Skip to Content

Notice

Trademark Processing

Document Details

Information about this document as published in the Federal Register.

Published Document

This document has been published in the Federal Register. Use the PDF linked in the document sidebar for the official electronic format.

Start Preamble

ACTION:

Proposed collection; comment request.

SUMMARY:

The United States Patent and Trademark Office (USPTO), as part of its continuing effort to reduce paperwork and respondent burden, invites the general public and other Federal agencies to comment on the submission of a revision of a currently approved collection, as required by the Paperwork Reduction Act of 1995, Public Law 104-13 (44 U.S.C. 3506(c)(2)(A)).

DATES:

Written comments must be submitted on or before April 18, 2005.

ADDRESSES:

You may submit comments by any of the following methods:

  • E-mail: Susan.Brown@uspto.gov. Include “0651-0009 comment” in the subject line of the message.
  • Fax: (571) 273-0112, marked to the attention of Susan Brown.
  • Mail: Susan K. Brown, Records Officer, Office of the Chief Information Officer, Office of Data Architecture and Services, Data Administration Division, U.S. Patent and Trademark Office, PO Box 1450, Alexandria, VA 22313-1450.
Start Further Info

FOR FURTHER INFORMATION CONTACT:

Requests for additional information should be directed to the attention of Ari Leifman, Staff Attorney, Office of the Commissioner for Trademarks, United States Patent and Trademark Office (USPTO), PO Box 1451, Alexandria, VA 22313-1451, by telephone at 571-272-9572, or by e-mail at ari.leifman@uspto.gov.

End Further Info End Preamble Start Supplemental Information

SUPPLEMENTARY INFORMATION Start Printed Page 8079

I. Abstract

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 regulable by Congress, may file an application with the USPTO to register their marks. These individuals and businesses may also submit various communications to the USPTO, including requests to amend their applications to delete an originally-identified statutory filing basis, such as the “intent to use” basis. Registered marks remain on the register for ten years. However, the registrations are canceled unless the owner files an affidavit with the USPTO attesting to the continued use (or excusable non-use) of the mark in commerce. The applicant may withdraw his or her application. If an application becomes abandoned, the owner may petition the USPTO to revive the abandoned application. The registration may be renewed for periods of ten years.

The rules implementing the Act are set forth in 37 CFR Part 2. These rules mandate that each register entry include the mark, the goods and/or services in connection with which the mark is used, ownership information, dates of use, and certain other information. The USPTO also provides similar information concerning pending applications. The register and pending application information may be accessed by an individual or by businesses, to determine 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. The Federal trademark registration process may lessen the filing of papers in court and between parties.

The USPTO is proposing to add five paper requirements into this collection: Request to Delete Section 1(b) Basis, Intent to Use, Request for Express Abandonment (Withdrawal) of Application, Request for Permission to Withdraw as Attorney of Record, Change of Owner's Address Form, and Other Petitions. The electronic versions of these first four requirements were additions to the collection recently approved by OMB on December 2, 2004. Other Petitions is a new paper category being added to encompass all other miscellaneous petitions that are submitted after prosecution of the trademark application. Other Petitions does not have an electronic equivalent; petitions are submitted on paper.

At this time, the USPTO is proposing to split this collection into five separate collections based upon the lines of the Trademark business processes. The proposed five groups are Applications for Trademark Registration, Substantive Submissions Made During Prosecution of the Trademark Application, Submissions Regarding Correspondence and Regarding Attorney Representation (Trademarks), Post Registration (Trademark Processing), and Trademark Petitions. The USPTO believes that splitting this extensive collection into smaller, more manageable, information collection requests will allow for a more efficient updating and renewal process.

II. Method of Collection

Electronically if applicants submit the information using the forms available through TEAS. By mail or hand delivery if applicants chose to submit the information in paper form.

III. Data

OMB Number: 0651-0009.

Form Number(s): PTO Forms 4.8, 4.9, 4.16, 1478(A), 1553, 1581, 1583, 1963, 2000, 2194, 2195, 2196, 2197, 2200, 2201 and 2202.

Type of Review: Revision of a currently approved collection.

Affected Public: Primarily business or other for-profit organizations, but also individuals or households; not-for-profit institutions; farms, Federal Government; and state, local or tribal Government.

