0651-TMA Supporting Statement 2021 final

SUPPORTING STATEMENT

United States Patent and Trademark Office

Changes to Implement Provisions of the Trademark Modernization Act of 2020

OMB CONTROL NUMBER 0651-00XX

2021

A. 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.

The United States Patent and Trademark Office (USPTO) administers the Trademark Act, 15 U.S.C. §1051 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 who use their marks, or intend to use their marks, in commerce regulated by Congress may file an application with the USPTO to register their marks. Registered marks remain on the register indefinitely, so long as the owner of the registration files the necessary maintenance documents. The rules implementing the Trademark Act are set forth in 37 CFR Part 2.

The Trademark Modernization Act of 2020 (TMA) amended the Trademark Act of 1946 (the Act) to establish new ex parte expungement and reexamination proceedings to cancel, either in whole or in part, registered marks for which the required use in commerce was not made. See Pub. L. No. 116-260, Div. Q, Tit. II, Subtit. B, §§ 221-228 (Dec. 27, 2020). Furthermore, the TMA amended § 14 of the Act to allow a party to allege that a mark has never been used in commerce as a basis for cancellation before the Trademark Trial and Appeal Board (TTAB). Id. at § 225(b). The TMA also authorized the USPTO to promulgate regulations to set flexible Office action response periods between 60 days and 6 months, with an option for applicants to extend the deadline up to a maximum of 6 months from the Office action issue date. Id. at § 224.

Table 1 provides the specific statutes and regulations authorizing the USPTO to collect the information discussed above:

Table 1: Information Requirements

Item No.	Requirement	Statute	Regulation
1	Petition for Ex Parte Expungement	Pub. L. No. 116-260 §§ 221-228	37 CFR 2.6, 2.91-2.94
2	Response to Ex Parte Expungement Office Action	Pub. L. No. 116-260 §§ 221-228	37 CFR 2.62
3	Response to Director-Initiated Expungement Office Action	Pub. L. No. 116-260 §§ 221-228	37 CFR 2.62
4	Petition for Ex Parte Reexamination	Pub. L. No. 116-260 §§ 221-228	37 CFR 2.6, 2.91-2.94
5	Response to Ex Parte Reexamination Office Action	Pub. L. No. 116-260 §§ 221-228	37 CFR 2.62
6	Response to Ex Parte Director-Initiated Reexamination Office Action	Pub. L. No. 116-260 §§ 221-228	37 CFR 2.62
7	Request for Extension of Time for Filing a Response to Office Action	15 U.S.C. § 1062	37 CFR 2.6, 2.62, 2.63, 2.65, 2.66, 2.141, 2.142, 2.163, 2.165, 2.184, 2.186, 7.6, 7.39, 7.40

The items in this information collection are being established due to the provisions in the Trademark Modernization Act. The Act requires USPTO to establish these Expungement and Reexamination Proceedings and promulgate regulations regarding those proceedings by December 27, 2021. These regulations will be established at 15 U.S.C. § 1066 (A and B).

2. 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 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 can also be accessed at the USPTO’s 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 must be submitted electronically through the Trademark Electronic Application System (TEAS). In limited circumstances, applicants may also be permitted to submit the information in paper form by mail, fax, or hand delivery. This collection contains two electronic forms.

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), in 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

Item No.	Form and Function	Form #	Needs and Uses
1	Petition for Ex Parte Expungement	PTO Form 2312	Used by the public to submit a petition to expunge a registration of a mark on the basis that the mark has never been used in commerce on or in connection with some or all of the goods or services recited in the registration. Used by the USPTO to determine whether the petition complies with the requirements of 37 CFR 2.91.
2	Response to Ex Parte Expungement Office Action	PTO Form 2313	Used by the public to submit information in response to an Office action received from the USPTO in connection with an ex parte expungement proceeding. Used by the USPTO to collect information which the USPTO needs in connection with an ex parte expungement proceeding.
3	Response to Director-Initiated Expungement Office Action	PTO Form 2313	Used by the public to submit information in response to an Office action received from the USPTO in connection with a Director-initiated expungement proceeding. Used by the USPTO to collect information which the USPTO needs in connection with a Director-initiated expungement proceeding.
4	Petition for Ex Parte Reexamination	PTO Form 2312	Used by the public to submit a petition to reexamine a registration of a mark on the basis that the mark was not in use in commerce on or in connection with some or all of the goods or services recited in the registration on or before the relevant date. Used by the USPTO to determine whether the petition complies with the requirements of 37 CFR 2.91.
5	Response to Ex Parte Reexamination Office Action	PTO Form 2313	Used by the public to submit information in response to an Office action received from the USPTO in connection with an ex parte reexamination proceeding. Used by the USPTO to collect information which the USPTO needs in connection with an ex parte reexamination proceeding.
6	Response to Ex Parte Director-Initiated Reexamination Office Action	PTO Form 2313	Used by the public to submit information in response to an Office action received from the USPTO in connection with a Director-initiated reexamination proceeding. Used by the USPTO to collect information which the USPTO needs in connection with a Director-initiated reexamination proceeding.
7	Request for Extension of Time for Filing a Response to Office Action	No form	Used by the public to request an extension of time to file a response to an Office action. Used by the USPTO to review a request for an extension of time to respond to an Office action and determine whether to grant the extension.

