0651-0054 Supporting Statement 12_2020

0651-0054 Supporting Statement 12_2020.docx

Substantive Submissions Made During Prosecution of the Trademark Application

OMB: 0651-0054

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SUPPORTING STATEMENT

United States Patent and Trademark Office

Substantive Submissions Made During the Prosecution

of the Trademark Application

OMB CONTROL NUMBER 0651-0054

(2020)



  1. JUSTIFICATION


  1. Explain the circumstances that make the collection of information necessary. Identify any legal or administrative requirements that necessitate the information collection. Attach a copy of the appropriate section of each statute and regulation mandating or authorizing the collection of information.


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 providing additional information needed to process a request to delete a particular filing basis from an application or tyo divide an application identifying multiple goods and/or services into two or more separate applications. Applicants may seek a six-month extension of time to file a statement that the mark is in use in commerce or submit a petition to revive an application that was abandoned for failure to submit a timely response to an office action or a timely statement of use or extension request. In some circumstances, an applicant may expressly abandon an application by filing a request for withdrawal of the application.


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. As a result, the Federal trademark registration process is intended to reduce unnecessary litigation, and its accompanying costs and burdens.


The information in this collection can be collected in two different ways: through seven dedicated Trademark Electronic Application System (TEAS) forms or four TEAS Global forms, or through a permitted paper submission. When permitted to file on paper, individuals and businesses can submit their own forms, following the USPTO’s rules and guidelines to ensure that all of the necessary information is provided.


Table 1 identifies the statutory and regulatory provisions that permit the USPTO to collect the information needed to process these submissions:


Table 1: Information Requirements for Substantive Submissions Made During Prosecution of the Trademark Application

Item No.


Item


Statute


Regulation

1


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

2


Request for Extension of Time to File a Statement of Use


15 U.S.C. § 1051(d)(2)


37 CFR Part 2, 2.89

3


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

4


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

5


Request to Delete Section 1(b) Basis, Intent to Use


15 U.S.C. § 1123


37 CFR Part 2, 2.35

6


Request for Express Abandonment (Withdrawal) of Application


15 U.S.C. § 1123


37 CFR Part 2, 2.68

7


Request to Divide Application


15 U.S.C. § 1123


37 CFR Part 2, 2.87

8


Response to Intent-to-Use/Divisional (ITU/Divisional) Unit Office Action


15 U.S.C. § 1123


37 CFR Part 2, 2.87

9


Response to Petition to Revive Deficiency Letter


15 U.S.C. §§ 1051(d)(4), 1062(b), and 1123


37 CFR Part 2, 2.61, 2.63-2.66, 2.88, and 2.89

10


Petition to the Director


15 U.S.C. § 1123


37 CFR Part 2, 2.35, 2.63, 2.84, 2.101, 2.102, 2.146, 2.147, 2.165, 2.176 and 2.186

11


Petition to Revive with Request to Delete Section 1(b) Basis or to Delete ITU Goods/Services/Collective Membership Organization After NOA


15 U.S.C. §§ 1062(b) and 1123


37 CFR Part 2, 2.35, 2.66, and 2.77


  1. Indicate how, by whom, and for what purpose the information is to be used. Except for a new information collection, indicate the actual use the agency has made of the information received from the current information collection.


The USPTO uses the information described in this information collection to process the substantive submissions made during prosecution of the trademark application. The submissions in this information collection are a matter of public record and are used by the public for a variety of private business purposes related to establishing and enforcing trademark rights. The information is accessible online, through the USPTO website, as well as through various USPTO facilities. 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. For more specific needs and uses of the collected information, see Table 2.


The information in this collection must be submitted electronically through the Trademark Electronic Application System (TEAS).


The information collected, maintained, and used in this information 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), in OMB Circular A-130, and in the USPTO information quality guidelines.


Table 2 lists the information identified in this information 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

Item No.


Form and Function


Form #


Needs and Uses

1


Allegation of Use (Amendment to Allege Use/Statement of Use)




PTO 1553


  • 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 review applications for registration..

2


Request for Extension of Time to File a Statement of Use




PTO 1581


  • 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. .

3


Petition to Revive Abandoned Application – Failure to Respond Timely to Office Action




PTO 2194


  • Used by the public to petition the Director of 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 review and process petitions to revive an application that was abandoned because of a failure to submit a timely response to an Office action.