Estimated Number of Respondents: 785,130 total responses. Of this total, 253,801 responses are related to 0651-0009 Applications for Trademark Registration, 186,110 responses are related to 0651-00xx Substantive Submissions Made During Prosecution of the Trademark Application, 218,482 responses are related to 0651-00xx Submissions Regarding Correspondence and Regarding Attorney Representation (Trademarks), 126,337 responses are related to 0651-00xx Post Registration (Trademark Processing), and 400 responses are related to 0651-00xx Trademark Petitions, for a new total of 785,130 responses for this collection.

Estimated Time Per Response: The USPTO estimates that it will take approximately 3 minutes (0.05 hours) to 30 minutes (0.50 hours) to complete this information This includes the time to gather the necessary information, create the documents, and submit the completed request to the USPTO.

Estimated Total Annual Respondent Burden Hours: 141,400 burden hours.

Estimated Total Annual Respondent Cost Burden: Using the professional hourly rate of $286 for associate attorneys in private firms, the USPTO estimates $40,440,400 per year for salary costs associated with respondents. Of this total, $21,438,274 is associated with 0651-0009 Applications for Trademark Registration, $9,011,288 is associated with 0651-00xx Substantive Submissions Made During Prosecution of the Trademark Application, $4,596,592 is associated with 0651-00xx Submissions Regarding Correspondence and Regarding Attorney Representation (Trademarks), $5,356,494 is associated with 0651-00xx Post Registration (Trademark Processing), and $37,752 is associated with 0651-00xx Trademark Petitions, for a new total of $40,440,400 in annual respondent cost burden for this collection, as follows:

0651-0009 Applications for Trademark Registration:

ItemEstimated time for responseEstimated annual responsesEstimated annual burden hours
Use-Based Trademark/Service Mark Application, including:23 minutes21,3928,129
—Trademark/Service Mark Application
—Collective Trademark/Service Mark Application
—Collective Membership Mark
—Certification Mark Application
Electronic Use-Based Trademark/Service Mark Application, including:21 minutes64,17622,462
—Trademark/Service Mark Application
—Collective Trademark/Service Mark Application
—Collective Membership Mark
—Certification Mark Application
Start Printed Page 8080
Intent to Use Trademark/Service Mark Application, including:17 minutes38,03110,649
—Trademark/Service Mark Application
—Collective Trademark/Service Mark Application
—Collective Membership Mark
—Certification Mark Application
Electronic Intent to Use Trademark/Service Mark Application, including:15 minutes114,09228,523
—Trademark/Service Mark Application
—Collective Trademark/Service Mark Application
—Collective Membership Mark
—Certification Mark Application
Application for Registration of Trademark/Service Mark under §§ 44(d) and (e), including:20 minutes4,0271,329
—Trademark/Service Mark Application
—Collective Trademark/Service Mark Application
—Collective Membership Mark
—Certification Mark Application
Electronic Application for Registration of Trademark/Service Mark under §§ 44(d) and (e), including:19 minutes12,0833,867
—Trademark/Service Mark Application
—Collective Trademark/Service Mark Application
—Collective Membership Mark
—Certification Mark Application
Totals253,80174,959

0651-00xx Substantive Submissions Made During Prosecution of the Trademark Application:

ItemEstimated time for responseEstimated annual responsesEstimated annual burden hours
Trademark/Service Mark Allegation of Use (Amendment to Allege Use/Statement of Use)13 minutes18,7394,123
Electronic Trademark/Service Mark Allegation of Use (Amendment to Allege Use/Statement of Use)11 minutes43,7268,308
Request for Extension of Time to File a Statement of Use10 minutes30,3485,159
Electronic Request for Extension of Time to File a Statement of Use9 minutes70,81110,622
Petition to Revive Abandoned Application—Failure to Respond Timely to Office Action12 minutes1,900399
Electronic Petition to Revive Abandoned Application—Failure to Respond Timely to Office Action5 minutes4,400352
Petition to Revive Abandoned Application—Failure to File Timely Statement of Use or Extension Request12 minutes1,900399
Electronic Petition to Revive Abandoned Application—Failure to File Timely Statement of Use or Extension Request5 minutes4,400352
Request to Delete Section 1(b) Basis, Intent to Use4 minutes23514
Electronic Request to Delete Section 1(b) Basis, Intent to Use3 minutes55028
Request for Express Abandonment (Withdrawal) of Application4 minutes1,11567
Electronic Request for Express Abandonment (Withdrawal) of Application3 minutes3,600180
Request to Divide5 minutes47638
Electronic Request to Divide4 minutes1,11067
Trademark Amendments/Corrections/Surrenders30 minutes2,8001,400
Totals186,11031,508

