0651-0061 Supporting Statement 2021

SUPPORTING STATEMENT

United States Patent and Trademark Office

Trademark Petitions

OMB CONTROL NUMBER 0651-0061

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 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. Individuals and businesses may also submit various communications to the USPTO, including letters of protest, requests to make special, responses to petition inquiry letters, petitions to make special, requests to restore a filing date, and requests for reinstatement.

A letter of protest is a procedure whereby third parties who object to the registration of a mark in a pending application may bring to the attention of the USPTO evidence bearing on the registrability of the mark. A letter of protest must identify the application being protested and the proposed grounds for refusing registration and include relevant evidence to support the protest.

A request to make special may be submitted where an applicant requests that initial examination of an application be advanced out of its regular order because the mark in the application was the subject of an inadvertently cancelled or expired previous registration.

A response to a petition inquiry letter is submitted by a petitioner who is responding to a notice of deficiency that the USPTO issued after receiving an incomplete Petition to the Director. A petition may be considered incomplete if, for example, it does not include the fee required by 37 CFR 2.6.

The USPTO generally examines applications in the order in which they are received. A petition to make special is a request by the applicant to advance the initial examination of an application out of its regular order.

A request to restore a filing date is submitted by an applicant who previously filed an application that was denied a filing date. The request must include evidence showing that the applicant is entitled to the earlier filing date.

If an applicant has proof that an application was abandoned due to a USPTO error, an applicant may file a request to reinstate the application. To support such a request, the applicant must include evidence of the USPTO error.

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

Table 1: Information Requirements for Trademark Petitions

Item No.	Requirement	Statute	Regulations
1	Letter of Protest	15 U.S.C. §§ 1051 and 1123	37 CFR 2.149
2	Request to Make Special	15 U.S.C. §§ 1051 and 1123	N/A
3	Response to Petition to Director Inquiry Letter	15 U.S.C. §§ 1051 and 1123	37 CFR 2.66, 2.146, 2.147
4	Petition to Make Special	15 U.S.C. §§ 1051 and 1123	37 CFR 2.146, 2.148
5	Request to Restore Filing Date	15 U.S.C. §§ 1051 and 1123	37 CFR 2.146, 2.148
6	Request for Reinstatement	15 U.S.C. §§ 1051 and 1123	37 CFR 2.64

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 public uses this information collection for a variety of private business purposes related to establishing and enforcing trademark rights. The USPTO uses the information described in this information collection to process letters of protest, requests to make special, responses to petition inquiry letters, petitions to make special, requests to restore a filing date, and requests for reinstatement. Information relating to the registration of a trademark is made publicly available by the USPTO. The release of information in a letter of protest is controlled and may be available upon request only.

The information in this information 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.

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 outlines how this collection of information is used by the public and the USPTO.

Table 2: Needs and Uses of Information Collected for Trademark Petitions

Item No.	Form and Function	Form No.	Needs and Uses
1	Letter of Protest	PTO/2303	Used by the public to submit evidence bearing on the registrability of a mark. Used by the USPTO to decide whether the letter of protest complies with the requirements of 37 CFR 2.149.
2	Request to Make Special	PTO/2304	Used by the public to submit a request to advance initial examination of an application out of its regular order because the mark in the application was the subject of an inadvertently cancelled or expired previous registration. Used by the USPTO to act upon a request to make special.
3	Response to Petition to Director Inquiry Letter	PTO/2305	Used by the public to respond to a notice of deficiency that the USPTO issued after the filing of an incomplete Petition to the Director. Used by the USPTO to collect information that the petitioner did not supply in the original Petition to the Director and which the USPTO needs to complete the review of the petition.
4	Petition to Make Special	PTO/2306	Used by the public to submit a petition seeking to advance initial examination of an application out of its regular order. Used by the USPTO to act upon a petition to make special.
5	Request to Restore Filing Date	PTO/2307	Used by the public to submit evidence that a previously filed application met the filing-date requirements and to request that the earlier filing date be restored. Used by the USPTO to act upon a request to restore a filing date.
6	Request for Reinstatement	PTO/2308	Used by the public to submit a request for reinstatement of an application that was abandoned. Used by the USPTO to act upon a request for reinstatement.