4


Petition to Revive Abandoned Application – Failure to File Timely Statement of Use or Extension Request




PTO 2195


  • Used by the public to petition the Director of 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 review and process petitions to revive an application that was abandoned because of a failure to file a timely statement of use or extension request.

5


Request to Delete Section 1(b) Basis, Intent to Use




PTO 2200


  • Used by the public to request to delete a section 1(b) basis as to an entire class of goods and/or services in an application.

  • Used by the USPTO to review and process requests to delete a section 1(b) basis from an application.

6


Request for Express Abandonment (Withdrawal) of Application




PTO 2202


  • Used by the public to request to withdraw an application.

  • Used by the USPTO to review and process requests to withdraw an application.

7


Request to Divide Application




TEAS Global

Form


  • 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 review and process requests to divide applications for registration that identify multiple goods and/or services into two or more separate applications.

8


Response to Intent-to-Use (ITU) Divisional Unit Office Action




TEAS Global

Form


  • 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 public to 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 the request.

9


Response to Petition to Revive Deficiency Letter




TEAS Global

Form


  • 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 public to 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.

10


Petition to the Director




Form 2301


  • Used by the public to petition the Director pursuant to Trademark Rules 2.146, 2,147, or 2,148.

  • Used by the USPTO to review and process petitions to the Director filed pursuant to Trademark Rules 2.146, 2.147, or 2.148.

11


Petition to Revive with Request to Delete Section 1(b) Basis or to Delete ITU Goods/Services After NOA




TEAS Global

Form


  • 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 public to 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.


  1. Describe whether, and to what extent, the collection of information involves the use of automated, electronic, mechanical, or other technological collection techniques or other forms of information technology, e.g., permitting electronic submission of responses, and the basis for the decision for adopting this means of information collection. Also describe any consideration of using information technology to reduce burden.


The USPTO offers the public a variety of IT systems useful both for making submissions to the USPTO and for tracking the status of these submissions. This information collection involves three information technology (IT) systems that are publicly accessible through the USPTO website: TEAS; Trademark Status and Document Retrieval (TSDR); and Trademark Electronic Search System (TESS).


The USPTO provides online electronic forms through web-accessible TEAS. Electronic forms can only be submitted via TEAS; filers may not e-mail their own forms to the USPTO. Once completed, TEAS forms are transmitted to the USPTO 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 or registration in question, based on responses provided by the user to questions posed by the Wizard. The forms are received and filed upon transmission, and a confirmation of filing is issued via e-mail to the user.


In addition, the TEAS Global forms are an interim workaround as the USPTO develops TEAS forms for all items. The TEAS Global Form format permits the USPTO to collect information electronically when a TEAS form having dedicated data fields is not yet available. In addition to providing a system for electronic transmission of trademark submissions, the USPTO also provides the public with online access to various trademark records.


The USPTO maintains TSDR, an online image database, 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 data in the TSDR system is updated daily.


The USPTO also provides TESS, a web-based record of registered marks, and marks for which applications for registration have been submitted. TESS can be used by potential applicants for trademark registration to assist in the determination of whether a particular mark may be available. The data in TESS is identical to the data reviewed by examining attorneys at the USPTO in their determination of whether marks for which registration is sought are confusingly similar to marks in existing registrations or to marks in pending applications for registration. TESS allows the user to choose from four different search tools, is updated daily, and is easy to use.



  1. Describe efforts to identify duplication. Show specifically why any similar information already available cannot be used or modified for use for the purposes described in Item 2 above.


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, requests for express abandonment, requests to divide, responses to intent-to-use (ITU) divisional unit Office actions, responses to petition to revive deficiency letters, petitions to the Director, and petitions to revive with request to delete section 1(b) basis or to delete ITU goods/services after notice of allowance are submitted to the USPTO. This information collection does not solicit any data already available at the USPTO and therefore does not create a duplication of effort.


  1. If the collection of information impacts small businesses or other small entities, describe any methods used to minimize burden.


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.


  1. Describe the consequence to Federal program or policy activities if the information collection is not conducted or is conducted less frequently, as well as any technical or legal obstacles to reducing burden


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 express abandonment, file a request to divide an application, or file the other responses and petitions in this information collection. 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.