0651-00xx Submissions Regarding Correspondence and Regarding Attorney Representation (Trademarks):

ItemEstimated time for responseEstimated annual responsesEstimated burden hours
Revocation of Power of Attorney and/or Appointment of Attorney (Power of Attorney)6 minutes38,5303,853
Electronic Revocation of Power of Attorney/Domestic Representative and/or Appointment of Attorney/Domestic Representative5 minutes89,9007,192
Designation of Domestic Representative3 minutes36,1961,810
Request for Permission to Withdraw as Attorney of Record15 minutes645161
Electronic Request for Permission to Withdraw as Attorney of Record12 minutes1,500315
Start Printed Page 8081
Change of Owner's Address Form4 minutes15,515931
Electronic Change of Owner's Address3 minutes36,1961,810
Totals218,48216,072

0651-00xx Post Registration (Trademark Processing):

ItemEstimated time for responseEstimated annual responsesEstimated annual burden hours
Affidavit of Use of a Mark in Commerce Under § 811 minutes12,3302,343
Electronic Affidavit of Use of a Mark in Commerce Under § 810 minutes28,7704,891
Combined Affidavit of Use in Commerce & Application for Renewal of Registration of a Mark Under §§ 8 & 914 minutes12,3302,836
Electronic Combined Affidavit of Use in Commerce & Application for Renewal of Registration of a Mark Under §§ 8 & 912 minutes28,7706,042
Affidavit of Incontestability of a Mark Under § 153 minutes1317
Electronic Affidavit of Incontestability of a Mark Under § 156 minutes30631
Combined Affidavit of Use & Incontestability Under §§ 8 & 155 minutes13,1101,049
Electronic Combined Affidavit of Use & Incontestability Under §§ 8 & 153 minutes30,5901,530
Totals26,33718,729

0651-00xx Trademark Petitions:

ItemEstimated time for responseEstimated annual responsesEstimated time for annual burden hours
Other Petitions20 minutes400132
Total400132

Estimated Total Annual Non-Hour Respondent Cost Burden (includes postage costs and filing fees): $146,766,731. This collection has no operation or maintenance costs.

Customers incur postage costs when submitting non-electronic information to the USPTO by mail through the United States Postal Service. The USPTO estimates that the majority of submissions for these paper forms are made via first class mail. First class postage is 37 cents. Therefore, a total estimated mailing cost of $92,556 is incurred (250,150 responses × $.37). Of this total, $23,476 is associated with 0651-0009 Applications for Trademark Registration, $21,280 is associated with 0651-00xx Substantive Submissions Made During Prosecution of the Trademark Application, $33,629 is associated with 0651-00xx Submissions Regarding Correspondence and Regarding Attorney Representation (Trademarks), $14,023 is associated with 0651-00xx Post Registration (Trademark Processing), and $148 is associated with 0651-00xx Trademark Petitions, for a new total of $92,556 in postage costs for this collection, as follows:

0651—0009 Applications for Trademark Registration:

ItemResponses (yr) (a)Postage costs (b)Total cost (yr) (a × b)
Use-Based Trademark/Service Mark Application, including;21,392$.37$7,915.00
—Trademark/Service Mark Application
—Collective Trademark/Service Mark Application
—Collective Membership Mark
—Certification Mark Application
Intent to Use Trademark/Service Mark Application, including;38,031.3714,071.00
—Trademark/Service Mark Application
—Collective Trademark/Service Mark Application
—Collective Membership Mark
—Certification Mark Application
Application for Registration of Trademark/Service Mark under §§ 44(d) and (e), including:4,027.371,490.00
—Trademark/Service Mark Application
—Collective Trademark/Service Mark Application
—Collective Membership Mark
Start Printed Page 8082
—Certification Mark Application
Totals63,450$23,476.00

0651—00xx Substantive Submissions Made During Prosecution of the Trademark Application:

