hours) to process the information in this collection.
Table 5 calculates the burden hours and costs to the Federal Government for processing this information collection:
Table 5: Burden Hours/Cost to the Federal Government
IC #
|
Item |
Time (a) |
Estimated Responses (b) |
Burden (c) (a) x (b) |
Rate (d) |
Total Cost (e) (c) x (d) |
1
|
Declaration of Use of Mark in Commerce Under Section 8 (TEAS) |
0.13 (8 minutes) |
19,466 |
2,595.47 |
$46.23 |
$119,988.42 |
1
|
Declaration of Use of Mark in Commerce Under Section 8 (paper) |
0.17 (10 minutes) |
1 |
0.17 |
$46.23 |
$7.71 |
2
|
Combined Declaration of Use of Mark in Commerce and Application for Renewal of Registration of a Mark Under Section 8 & 9 (TEAS) |
0.13 (8 minutes) |
82,337 |
10,978.27 |
$46.23 |
$507,525.27 |
2
|
Combined Declaration of Use of Mark in Commerce and Application for Renewal of Registration of a Mark Under Section 8 & 9 (paper) |
0.17 (10 minutes) |
4 |
0.67 |
$46.23 |
$30.82 |
3
|
Declaration of Incontestability of a Mark Under Section 15 (TEAS) |
0.13 (8 minutes) |
973 |
129.73 |
$46.23 |
$5,997.57 |
3
|
Declaration of Incontestability of a Mark Under Section 15 (paper) |
0.17 (10 minutes) |
1 |
0.17 |
$46.23 |
$7.71 |
4
|
Combined Declaration of Use and Incontestability Under Section 8 and 15 (TEAS) |
0.13 (8 minutes) |
77,863 |
10,381.73 |
$46.23 |
$479,947.53 |
4
|
Combined Declaration of Use and Incontestability Under Section 8 and 15 (paper) |
0.17 (10 minutes) |
4 |
0.67 |
$46.23 |
$30.82 |
5
|
Surrender of registration for cancellation (TEAS Global) |
0.13 (8 minutes) |
413 |
55.07 |
$46.23 |
$2,545.73 |
5
|
Surrender of registration for cancellation (paper) |
1.78 107 minutes) |
1 |
1.78 |
$46.23 |
$82.44 |
6
|
Section 7 Request (TEAS) |
7.50 (450 minutes) |
6,277 |
47,077.50 |
$46.23 |
$2,176,392.83 |
6
|
Section 7 Request (paper) |
0.83 (50 minutes) |
1 |
0.83 |
$46.23 |
$38.53 |
7
|
Response to Office Action for Post-Registration Matters (TEAS Global) |
0.13 (8 minutes) |
14,000 |
1,866.67 |
$46.23 |
$86,296.00 |
7
|
Response to Office Action for Post-Registration Matters (paper) |
0.17 (10 minutes) |
1 |
0.17 |
$46.23 |
$7.71 |
8
|
Request to Divide Registration (TEAS Global) |
0.75 (45 minutes) |
3,017 |
2,262.75 |
$46.23 |
$104,606.93 |
8
|
Request to Divide Registration (paper) |
0.83 (50 minutes) |
1 |
0.83 |
$46.23 |
$38.53 |
9
|
Section 12(c) Affidavit (TEAS Global) |
0.13 (8 minutes) |
1 |
0.13 |
$46.23 |
$6.16 |
9
|
Section 12(c) Affidavit (paper) |
0.17 (10 minutes) |
1 |
0.17 |
$46.23 |
$7.71 |
|
Total |
- - - |
204,362 |
75,352.77 |
- - - |
$3,483,558.40 |
15. Reason for Change in Burden
A. Changes in Collection since previous OMB approval in 2017
OMB previously approved the renewal of this information collection in March 2017. The current collection contains:
584,654 responses
48,334.73 burden hours
$18,802,208.66 in respondent hourly cost burden
$131,060,068.33 in annual (non-hourly) costs
Changes since the publication of the 60-day notice
Since the publication of the 60-day notice in the Federal Register on April 27, 2018 the following change has been made to this collection:
An increase of $28,260,500.00 in annual (non-hourly) costs
Fees from a previous change worksheet have been incorporated into this renewal.
B. Changes proposed in this request to OMB
The proposed collection, as outlined in the tables above, seeks to modify the existing collection. The proposed collection contains an estimated:
204,362 responses
55,665.70 burden hours
$24,381,576.60 in respondent hourly cost burden
$92,122,682.35 in annual (non-hour) costs
Changes in Respondent Cost Burden
The total respondent cost burden for this collection has increased by $5,579,367.94 (from $18,802,208.66 to $24,381,576.60) from the previous approval of this collection in March 2017:
Increased in estimated hourly rates. The 2017 approval used an estimated rate of $389 per hour for respondents to this collection, which was the estimated attorney rate for intellectual property attorneys in private firms. For the current renewal, the USPTO is using an updated hourly rate of $438 for attorneys.
Increases in estimated burden hours. The total estimated burden hours have increased from 43,095.72 to 55,665.70 for the current renewal due to overall increases in the estimated completion time for most ICs in this collection.
Changes in Responses and Burden Hours
For this renewal, the USPTO estimates that the annual responses will decrease by 380,292 (from 584,654 to 204,362) and the total burden hours will increase by 12,569.98 (from 43,096.72 to 55,665.70) from the currently approved burden for this collection. The decreases in the respondent numbers resulted from the following changes:
When the fees were added to the collection during the adoption of the USPTO Trademark Fee Review process in 2017, the added fees had been added to the collection in ROCIS as their own individual IC lines. In reality, these fee items generally do not exist on their own. The fees and the time associated with them are part of other processes or IC lines already existing in this collection. For this renewal, the USPTO was able to address the whole collection and associate each fee item with its relevant IC line. As a result, the respondent numbers went down during this effort to de-duplicate the collection.
Changes in Annual (Non-hour) Costs
For this renewal, the USPTO estimates that the total annual (non-hour) costs will decrease by $38,937,385.98 (from $131,060,068.33 to $92,122,682.35), due to a decrease in the number of responses.
16. Project Schedule
The USPTO does not plan to publish this information for statistical use.
17. Display of Expiration Date of OMB Approval
The forms in this information for statistical use.
18. Exception to the Certificate Statement
This collection of information does not include any exceptions to the certificate statement.
B. COLLECTION OF INFORMATION EMPLOYING STATISTICAL METHODS
This collection of information does not employ statistical methods.
| File Type | application/vnd.openxmlformats-officedocument.wordprocessingml.document |
| Author | Sarah Gunther |
| File Modified | 0000-00-00 |
| File Created | 2021-01-20 |