  1. Explain any special circumstances that would cause an information collection to be conducted in a manner:

  • requiring respondents to report information to the agency more often than quarterly;

  • requiring respondents to prepare a written response to a collection of information in fewer than 30 days after receipt of it;

  • requiring respondents to submit more than an original and two copies of any document;

  • requiring respondents to retain records, other than health, medical, government contract, grant-in-aid, or tax records, for more than three years;

  • in connection with a statistical survey, that is not designed to produce valid and reliable results that can be generalized to the universe of study;

  • requiring the use of a statistical data classification that has not been reviewed and approved by OMB;

  • that includes a pledge of confidentiality that is not supported by authority established in statute or regulation, that is not supported by disclosure and data security policies that are consistent with the pledge, or which unnecessarily impedes sharing of data with other agencies for compatible confidential use; or requiring respondents to submit proprietary trade secrets, or other confidential information unless the agency can demonstrate that it has instituted procedures to protect the information's confidentiality to the extent permitted by law.


There are no special circumstances associated with this collection of information.


  1. If applicable, provide a copy and identify the date and page number of publication in the Federal Register of the agency's notice, required by 5 CFR 1320.8(d), soliciting comments on the information collection prior to submission to OMB. Summarize public comments received in response to that notice and describe actions taken by the agency in response to these comments. Specifically address comments received on cost and hour burden. Describe efforts to consult with persons outside the agency to obtain their views on the availability of data, frequency of activity, the clarity of instructions and recordkeeping, disclosure, or reporting format (if any), and on the data elements to be recorded, disclosed, or reported. Consultation with representatives of those from whom information is to be obtained or those who must compile records should occur at least once every 3 years - even if the collection of information activity is the same as in prior periods. There may be circumstances that may preclude consultation in a specific situation. These circumstances should be explained


The 60-Day Notice was published in the Federal Register on October 23, 2020 (85 Fed Reg. 67522). The public comment period ended on December 22, 2020.


One public comment was received; the comment affirmed USPTO’s role in maintaining patent and trademarks processes. The USPTO appreciates the ongoing support from the public patent and trademarks programs.


In addition, several large and well-organized bar associations frequently communicate their views to the USPTO. Also, 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 9 voting members who are appointed by and serve at the pleasure of the Secretary of Commerce. 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 protects 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. No comments or viewpoints were expressed regarding the present renewal.


  1. Explain any decision to provide any payment or gift to respondents, other than remuneration of contractors or grantees


This information collection does not involve a payment or gift to any respondent.


  1. Describe any assurance of confidentiality provided to respondents and the basis for the assurance in statute, regulation, or agency policy. If the information collection requires a systems of records notice (SORN) or privacy impact assessment (PIA), those should be cited and described here.


Trademark applications and registrations are open to public inspection. Confidentiality is not required in the processing of trademark applications.


This information collection may contain information subject to the Privacy Act. This information is collected on 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. Trademark Application information collection activities are covered under the Statement of Records Notice (COMMERCE/USPTO-26 Trademark Application and Registration Records) at Federal Register /Vol. 85, No. 32 /Tuesday, February 18, 2020 /Notices. This SORN identifies the categories of records in the system containing applicants for trademark, include the name, citizenship, domicile, email address, postal address, and telephone number of the trademark applicant, registrant, and applicant’s or registrant’s legal or other authorized representative(s), an attorney’s law firm or company affiliation and professional licensing information, and other information pertaining to an applicant’s or registrant’s activities in connection with the applied-for or registered mark. Records in this system include trademark applications, applicant and registrant declarations, office actions, registration certificates, and correspondence generated in the course of the prosecution of a trademark application or maintenance of a trademark registration.


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.


  1. Provide additional justification for any questions of a sensitive nature, such as sexual behavior and attitudes, religious beliefs, and other matters that are commonly considered private. This justification should include the reasons why the agency considers the questions necessary, the specific uses to be made of the information, the explanation to be given to persons from whom the information is requested, and any steps to be taken to obtain their consent.


None of the required information in this information collection is considered to be of a sensitive nature.


  1. Provide estimates of the hour burden of the collection of information. The statement should:

  • Indicate the number of respondents, frequency of response, annual hour burden, and an explanation of how the burden was estimated. Unless directed to do so, agencies should not conduct special surveys to obtain information on which to base hour burden estimates. Consultation with a sample (fewer than 10) of potential respondents is desirable. If the hour burden on respondents is expected to vary widely because of differences in activity, size, or complexity, show the range of estimated hour burden, and explain the reasons for the variance. Generally, estimates should not include burden hours for customary and usual business practices.