ItemResponses (yr) (a)Postage costs (b)Total cost (yr) (a × b)
Trademark/Service Mark Allegation of Use (Amendment to Allege Use/Statement of Use)18,739$.37$6,933.00
Request for Extension of Time to File a Statement of Use30,348.3711,229.00
Petition to Revive Abandoned Application—Failure to Respond Timely to Office Action1,900.37703.00
Petition to Revive Abandoned Application—Failure to File Timely Statement of Use or Extension Request1,900.37703.00
Request to Delete Section 1(b) Basis, Intent to Use235.3787.00
Request for Express Abandonment (Withdrawal) of Application1,115.37413.00
Request to Divide476.37176.00
Trademark Amendments/Corrections/Surrenders2,800.371,036.00
Totals57,51321,280.00

0651—00xx Submissions Regarding Correspondence and Regarding Attorney Representation (Trademarks):

ItemResponses (yr) (a)Postage costs (b)Total cost (yr) (a × b)
Revocation of Power of Attorney and/or Appointment of Attorney (Power of Attorney)38,530$.37$14,256.00
Designation of Domestic Representative36,196.3713,393.00
Request for Permission to Withdraw as Attorney of Record645.37239.00
Change of Owner's Address Form15,515.375,741.00
Totals90,88633,629.00

0651—00xx Post Registration (Trademark Processing):

ItemResponses (yr) (a)Postage costs (b)Total cost (yr) (a × b)
Affidavit of Use of a Mark in Commerce Under § 812,330$.37$4,562.00
Combined Affidavit of Use in Commerce & Application for Renewal of Registration of a Mark Under §§ 8 & 912,330.374,562.00
Affidavit of Incontestability of a Mark Under § 15131.3748.00
Combined Affidavit of Use & Incontestability Under §§ 8 & 1513,110.374,851.00
Totals37,90114,023.00

0651—00xx Trademark Petitions:

ItemResponses (yr) (a)Postage costs (b)Total cost (yr) (a × b)
Other Petitions400$.37$148.00
Total400148.00
Start Printed Page 8083

Filing fees of $146,674,175 are associated with this collection. Of this total, $85,657,825 is associated with 0651-0009 Applications for Trademark Registration, $23,118,950 is associated with 0651-00xx Substantive Submissions Made During Prosecution of the Trademark Application, $0 is associated with 0651-00xx Submissions Regarding Correspondence and Regarding Attorney Representation (Trademarks), $37,857,400 is associated with 0651-00xx Post Registration (Trademark Processing), and $40,000 is associated with 0651-00xx Trademark Petitions for a new total of $146,674,175 in filing fees for this collection, as follows:

0651-0009 Application for Trademark Registration:

ItemResponses (yr) (a)Filing fees (b)Total cost (yr) (a × b)
Use-Based Trademark/Service Mark Application, including:21,392$375.00$8,022,000.00
—Trademark/Service Mark Application
—Collective Trademark/Service Mark
—Application
—Collective Membership Mark
—Certification Mark Application
Electronic Use-Based Trademark/Service Mark Application, including:64,176325.0020,857,200.00
—Trademark/Service Mark Application
—Collective Trademark/Service Mark Application
—Collective Membership Mark
—Certification Mark Application
Intent to Use Trademark/Service Mark Application, including:38,031375.0014,261,625.00
—Trademark/Service Mark Application
—Collective Trademark/Service Mark Application
—Collective Membership Mark
—Certification Mark Application
Electronic Intent to Use Trademark/Service Mark Application, including:114,092325.0037,079,900.00
—Trademark/Service Mark Application
—Collective Trademark/Service Mark Application
—Collective Membership Mark
—Certification Mark Application
Application for Registration of Trademark/Service Mark under §§ 44(d) and (e), including:4,027375.001,510,125.00
—Trademark/Service Mark Application
—Collective Trademark/Service Mark Application
—Collective Membership Mark
—Certification Mark Application
Electronic Application for Registration of Trademark/Service Mark under §§ 44(d) and (e), including:12,083325.003,926,975.00
—Trademark/Service Mark Application
—Collective Trademark/Service Mark Application
—Collective Membership Mark
—Certification Mark Application
Totals253,80185,657,825.00

0651-00xx Substantive Submissions Made During Prosecution of the Trademark Application:

