0651-0061 Streamlining Petitions CWS

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JUSTIFICATION FOR NONMATERIAL/NONSUBSTANTIVE CHANGE
Trademark Petitions
OMB Control Number 0651-0061

Background

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. The regulations implementing the Trademark Act are set forth in 37 CFR Part 2.

The USPTO is consolidating and streamlining several of its petitions and request forms. The USPTO is updating the Request for Reinstatement process and will now collect that information as part of the Petition to Revive Abandoned Applications process. Therefore, the USPTO will reclassify Requests for Reinstatement concerning applications as Petitions to Revive Abandoned Applications. The USPTO is also moving the Petition to Director (PTO-2301) and the Petition to Revive with Request to Delete Section 1(b) Basis or to Delete IT Goods/Services/Collective Membership Organization After NOA (PTO-1557) from 0651-0054 into this information collection to consolidate Trademark Petitions in one location. 

Changes to the information systems allow the Petition to the Director to collect requests to make special, petitions to make special, requests to restore filing dates, and petitions to change filing basis, which were previously stand-alone forms, into a single petition form. However, each petition must be submitted separately, even if they use the same basic format and form request instrument (PTO-2301). An outline of the changes is shown in the table below:

Table 1: Consolidated IC Item Names 
Current Item No.
Item
Action Taking Place
New Item No.
From 0651-0054

3
Petition to Revive Abandoned Application – Failure to Respond Timely to Office Action 
PTO-2194
Consolidated into new “Petition to Revive Abandoned Application” IC line.
4
From 0651-0054

4
Petition to Revive Abandoned Application – Failure to File Timely Statement of Use or Extension Request 
PTO-2195
Consolidated into new “Petition to Revive Abandoned Application” IC line.
4
From 0651-0054

10
Petition to the Director

PTO-2301
Consolidating into new “Petition to the Director” IC line.
2
From 0651-0054

11
Petition to Revive with Request to Delete Section 1(b) Basis or to Delete ITU Goods/Services/Collective Membership Organization After NOA
Creating new “Petition to Revive with Request to Delete Section 1(b) Basis or to Delete ITU Goods/Services/Collective Membership Organization After NOA” IC line.
8
2
Request to Make Special 

PTO-2304
Consolidating into new “Petition to the Director” IC line.
2
4
Petition to Make Special

PTO-2306
Consolidating into new “Petition to the Director” IC line.
2
5
Request to Restore Filing Date

PTO-2308
Consolidating into new “Petition to the Director” IC line.
2
6
Request for Reinstatement

PTO-2309
Consolidated into new “Petition to Revive Abandoned Application” IC line.
4

The updated IC Items will appear as follows:

Table 2: Updated List of IC Items in 0651-0061
Item No. 
Item 
1 
Letter of Protest 
 
PTO-2303 
2 
Petition to the Director, including: 
    • Petition to Make Special 
    • Petition to Change Filing Basis 
    • Petition to Restore Filing Date
    • Petition to Add or Substitute a Filing Basis After Publication
 
PTO-2301 
3 
Response to Petition to Director Inquiry Letter 
 
PTO-2305 
4 
Petition to Revive Abandoned Application, including: 
    • Failure to Respond Timely to Office Action 
    • Failure to File Timely Statement of Use or Extension Request 
 
PTO-2194 
PTO-2195 
5 
Petition for Ex Parte Expungement 
 
PTO-2312 
6 
Petition for Ex Parte Reexamination 
 
PTO-2302 
7 
Response to Petition for Expungement or Reexamination Inquiry Letter 
8
Petition to Revive with Request to Delete Section 1(b) Basis or to Delete ITU Goods/Services/Collective Membership Organization After NOA

PTO-1557

Summary of Changes

The addition of the petitions from information collection 0651-0054 and consolidation of three IC lines results in an increase in the associated annual responses, hourly burden estimates, and filing fees. 

Table 3: Current Total Burden Hours and Hourly Costs
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) 
Rate1
($/hour)



(f)
Estimated Annual Respondent Cost Burden

(e) x (f) = (g)
1
Letter of Protest
3,243 
1
3,243 
1.50
4,865
$447
$2,174,655
2
Request to Make Special 
800 
1
800 
0.83
(50 minutes)
664
$447
$296,808
3
Response to Petition to Director Inquiry Letter
800 
1
800 
1 (60 minutes)
800
$447
$357,600
4
Petition to Make Special
300 
1
300 
0.83
(50 minutes)
249
$447
$111,303
5
Request to Restore Filing Date
40 
1
40 
0.83
(50 minutes)
33
$447
$14,751
6
Request for Reinstatement
 400 
1
 400 
1 
400
$447
$178,800
7
Petition for Ex Parte Expungement
90 
1
90 
4.5
405
$447
$181,035
8
Petition for Ex Parte Reexamination
100 
1
100 
4.5
450
$447
$201,150
9
Response to Petition for Expungement or Reexamination Inquiry Letter
40 
1
40 
0.67
(40 minutes)
27
$447
$12,069