  • If this request for approval covers more than one form, provide separate hour burden estimates for each form and aggregate the hour burdens.

  • Provide estimates of annualized cost to respondents for the hour burdens for collections of information, identifying and using appropriate wage rate categories. The cost of contracting out or paying outside parties for information collection activities should not be included here. Instead, this cost should be included under ‘Annual Cost to Federal Government’.

  • Provide an estimate for the total annual cost burden to respondents or record keepers resulting from the collection of information.


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 337,382 respondents per year for this information collection.


  • Burden Hour Calculation Factors

The USPTO estimates that it will take the public an average of 25 to 65 minutes (0.4 to 1.1 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. Using these factors, the USPTO estimates that the total respondent burden hour for this information collection is 211,639 hours per year.


  • Cost Burden Calculation Factors

The Committee on Economics of Legal Practice of the American Intellectual Property Law Association (AIPLA) 1published a report that summarized the results of a survey with data on hourly billing rates. The professional rate of $400 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 information 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. Using these hourly rates, the USPTO estimates that the total respondent cost burden for this information collection is $84,655,600 per year.


Table 3: Burden Hour/Burden Cost to Respondents for Substantive Submissions Made During Prosecution of the Trademark Application (Private Sector)

Item No.

Item

Estimated Annual Respondents

Estimated Annual Responses (year)


(a)

Estimated Time for Response (hours)


(b)


Estimated Annual Burden

(hour/year)


(a) x (b) = c

Rate2 ($/hour)




(d)

Estimated Annual Burden



(c) x (d) = e

1

Allegation of Use (Amendment to Allege Use/Statement of Use)

(PTO Form 1553)

70,451

70,451

0.9

(55 minutes)

63,406

$400

$25,362,400

2

Request for Extension of Time to File a Statement of Use

(PTO Form 1581)

172,942

172,942

0.5

(27 minutes)

86,471

$400

$34,588,400

3

Petition to Revive Abandoned Application – Failure to Respond Timely to Office Action

(PTO Form 2194)

12,924

12,924

0.9

(55 minutes)

11,632

$400

$4,652,800

4

Petition to Revive Abandoned Application – Failure to File Timely Statement of Use or Extension Request

(PTO Form 2195)

667

667

0.6

(35 minutes)

400

$400

$160,000

5

Request to Delete Section 1(b) Basis, Intent to Use

(PTO Form 2200)

1,400

1,400

0.4

(25 minutes)

560

$400

$224,000

6

Request for Express Abandonment (Withdrawal) of Application

(PTO Form 2202)

5,600

5,600

0.4

(25 minutes)

2,240

$400

$896,000

7

Request to Divide Application

2,400

2,400

0.6

(35 minutes)

1,440

$400

$576,000

8

Response to Intent-to-Use (ITU) Divisional Unit Office Action

2

2

1.1

(65 minutes)

2

$400

$800

9

Response to Petition to Revive Deficiency Letter

240

240

0.8

(45 minutes)

192

$400

$76,800

10

Petition to the Director

(PTO Form 2301)

3,200

3,200

0.9

(55 minutes)

2,880

$400

$1,152,000

11

Petition to Revive with Request to Delete Section 1(b) Basis or to Delete ITU Goods/Services/Collective Membership Organization After NOA

80

80

1.1

(65 minutes)

88

$400

$35,200


Total

269,906

269,906

- - -

169,311

- - -

$67,724,400


Table 4: Burden Hour/Burden Cost to Respondents for Substantive Submissions Made During Prosecution of the Trademark Application (Individuals or Households)

Item No.