ItemResponses (yr) (a)Filing fees (b)Total cost (yr) (a × b)
Trademark/Service Mark Allegation of Use (Amendment to Allege Use/Statement of Use)18,739$100.00$1,873,900.00
Electronic Trademark/Service Mark Allegation of Use (Amendment to Allege Use/Statement of Use)43,726100.004,372,600.00
Request for Extension of Time to File a Statement of Use30,348150.004,552,200.00
Electronic Request for Extension of Time to File a Statement of Use70,811150.0010,621,650.00
Petition to Revive Abandoned Application—Failure to Respond Timely to Office Action1,900100.00190,000.00
Electronic Petition to Revive Abandoned Application—Failure to Respond Timely to Office Action4,400100.00440,000.00
Petition to Revive Abandoned Application—Failure to File Timely Statement of Use or Extension Request1,900100.00190,000.00
Electronic Petition to Revive Abandoned Application—Failure to File Timely Statement of Use or Extension Request4,400100.00440,000.00
Request to Delete Section 1(b) Basis, Intent to Use2350.000.00
Electronic Request to Delete Section 1(b) Basis, Intent to Use5500.000.00
Request for Express Abandonment (Withdrawal) of Application1,1150.000.00
Electronic Request for Express Abandonment (Withdrawal) of Application3,6000.000.00
Request to Divide476100.0047,600.00
Electronic Request to Divide1,110100.00111,000.00
Start Printed Page 8084
Trademark Amendments/Corrections/Surrenders2,800100.00280,000.00
Totals186,11023,118,950.00

0651-00xx Submissions Regarding Correspondence and Regarding Attorney Representation (Trademarks):

ItemResponses (yr) (a)Filing fees (b)Total cost (yr) (a × b)
Revocation of Power of Attorney and/or Appointment of Attorney (Power of Attorney)38,530$0.00$0.00
Electronic Revocation of Power of Attorney/Domestic Representative and/or Appointment of Attorney/Domestic Representative89,9000.000.00
Designation of Domestic Representative36,1960.000.00
Request for Permission to Withdraw as Attorney of Record6450.000.00
Electronic Request for Permission to Withdraw as Attorney of Record1,5000.000.00
Change of Owner's Address Form15,5150.000.00
Electronic Change of Owner's Address36,1960.000.00
Totals218,4820.00

0651-00xx Post Registration (Trademarks):

ItemResponses (yr) (a)Filing fees (b)Total cost (yr) (a × b)
Affidavit of Use of a Mark in Commerce Under § 812,330$100.00$1,233,000.00
Electronic Affidavit of Use of a Mark in Commerce Under § 828,770100.002,877,000.00
Combined Affidavit of Use in Commerce & Application for Renewal of Registration of a Mark Under §§ 8 & 912,330500.006,165,000.00
Electronic Combined Affidavit of Use in Commerce & Application for Renewal of Registration of a Mark Under §§ 8 & 928,770500.0014,385,000.00
Affidavit of Incontestability of a Mark Under § 15131200.0026,200.00
Electronic Affidavit of Incontestability of a Mark Under § 15306200.0061,200.00
Combined Affidavit of Use & Incontestability Under §§ 8 & 1513,110300.003,933,000.00
Electronic Combined Affidavit of Use & Incontestability Under §§ 8 & 1530,590300.009,177,000.00
Totals126,33737,857,400.00

0651-00xx Trademark Petitions:

ItemResponses (yr) (a)Filing fees (b)Total cost (yr) (a × b)
Other Petitions400$100.00$40,000.00
Total40040,000.00
*Note: All filing fees are based on per class filing.

IV. Request for Comments

Comments are invited on: (a) Whether the proposed collection of information is necessary for the proper performance of the functions of the agency, including whether the information shall have practical utility; (b) the accuracy of the agency's estimate of the burden (including hours and cost) of the proposed collection of information; (c) ways to enhance the quality, utility, and clarity of the information to be collected; and (d) ways to minimize the burden of the collection of information on respondents, e.g., the use of automated collection techniques or other forms of information technology.

Comments submitted in response to this notice will be summarized or included in the request for OMB approval of this information collection; they will also become a matter of public record.

Start Signature
Start Printed Page 8085

Dated: February 10, 2005.

Susan K. Brown,

Records Officer, U.S. Patent and Trademark Office, Office of the Chief Information Officer, Office of Data Architecture and Services, Data Administration Division.

End Signature End Supplemental Information

[FR Doc. 05-3048 Filed 2-16-05; 8:45 am]

BILLING CODE 3510-16-P