3. 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 a web-accessible electronic application system (i.e., TEAS). 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 to providing a system that allows the electronic transmission of trademark submissions, the USPTO also provides the public with online access to various trademark records.

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.

4. 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 collection does not solicit any data already available at the USPTO or requested by USPTO.

5. 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 these petitions and requests places no undue burden on small businesses or other small entities. The same information is required from every customer and is not available from any other source.

6. 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 submit petitions for expungement or reinstatement or responses to USPTO actions related to them or to request extension of time to respond. If this information were not collected, the USPTO could not comply with the requirements of the Trademark Act and rules of practice (15 U.S.C. §§ 1051 and 1123- and 37 CFR Part 2).

7. 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.

8. 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 information collection, 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.

A notice of proposed rulemaking, which incorporates this requested new information collection published on May 18, 2021. This proposed rule seeks public comments on the proposed changes, including this information collection request.

In addition, several large and well-organized bar associations frequently communicate their views to the USPTO, as does the Trademark Public Advisory Committee (TPAC). The 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 stakeholders and embrace the USPTO’s e-government initiative. This diversity of interests is an effective tool in helping the USPTO nurture and protect the intellectual property that is the underpinning of America’s strong economy.

9. 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.

10. 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 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 registration, including 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.

11. 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 collection is considered to be sensitive.

12. 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’.

• Respondent Calculation Factors

The USPTO estimates that it will receive approximately 11,116 total responses per year for this collection. For this collection, the USPTO does not collect data to determine how many applications are filed by small entities.

• Burden Hour Calculation Factors

The USPTO estimates that it takes the public approximately 15 minutes (0.25 hours) to 90 minutes (1.5 hours), depending on the complexity of the situation, to gather the necessary information, prepare the appropriate documents, and submit the information to the USPTO. 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 10,865 hours per year.

• Cost Burden Calculation

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 $4,346,000 per year.

Table 3 and Table 4 calculate the burden hours and hourly costs of this information collection to the public, based on the following factors:

Table 3: Burden Hours for Private Sector Respondents

Item No.	Item	Estimated Annual Respondents	Estimated Annual Responses (year) (a)	Estimated Time for Response (hour) (b)	Estimated Annual Burden (hour/year) (a) x (b) = (c)	Rate2 ($/hour) (d)	Estimated Annual Burden (c) x (d) =(e)
1	Petition for Ex Parte Expungement	1,843	1,940	1.5	2,910	$400	$1,164,000
2	Response to Ex Parte Expungement Office Action	1,659	1,746	1	1,746	$400	$698,400
3	Response to Director-Initiated Expungement Office Action	185	194	1	194	$400	$77,600
4	Petition for Ex Parte Reexamination	1,229	1,294	1.5	1941	$400	$776,400
5	Response to Ex Parte Reexamination Office Action	1,106	1,164	1	1,164	$400	$465,600
6	Response to Ex Parte Director-Initiated Reexamination Office Action	123	130	1	130	$400	$52,000
7	Request for Extension of Time for Filing a Response to Office Action	2,304	2,425	0.25	606	$400	$242,400
	Totals	8,449	8,893		8,691		$3,476,400