Item

Estimated Annual Respondents

Estimated Annual Responses (year)


(a)

Estimated Time for Response (hours)


(b)


Estimated Annual Burden

(hour/year)


(a) x (b) = c

Rate3 ($/hour)




(d)

Estimated Annual Burden



(c) x (d) = e

1

Allegation of Use (Amendment to Allege Use/Statement of Use)

(PTO Form 1553)

17,613

17,613

0.9

(55 minutes)

15,852

$400

$6,340,800

2

Request for Extension of Time to File a Statement of Use

(PTO Form 1581)

43,235

43,235

0.5

(27 minutes)

21,618

$400

$8,647,200

3

Petition to Revive Abandoned Application – Failure to Respond Timely to Office Action

(PTO Form 2194)

3,231

3,231

0.9

(55 minutes)

2,908

$400

$1,163,200

4

Petition to Revive Abandoned Application – Failure to File Timely Statement of Use or Extension Request

(PTO Form 2195)

167

167

0.6

(35 minutes)

100

$400

$40,000

5

Request to Delete Section 1(b) Basis, Intent to Use

(PTO Form 2200)

350

350

0.4

(25 minutes)

140

$400

$56,000

6

Request for Express Abandonment (Withdrawal) of Application

(PTO Form 2202)

1,400

1,400

0.4

(25 minutes)

560

$400

$224,000

7

Request to Divide Application

600

600

0.6

(35 minutes)

360

$400

$144,000

9

Response to Petition to Revive Deficiency Letter

60

60

0.8

(45 minutes)

48

$400

$19,200

10

Petition to the Director

(PTO Form 2301)

800

800

0.9

(55 minutes)

720

$400

$288,000

11

Petition to Revive with Request to Delete Section 1(b) Basis or to Delete ITU Goods/Services/Collective Membership Organization After NOA

20

20

1.1

(65 minutes)

22

$400

$8,800


Total

67,476

67,476

- - -

42,328

- - -

$16,931,200


  1. Provide an estimate for the total annual cost burden to respondents or record keepers resulting from the collection of information. (Do not include the cost of any hour burden already reflected on the burden worksheet).

  • The cost estimate should be split into two components: (a) a total capital and start-up cost component (annualized over its expected useful life) and (b) a total operation and maintenance and purchase of services component. The estimates should take into account costs associated with generating, maintaining, and disclosing or providing the information. Include descriptions of methods used to estimate major cost factors including system and technology acquisition, expected useful life of capital equipment, the discount rate(s), and the time period over which costs will be incurred. Capital and start-up costs include, among other items, preparations for collecting information such as purchasing computers and software; monitoring, sampling, drilling and testing equipment; and record storage facilities.

  • If cost estimates are expected to vary widely, agencies should present ranges of cost burdens and explain the reasons for the variance. The cost of purchasing or contracting out information collections services should be a part of this cost burden estimate. In developing cost burden estimates, agencies may consult with a sample of respondents (fewer than 10), utilize the 60-day pre-OMB submission public comment process and use existing economic or regulatory impact analysis associated with the rulemaking containing the information collection, as appropriate.


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 $37,867,690 are associated with this information 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. The USPTO amended its regulations to set, increase, or decrease certain trademark fees, to become effective January 2, 2021, including the fees in this information collection.


Table 5 calculates the filing fees associated with this collection of information:


Table 5: Filing Fees – Non-hour Cost Burden for Substantive Submissions Made During Prosecution of the Trademark Application

Item No.

Item

Estimated Annual Responses


(a)

Estimated Fee Amount



(b)

Estimated Non-Hour Cost Burden



(a) x (b) = (c)

1

Allegation of Use (Amendment to Allege Use/Statement of Use) (Paper)

27

$200

$5,400

1

Trademark/Service Mark Allegation of Use (Amendment to Allege Use/Statement of Use) (TEAS)

88,037

$100

$8,803,700

2

Request for Extension of Time to File a Statement of Use (Paper)

59

$225

$13,275

2

Request for Extension of Time to File a Statement of Use (TEAS)

216,118

$125

$27,014,750

3

Petition to Revive Abandoned Application – Failure to Respond Timely to Office Action (Paper)

5

$250

$1,250

3

Petition to Revive Abandoned Application – Failure to Respond Timely to Office Action (TEAS)

16,150

$150

$2,422,500

4

Petition to Revive Abandoned Application – Failure to File Timely Statement of Use or Extension Request (Paper)

1

$250

$250

4

Petition to Revive Abandoned Application – Failure to File Timely Statement of Use or Extension Request (TEAS)

833

$150

$124,950

7

Request to Divide Application (Paper)

1

$200

$200

7

Request to Divide Application (TEAS Global)

2,999

$100

$299,900

10

Petition to the Director (Paper)

