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Responses to Office Action and Voluntary Amendment Forms

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ACTION:

Proposed collection; comment request.

SUMMARY:

The United States Patent and Trademark Office (USPTO), as required by the Paperwork Reduction Act of 1995, invites comments on a proposed extension of an existing information collection: 0651-0050 (Responses to Office Action and Voluntary Amendment Forms).

DATES:

Written comments must be submitted on or before July 17, 2017.

ADDRESSES:

You may submit comments by any of the following methods:

  • Email: InformationCollection@uspto.gov. Include “0651-0050 comment” in the subject line of the message.
  • Mail: Marcie Lovett, Records Management Division Director, Office of the Chief Information Officer, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.
  • Federal Rulemaking Portal: http://www.regulations.gov.
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FOR FURTHER INFORMATION CONTACT:

Requests for additional information should be directed to Catherine Cain, Attorney Advisor, Office of the Commissioner for Trademarks, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450, by telephone at 571-272-8946, or by email at Catherine.Cain@uspto.gov. Additional information about this collection is also available at http://www.reginfo.gov under “Information Collection Review.”

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SUPPLEMENTARY INFORMATION:

I. Abstract

This collection of information is required by the Trademark Act, 15 U.S.C. 1051 et seq., which provides for the federal registration of trademarks, service marks, collective trademarks and services marks, collective membership marks, and certification marks. Individuals and business that use such marks, or intend to use such marks, in interstate commerce may file an application to register their marks with the United States Patent and Trademark Office (USPTO). This collection generally contains information that is not submitted with the initial trademark application but is associated with, or required for, the USPTO review of applications for registration.

In some cases, the USPTO issues Office Actions to applicants who have applied to register a mark, requesting information that was not provided with the initial submission, but is required before the issuance of a registration. Also, the USPTO may determine that a mark is not entitled to registration, pursuant to one or more provisions of the Trademark Act. In such cases, the USPTO will issue an Office Action advising the applicant of the refusal to register the mark. Applicants reply to these Office Actions by providing the required information and/or by putting forth legal arguments as to why the refusal of registration should be withdrawn.

The USPTO administers the Trademark Act through Chapter 37 of the Code of Federal Regulations. These rules allow the USPTO to request and receive information required to process applications. These rules also allow applicants to submit certain amendments to their applications.

Applicants may also supplement their applications and provide further information by filing a Voluntary Amendment Not in Response to USPTO Office Action/Letter, a Request for Reconsideration after Final Office Action, a Post-Approval/Publication/Post-Notice of Allowance (NOA) Amendment, a Petition to Amend Basis Post-Publication, or a Response to Suspension Inquiry or Letter of Suspension. In rare instances, an applicant may also submit a Substitute Trademark/Servicemark, Substitute Certification Mark, Substitute Collective Membership Mark, or Substitute Collective Trademark/Servicemark application.

II. Method of Collection

The forms in this collection are available in electronic format through the Trademark Electronic Application System (TEAS), which may be accessed on the USPTO Web site. TEAS Global Forms are available for the items where a TEAS form with dedicated data fields is not yet available. Applicants may also submit the information in paper form by mail, fax, or hand delivery.

III. Data

OMB Number: 0651-0050.

Form Numbers: PTO-1771, PTO-1822, PTO-1957, PTO-1960, and PTO-1966.

Type of Review: Extension of a currently approved collection.

Affected Public: Businesses or other for-profits; not-for-profit institutions; individuals.

Estimated Number of Respondents: 472,301 responses per year.

Estimated Time per Response: The USPTO estimates that it will take the public between 10 minutes (0.16 hours) and 45 minutes (0.75 hours), depending on the complexity of the situation, to gather the necessary information, prepare the appropriate documents, and submit the information required for this collection.

Estimated Total Annual Respondent Burden Hours: 266,184 hours per year.

Estimated Total Annual Respondent Cost Burden: $109,135,440.00. The USPTO expects that the information in this collection will be prepared by attorneys at an estimated rate of $410 per hour. Therefore, the USPTO estimates that the respondent cost burden for this collection will be approximately $109,135,440.00 per year.