Table 4: Proposed Burden Hours for Individual and Household Respondents

Item No.	Item	Estimated Annual Respondents	Estimated Annual Responses (year) (a)	Estimated Time for Response (hour) (b)	Estimated Annual Burden (hour/year) (a) x (b) = (c)	Rate3 ($/hour) (d)	Estimated Annual Burden (c) x (d) =(e)
1	Petition for Ex Parte Expungement	461	485	1.5	728	$400	$291,200
2	Response to Ex Parte Expungement Office Action	415	437	1	437	$400	$174,800
3	Response to Director-Initiated Expungement Office Action	46	49	1	49	$400	$19,600
4	Petition for Ex Parte Reexamination	307	323	1.5	485	$400	$194,000
5	Response to Ex Parte Reexamination Office Action	276	291	1	291	$400	$116,400
6	Response to Ex Parte Director-Initiated Reexamination Office Action	31	32	1	32	$400	$12,800
7	Request for Extension of Time for Filing a Response to Office Action	564	594	0.25	152	$400	$60,800
	Totals	2,112	2,223		2,174		$869,600

13. 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.

• Generally, estimates should not include purchases of equipment or services, or portions thereof, made: (1) prior to October 1, 1995, (2) to achieve regulatory compliance with requirements not associated with the information collection, (3) for reasons other than to provide information or keep records for the government, or (4) as part of customary and usual business or private practices.

There are no capital start-up, maintenance, or recordkeeping fees associated with this information collection. However, there are filing fees and postage costs associated with submitting these petitions and requests. The filing fees for petitions for expungement or reexamination are based on the number of classes of goods and/or services in the petition; therefore, the total filing fees for these submissions can vary depending on the number of classes. The total processing fees of $2,810,666 ($2,810,175 in filing fees and $491 in postage), as outlined in Table 5 below, reflect the minimum processing fees associated with this information collection.

Table 5: Filing Fees/Non-hourly Cost Burden to Respondents

Item No.	Item	Estimated Annual Responses (a)	Filing Fees ($) (b)	Total Cost ($) (a) x (b) = (c)
1	Petition for Ex Parte Expungement	2,425	$600	$1,455,000
4	Petition for Ex Parte Reexamination	1,617	$600	$970,200
7	Request for Extension of Time for Filing a Response to Office Action (paper)	61	$225	$13,725
7	Request for Extension of Time for Filing a Response to Office Action (TEAS)	2,970	$125	$371,250
	Totals	7,073		$2,810,175

Postage Costs

In limited circumstances, applicants may be permitted to submit the information in paper form by mail, fax, or hand delivery. 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 (Priority Express Legal Envelope) at a cost of $8.05. Therefore, a total estimated mailing of 61 paper submissions with a cost of $491 is incurred for this information collection.

14. 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 employs GS-15, step 5 and GS-11, step 5 employees to examine and process submissions for this information collection.

The USPTO estimates that the cost of a GS-15, step 5 employee is $101.75 per hour (GS hourly rate of $78.27 with 30% ($23.48) added for benefits and overhead). The USPTO also estimates that it takes a GS-15, step 5 employee 60 minutes (1 hour) to examine the petitions and responses submitted in this collection. The USPTO estimates that the cost of a GS-11, step 5 employee is $63.21 per hour (GS hourly rate of $39.51 with 30% ($11.85) added for benefits and overhead). The USPTO also estimates that it takes a GS-11, step 5 employee 15 minutes (0.25 hours) to process the extension requests submitted in this collection.

Table 6 calculates the burden hours and costs to the Federal Government for processing this information collection.

Table 6: Burden Hour/Cost to the Federal Government

IC No.	Item	Responses (a)	Hours (b)	Burden (a) x (b) (c)	Rate ($) (d)	Total Cost (c) x (d) (e)
1	Petition for Ex Parte Expungement	2,425	1	2,425	$101.75	$5,880,625
2	Response to Ex Parte Expungement Office Action	2,183	1	2,183	$101.75	$4,765,489
3	Response to Director-Initiated Expungement Office Action	243	1	243	$101.75	$59,049
4	Petition for Ex Parte Reexamination	1,617	1	1,617	$101.75	$2,614,689
5	Response to Ex Parte Reexamination Office Action	1,455	1	1,455	$101.75	$2,117,025
6	Response to Ex Parte Director-Initiated Reexamination Office Action	162	1	162	$101.75	$26,244
7	Request for Extension of Time for Filing a Response to Office Action	3,031	0.25	758	$63.21	$47,913
	TOTAL	11,116		8,843		$15,511,034

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

This is a new information collection. Therefore, all the burden estimates in this request are new burdens without antecedents.

16. 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.

The USPTO does not plan to publish this information for statistical use.

17. 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 expiration date of OMB approval.

18. 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.

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