1

$350

$350

10

Petition to the Director (TEAS)

3,999

$250

$999,750

11

Petition to Revive With Request to Delete Section 1(b) Basis or to Delete ITU Goods/Services/Collective Membership Organization After NOA (Paper)

1

$250

$250

11

Petition to Revive With Request to Delete Section 1(b) Basis or to Delete ITU Goods/155.40Services/Collective Membership Organization After NOA (TEAS Global)

99

$150

$14,850


Total


- - -

$39,701,375



Applicants and registrants incur postage costs when submitting 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 $8.05 Therefore, a total estimated mailing of 95 paper submissions with a cost of $765 is incurred for this information collection.


In sum, the total annual non-hour cost burden for this information collection in the form of filing fees ($39,701,375) and postage costs ($765) amounts to $39,702,140.



  1. Provide estimates of annualized costs to the Federal government. Also, provide a description of the method used to estimate cost, which should include quantification of hours, operational expenses (such as equipment, overhead, printing, and support staff), and any other expense that would not have been incurred without this collection of information. Agencies may also aggregate cost estimates from Items 12, 13, and 14 in a single table.


The USPTO estimates that it takes a GS 7, step 104 employee between between 11 and 14 minutes to process an allegation of use, 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 2 and 6 minutes to process a request for express abandonment, between 24 and 30 minutes to process a request to divide an application, and between 24 and 30 minutes to process a response to an ITU Office action. The current hourly rate for a GS-7, step 10 is . When 30% is added to account for a fully loaded hourly rate (benefits and overhead), the cost per hour for a GS-71, step 10 is $+ $, for a rate of $.


The USPTO estimates that it takes a GS-11, step 105 employee between 10 and 15 minutes to process a petition to revive for failure to timely respond to an Office action, between 10 and 15 minutes to process a petition to revive for failure to file timely statement of use or extension request, between 15 and 18 minutes to process a response to a petition to revive deficiency letter, 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 2 and 6 minutes to process a request for express abandonment. The current hourly rate for a GS-11, step 10 is $. When 30% is added to account for a fully loaded hourly rate (benefits and overhead), the cost per hour for a GS-11, step 10 is $+ $, for a rate of $.


The USPTO estimates that it takes a GS-15, step 56 employee between 45 and 60 minutes to process a petition to the Director. The current hourly rate for a GS-15, step 5 is $77.49. When 30% is added to account for a fully loaded hourly rate (benefits and overhead), the cost per hour for a GS-15, step 5 is $77.49 + $23.25, for a rate of $100.74.


Table 7 calculates the processing hours and costs of this information collection to the Federal Government:


Table 7: Burden Hour/Burden Cost to the Federal Government for Substantive Submissions Made During Prosecution of the Trademark Application

Item No.

Item

Responses

(yr)


(a)

Minutes



(b)

Burden

(hrs/yr)


(a) x (b) = (c)

Rate

($/hr)


(d)

Total Cost

($/hr)


(c) x (d) + (e)

1


Allegation of Use (Amendment to Allege Use/Statement of Use) (Paper)

27

14

6

$53.85

$323.10

1


Allegation of Use (Amendment to Allege Use/Statement of Use) (TEAS)

109,086

11

19,999

$53.85

$1,076,946.15

2


Request for Extension of Time to File a Statement of Use (Paper)

59

11

11

$53.85

$592.35

2


Request for Extension of Time to File a Statement of Use (TEAS)

234,906

6

23,491

$53.85

$1,264,990.35

3


Petition to Revive Abandoned Application – Failure to Respond Timely to Office Action (Paper)

5

15

1

$66.33

$66.33

3


Petition to Revive Abandoned Application – Failure to Respond Timely to Office Action (TEAS)

19,545

10

3,258

$66.33

$216,103.14

4


Petition to Revive Abandoned Application – Failure to File Timely Statement of Use or Extension Request (Paper)

1

15

1

$66.33

$66.33

4


Petition to Revive Abandoned Application – Failure to File Timely Statement of Use or Extension Request (TEAS)

284

10

47

$66.33

$3,117.51

5


Request to Delete Section 1(b) Basis, Intent to Use (Paper)

1

11

1

$53.85

$53.85

5


Request to Delete Section 1(b) Basis, Intent to Use (TEAS)