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 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). 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 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. This information collection does not create a duplication of effort.

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 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.

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 letters of protest, requests to make special, responses to petition inquiry letters, petitions to make special, requests to restore a filing date, and requests for reinstatement and 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.

The 60-Day Notice was published in the Federal Register on May 3, 2021 (86 FR 23350). The comment period ended on July 2, 2021. No comments were received.

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 and registrations are open to public inspection. Confidentiality is not required in the processing of this information collection.

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, to 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.

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 information 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’.

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

• Respondent Calculation Factor

The USPTO estimates that it will receive approximately 6,221 total responses and respondents per year for this information collection.

The USPTO estimates that approximately 99% of the annual responses for this information collection will be submitted electronically via TEAS, which customers may access through the USPTO Web site.

• Burden Hour Calculation Factors

The USPTO estimates that it will take the public approximately between 40 minutes (0.67 hours) to 75 minutes (1.25 hours) to complete this information collection. This includes the time to gather the necessary information, create the documents, and submit the completed request to the USPTO. Using these burden factors, USPTO estimates that the total respondent hourly burden for this information collection is 6,953 hours per year.

• Cost Burden Calculation Factors

The USPTO uses a professional rate of $400 per hour for respondent cost burden calculations, which is the mean rate of intellectual property attorneys in private firms as shown in the 2019 Report of the Economic Survey published by the Committee on Economics of Legal Practice of the American Intellectual Property Law Association (AIPLA). Using these hourly rates, the USPTO estimates that the total respondent cost burden for this information collection is $2,781,200 per year.

Table 3: Total Hourly Burden for Private Sector Respondents

Item No.	Item	Estimated Annual Respondents (a)	Responses per Respondent (b)	Estimated Annual Responses (a) x (b)=(c)	Estimated Time For Response (hours) (b)	Estimated Burden (hour/year) (a) x (b) = (c)	Rate1 ($/hour) (d)	Estimated Annual Respondent Cost Burden (c) x (d) = (e)
1	Letter of Protest PTO/2303	3,683	1	3,683	1.25 (75 minutes)	4,604	$400	$1,841,600
2	Request to Make Special PTO/2304	175	1	175	0.67 (40 minutes)	117	$400	$46,800
3	Response to Petition to Director Inquiry Letter PTO/2305	321	1	321	0.83 (50 minutes)	266	$400	$106,400
4	Petition to Make Special PTO/2306	523	1	523	0.67 (40 minutes)	350	$400	$140,000
5	Request to Restore Filing Date PTO/2307	13	1	13	0.67 (40 minutes)	9	$400	$3,600
6	Request for Reinstatement PTO/2308	263	1	263	0.83 (50 minutes)	218	$400	$87,200
	Total	4,978		4,978	- - -	5,564	- - -	$2,225,600

Table 4: Total Hourly Burden For Individuals or Households Respondents

Item No.	Item	Estimated Annual Respondents (a)	Responses per Respondent (b)	Estimated Annual Responses (a) x (b)=(c)	Estimated Time For Response (hours) (d)	Estimated Burden (hour/year) (c) x (d) = (e)	Rate2 ($/hour) (f)	Estimated Annual Respondent Cost Burden (e) x (f) = (g)
1	Letter of Protest PTO/2303	920	1	920	1.25 (75 minutes)	1150	$400	$460,000
2	Request to Make Special PTO/2304	44	1	44	0.67 (40 minutes)	29	$400	$11,600
3	Response to Petition to Director Inquiry Letter PTO/2305	80	1	80	0.83 (50 minutes)	66	$400	$26,400
4	Petition to Make Special PTO/2306	131	1	131	0.67 (40 minutes)	88	$400	$35,200
5	Request to Restore Filing Date PTO/2307	3	1	3	0.67 (40 minutes)	2	$400	$800
6	Request for Reinstatement PTO/2308	65	1	65	0.83 (50 minutes)	54	$400	$21,600
	Total	1,243		1,243	- - -	1,389	- - -	$555,600

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.