Totals
5,813
- - -
5,813
- - -
7,893
- - -
$3,528,171

Table 4: New Total Burden Hours and Hourly Costs
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
3,243 
1
3,243 
1.50
4,865
$447
$2,174,655
2
Petition to the Director, including:
    • Request to Make Special
    • Petition to Make Special
    • Request to Restore Filing Date
    • Petition to Change Filing Basis

PTO-2301
3,525 
1
3,525 
1
3,525 
$447
$1,575,675
3
Response to Petition to Director Inquiry Letter

PTO-2305
800 
1
800 
1 
800 
$447
$357,600
4
Petition to Revive Abandoned Application, including:
    • Failure to Respond Timely to Office Action
    • Failure to File Timely Statement of Use or Extension Request
PTO-2194
PTO-2195
22,132 
1
22,132 
1
22,132 
$447
$9,893,004
5
Petition for Ex Parte Expungement

PTO-2312
90 
1
90 
4.5
405
$447
$181,035
6
Petition for Ex Parte Reexamination

PTO-2302
100 
1
100 
4.5
450
$447
$201,150
7
Response to Petition for Expungement or Reexamination Inquiry Letter
40 
1
40 
0.67
(40 minutes)
27
$447
$12,069
8
Petition to Revive with Request to Delete Section 1(b) Basis or to Delete ITU Goods/Services/Collective Membership Organization After NOA
54
1
54
1.17
(70 minutes)
63
$447
$28,161

Totals
29,984
- - -
29,984
- - -
32,267
- - -
$14,423,359

Table 5: Current List Filing Fees
Item No.
Fee Code(s)
Item
Estimated Annual Responses

(a)
Estimated Fee Amount 

(b)
Estimated Non-Hour Cost Burden

(a) x (b) = (c)
1
7011
Letter of Protest
 3,243 
 $50 
 $162,150 
4
7005
Petition to Make Special (TEAS)
 299 
 $400 
 $119,600 
4
6005
Petition to Make Special (Paper)
 1 
 $500 
 $500 
7
7014
Petition for Ex Parte Expungement
 90 
 $400 
 $36,000 
8
7014
Petition for Ex Parte Reexamination 
 100 
 $400 
 $40,000 


Totals
 3,733 
-  -  -
 $358,250 

Table 6: New List of Filing Fees
Item No.
Fee Code(s)
Item
Estimated Annual Responses

(a)
Estimated Fee Amount 

(b)
Estimated Non-Hour Cost Burden

(a) x (b) = (c)
1
7011
Letter of Protest
 3,243 
 $150 
 $486,450 
2
7005
Petition to Make Special (TEAS)
 299 
 $400 
 $119,600 
2
6005
Petition to Make Special (Paper)
 1 
 $500 
 $500 
2
6005
Petition to the Director  (Paper)
 1 
 $500 
 $500 
2
7005
Petition to the Director  (Electronic)
 2,385 
 $400 
 $954,000 
4
6010
Petition to Revive Abandoned Application – Failure to Respond Timely to Office Action (Paper)
 1 
 $350 
 $350 
4
7010
Petition to Revive Abandoned Application – Failure to Respond Timely to Office Action (Electronic)
 20,665 
 $250 
 $5,166,250 
4
6010
Petition to Revive Abandoned Application – Failure to File Timely Statement of Use or Extension Request (Paper)
 1 
 $350 
 $350 
4
7010
Petition to Revive Abandoned Application – Failure to File Timely Statement of Use or Extension Request (Electronic)
 1,067 
 $250 
 $266,750 
5
7014
Petition for Ex Parte Expungement
 90 
 $400 
 $36,000 
6
7014
Petition for Ex Parte Reexamination 
 100 
 $400 
 $40,000 
8
6010
Petition to Revive with Request to Delete Section 1(b) Basis or to Delete ITU Goods/Services/Collective Membership Organization After NOA (Paper)
1
$350
$350
8
7010
Petition to Revive with Request to Delete Section 1(b) Basis or to Delete ITU Goods/Services/Collective Membership Organization After NOA (Electronic)
54
$250
$13,500


Totals
 27,908 
- - -
 $7,084,600 

Changes in Burden

The addition of four petitions and the consolidation of multiple IC lines results in the following burden changes for this information collection:

Table 7: Changes in Burden
Burden Type
Currently Approved
Proposed Changes
New Estimates
Responses
5,813
24,171
29,984
Hours
7,893
24,374
32,267
Non-hourly costs ($)
682,560
6,402,050
7,084,610

Therefore, the revised burden for 0651-0061 is as follows:

    • 29,984 annual responses
    • 32,267 annual burden hours
    • $7,084,610 in annual non-hourly cost burdens