1,400

6

140

$53.85

$7,539.00

6


Request for Express Abandonment (Withdrawal) of Application (Paper)

1

6

1

$56.84

$56.84

6


Request for Express Abandonment (Withdrawal) of Application (TEAS)

5,500

2

183

$56.84

$10,401.72


7


Request to Divide Application (Paper)

1

30

1

$53.85

$53.85


7


Request to Divide Application (TEAS Global)

3,057

24

1,223

$53.85

$65,858.55

8


Response to Intent-to-Use (ITU) Divisional Unit Office Action (Paper)

1

30

1

$53.85

$53.85

8


Response to Intent-to-Use (ITU) Divisional Unit Office Action (TEAS Global)

2

24

1

$53.85

$53.85


9


Response to Petition to Revive Deficiency Letter (Paper)

1

18

1

$66.33

$66.33

9


Response to Petition to Revive Deficiency Letter (TEAS Global)

313

15

78

$66.33

$5,173.74

10


Petition to the Director (paper)

1

45

1

$100.74

$100.74

10


Petition to the Director (TEAS)

750

30

375

$100.74

$37,777.50

11


Petition to Revive with Request to Delete Section 1(b) Basis or to Delete ITU Goods/Services After NOA (Paper)

1

18

1


$66.33

$66.33

11


Petition to Revive with Request to Delete Section 1(b) Basis or to Delete ITU Goods/Services After NOA

(TEAS Global)

30

15

8

$66.33

$530.64


Total

374,972

- - -


- - -

$2,689,992


  1. Explain the reasons for any program changes or adjustments reported on the burden worksheet






Change in respondent hour burden


For this renewal, the USPTO estimates that the annual responses will decrease by 37,750 (from 375,132 to 337,382) and the total burden hours will increase by 110,173 (from 101,466 to 211,639) from the currently approved burden for this information collection. These changes are due to Agency estimates:


  • Decreases in the estimated number of responses due to Agency estimates regarding the natural fluctuation in the volume of trademark submissions.


  • Increases in estimated burden hours due to increasing estimate of time to complete various items in the information collection. The total estimated burden hours have increased from 101,466 in the 2017 renewal to 211,639 for the current renewal due to overall increases in estimated annual responses.



Changes in annual (non-hour) costs


For this renewal, the USPTO estimates that the total annual (non-hour) costs will decrease by $3,111,707 (from $ 42,813,847 to $39,702,140). This decrease is due to the reduction in the estimate of trademark submissions.



  1. For collections of information whose results will be published, outline plans for tabulation and publication. Address any complex analytical techniques that will be used. Provide the time schedule for the entire project, including beginning and ending dates of the collection of information, completion of report, publication dates, and other actions.


There is no plan to publish this information for statistical use.


  1. If seeking approval to not display the expiration date for OMB approval of the information collection, explain the reasons that display would be inappropriate.


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.

  1. Explain each exception to the topics of the certification statement identified in “Certification for Paperwork Reduction Act Submissions


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.



1 https://www.aipla.org/detail/journal-issue/2019-report-of-the-economic-survey

2 2019 Report of the Economic Survey, published by the Committee on Economics of Legal Practice of the American Intellectual Property Law Association (AIPLA); https://www.aipla.org/detail/ journal-issue/2019-report-of-the-economic-survey. The USPTO uses the mean rate for attorneys in private firms which is $400 per hour.

3 2019 Report of the Economic Survey, published by the Committee on Economics of Legal Practice of the American Intellectual Property Law Association (AIPLA); https://www.aipla.org/detail/ journal-issue/2019-report-of-the-economic-survey. The USPTO uses the mean rate for attorneys in private firms which is $400 per hour.

4 https://www.opm.gov/policy-data-oversight/pay-leave/salaries-wages/salary-tables/pdf/2020/DCB_h.pdf

5 https://www.opm.gov/policy-data-oversight/pay-leave/salaries-wages/salary-tables/pdf/2020/DCB_h.pdf

6 https://www.opm.gov/policy-data-oversight/pay-leave/salaries-wages/salary-tables/pdf/2020/DCB_h.pdf

File Typeapplication/vnd.openxmlformats-officedocument.wordprocessingml.document
File Title0651-0054 SupStmt July2014
AuthorGalaxy Scientific Corporation
File Modified0000-00-00
File Created2021-01-11

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