This information collection has non-hourly cost burdens in both fees paid by the public and associated postage costs for mailing items to the USPTO. The total (non-hour) respondent cost burden for this information collection is estimated to be $393,875 per year, which includes $393,825 in fees and $50 in postage costs.

Fees

There are two fees associated with this information collection, for a total of $393,825 per year, as outlined in Table 5 below.

Table 5: Filing Fees (Non-hour) Cost Burden for Trademark Petitions

Item No.	Item	Estimated Annual Responses (a)	Estimated Cost (b)	Estimated Non-Hour Cost Burden (a) x (b) = (c)
1	Letter of Protest (TEAS)	4,603	$50	$230,150
4	Petition to Make Special (TEAS)	653	$250	$163,325
4	Petition to Make Special (Paper)	1	$350	$350
Total		- - -	- - -	$393,825

Postage Cost

Although the USPTO requires that the items in this information collection be submitted electronically, the items may, in limited situations, be submitted by mail through the United States Postal Service (USPS). The USPTO estimates that the average first-class postage cost for a mailed submission will be $8.25 and that approximately 6 submissions may be mailed to the USPTO, for a total postage cost of $50 per year.

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-12 employees and GS-15 employees to process the materials in this information collection.

The USPTO estimates that the cost of a GS-12, step 5³ employee is $61.56 per hour ($47.35 with 30% ($14.21) added for benefits and overhead). The USPTO estimates that the cost of a GS-15, step 5⁴ employee is $101.75 per hour ($78.27 with 30% ($23.48) added for benefits and overhead).

The USPTO estimates that it takes the employees between approximately 30 minutes (0.50 hours) and 40 minutes (0.67 hours) to process the materials submitted as a part of this information collection.

Table 7 calculates the burden hours and costs to the Federal Government for processing this information collection.

Table 7: Burden Hour/Burden Cost to the Federal Government for Trademark Petitions

Item No.	Item	Responses (a)	Time per response (b)	Hours (a) x (b) = (c)	Rate (d)	Total Estimated Government Cost (c) x (d) = (e)
1	Letter of Protest (TEAS)	4,603	0.67 (40 minutes)	2,468	$101.75	$25,119
2	Request to Make Special (TEAS)	219	0.50 (30 minutes)	88	$61.56	$5,417
3	Response to Petition to Director Inquiry Letter (TEAS)	401	0.50 (30 minutes)	161	$101.75	$16,382
4	Petition to Make Special (TEAS)	654	0.50 (30 minutes)	262	$61.56	$16,129
5	Request to Restore Filing Date (TEAS)	16	0.50 (30 minutes	7	$61.56	$431
6	Request for Reinstatement (TEAS)	328	0.67 (40 minutes)	176	$61.56	$10,835
Total		6,221		3,162		$300,312

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

This information collection request, as outlined in the table above, seeks to modify the existing information collection.

Changes in Responses and Burden Hours

For this renewal, the USPTO estimates that the annual responses will increase by 1,453 (from 4,768 to 6,221) and the total burden hours will increase by 2,619 (from 4,334 to 6,953) from the currently approved burden for this information collection. These changes are due to estimated fluctuations in the number of trademark submissions to USPTO.

Changes in Annual (Non-hour) Costs

For this renewal, the USPTO estimates that the total annual (non-hour) costs will increase by $340,367 (from $53,508 to $393,875) due to:

• The addition of a new fee for Letters of Protest results in an increase of $230,150 in respondent cost burdens due to the Agency discretion.

• The expected increase in the number of submissions, based on USPTO estimates, results in an increase of $110,217 in respondent cost burdens from existing fees and postage.

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 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.

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 https://www.opm.gov/policy-data-oversight/pay-leave/salaries-wages/salary-tables/pdf/2021/DCB_h.pdf

4 https://www.opm.gov/policy-data-oversight/pay-leave/salaries-wages/salary-tables/pdf/2021/DCB_h.pdf

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