Table 1—Total Hourly Burden

IC #ItemEstimated time for response (hours)Estimated annual responsesEstimated annual burden hoursRate ($/hr)Estimated annual burden
(a)(b)(a) × (b) = (c)(d)(c) × (d) = (e)
1Response to Office Action (TEAS)0.58 (35 minutes)410,722238,219$410.00$97,699,790.00
1Response to Office Action (Paper)0.67 (40 minutes)9,8476,597410.002,704,770..00
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2Substitute Trademark/Servicemark Application, Principal Register (TEAS Global)0.50 (30 minutes)11410.00410.00
2Substitute Trademark/Servicemark Application, Principal Register (Paper)0.50 (30 minutes)11410.00410.00
3Substitute Certification Mark (TEAS Global)0.50 (30 minutes)11410.00410.00
3Substitute Certification Mark (Paper)0.50 (30 minutes)11410.00410.00
4Substitute Collective Membership Mark (TEAS Global)0.50 (30 minutes)11410.00410.00
4Substitute Collective Membership Mark (Paper)0.50 (30 minutes)11410.00410.00
5Substitute Collective Trademark/Servicemark (TEAS Global)0.50 (30 minutes)11410.00410.00
5Substitute Collective Trademark/Servicemark (Paper)0.50 (30 minutes)11410.00410.00
6Voluntary Amendment Not in Response to USPTO Office Action/Letter (TEAS)0.33 (20 minutes)16,1175,319410.002,180,790.00
6Voluntary Amendment Not in Response to USPTO Office Action/Letter (Paper)0.50 (30 minutes)16382410.0033,620.00
7Request for Reconsideration After Final Office Action (TEAS)0.67 (40 minutes)17,51511,735410.004,811,350.00
7Request for Reconsideration After Final Office Action (Paper)0.75 (45 minutes)4433410.0013,530.00
8Post-Approval/Publication/Post-Notice of Allowance (NOA) Amendment (TEAS)0.42 (25 minutes)4,5411,907410.00781,870.00
8Post-Approval/Publication/Post-Notice of Allowance (NOA) Amendment (Paper)0.50 (30 minutes)116410.002,460.00
9Petition to Amend Basis Post-Publication (TEAS Global)0.33 (20 minutes)800264410.00108,240.00
9Petition to Amend Basis Post-Publication (Paper)0.42 (25 minutes)3314410.005,740.00
10Response to Suspension Inquiry or Letter of Suspension (TEAS)0.16 (10 minutes)12,4992,000410.00820,000.00
10Response to Suspension Inquiry or Letter of Suspension0.25 (15 minutes)133410.001,230.00
Total472,300266,184109,135,440.00

Estimated Total Annual (Non-hour Respondent Cost Burden: $113,053.35. There are no capital start-up, maintenance, or record-keeping costs associated with this information collection. However, this collection does have annual (non-hour) costs in the form of postage costs and filing fees.

Customers incur postage costs when submitting non-electronic information to the USPTO by mail through the United States Postal Service. The USPTO expects that the majority (roughly 98%) of the paper forms are submitted to the USPTO via first-class mail. The USPTO estimates that these submissions will typically weigh approximately one ounce and that the first-class postage for these submissions is $0.49 per submission.

Table 2—Postage Costs

IC #ItemResponsesPostage costs ($)Total (non-hour) cost burden
(a)(b)(a × b) = (c)
1Response to Office Action9,847$0.49$4,825.03
2Substitute Trademark/Servicemark Application, Principal Register10.490.49
3Substitute Certification Mark10.490.49
4Substitute Collective Membership Mark10.490.49
5Substitute Collective Trademark/Servicemark10.490.49
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6Voluntary Amendment Not in Response to USPTO Office Action/Letter1630.4979.87
7Request for Reconsideration After Final Office Action440.4921.56
8Post-Approval/Publication/Post-Notice of Allowance (NOA) Amendment110.495.39
9Petition to Amend Basis Post-Publication330.4916.17
10Response to Suspension Inquiry or Letter of Suspension130.496.37
Total9,8504,953.35

There are three filing fees associated with the collection, detailed in Table 3 below.

Table 3—Filing Fees

IC #ItemAnnual estimated responsesFiling FeeFiling fee costs
2Additional fee for application that does not meet TEAS Plus or TEAS RF filing requirements, per Class172$125.00$21,500.00
9Petition to Amend Basis Post-Publication (TEAS Global)800100.0080,000.00
9Petition to Amend Basis Post-Publication (Paper)33200.006,600.00
Total1,005108,100.00

The USPTO estimates that the total (non-hour) respondent cost burden for this collection in the form of both postage costs and filing fees is $113,053.35 per year.

IV. Request for Comments

Comments submitted in response to this notice will be summarized and/or included in the request for OMB approval. All comments will become a matter of public record.

The USPTO is soliciting public comments to: (a) Evaluate 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) evaluate the accuracy of the agency's estimate of the burden of the proposed collection of information, including the validity of the methodology and assumptions used; (c) enhance the quality, utility, and clarity of the information to be collected; and (d) minimize the burden of the collection of information on those who are to respond, including through the use of appropriate automated, electronic, mechanical, or other technological collection techniques or other forms of information technology, e.g., permitting electronic submission of responses.

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Marcie Lovett,

Records Management Division Director, USPTO, Office of the Chief Information Officer.

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[FR Doc. 2017-09809 Filed 5-15-17; 8:45 am]

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