JUSTIFICATION FOR NONMATERIAL/NONSUBSTANTIVE CHANGE
United States Patent and Trademark Office
Substantive Submissions Made During Prosecution of the Trademark Application
OMB Control Number 0651-0054
2020
Background
The United States Patent and Trademark Office (USPTO) is submitting this request to increase the annual responses associated with information collection 0651-0054 (Substantive Submissions Made During Prosecution of the Trademark Application) in conjunction with rulemaking RIN 0651-AD30 (Requirement of U.S. Licensed Attorney for Foreign Trademark Applicants and Registrants) and RIN 0651-AD15 (Changes to the Trademark Rules of Practice to Mandate Electronic Filing).
This collection of information is required by the Trademark Act, 15 U.S.C. § 1051 et seq., which provides for the registration of trademarks, service marks, collective trademarks and collective 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 United States Patent and Trademark Office (USPTO). Such individuals and businesses may also submit various communications to the USPTO, including providing additional information needed to process a request to delete a particular filing basis from an application or to divide an application identifying multiple goods and/or services into two or more separate applications.
In support of RIN 0651-AD30, (Requirement of US Licensed Attorney for Foreign Trademark Applicants and Registrants) USPTO is increasing the estimated number of Petitions to the Director under Trademark Rule 2.146 to account for the submission of petitions requesting that the applicant’s or registrant’s domicile address be withheld from public view. Such petitions are made under the general petition provision at 37 CFR 2.146(a)(5). Overall, the USPTO estimates 100 additional petitions could be filed annually. Each petition is estimated to take 25 minutes to complete and filing requires a $100 filing fee. This changes adds 100 respondents, 41 burden hours, and $10,000 in non-hourly costs to the information collection.
In support of RIN 0651-AD15 (Changes to the Trademark Rules of Practice to Mandate Electronic Filing), the USPTO is proposing changes to account for a shift in respondents away from paper submissions and towards electronic submissions. The number of trademark applicants is expected to remain at its current level as it assumed that those who would have filed on paper will instead submit electronically. This request does, however, add in a new item (Petition to the Director under Trademark Rule 2.147) to account for individuals requesting acceptance of paper submissions. This new petition is estimated to add 60 respondents to the information collection. This petition is estimated to take 30 minutes to complete, if filed on paper, or 25 minutes to complete, if filed electronically. The fee for filing a petition on paper is $200 and $100 for filing electronically. These changes would increase the hourly burdens by 28. The cost burden estimates also change as the reduction of $4,422, since fewer paper submissions will require postage costs, is offset by the addition of $9,000 in filing fees.
Overall, these changes will add 160 respondents to the information collection, add 65 burden hours, and increase the non-hourly cost burden by $14,578. Additionally the hourly cost burden estimate for this information collection is increasing by $28,470 (65 hours X $438 hourly rate).
Changes in Respondents
IC #
|
Item |
Current Annual Responses |
Increases in Responses |
Proposed Annual Responses |
1 |
Trademark/Service Mark Allegation of Use (Amendment to Allege Use/Statement of Use) (Paper) |
27 |
-14 |
13 |
1 |
Trademark/Service Mark Allegation of Use (Amendment to Allege Use/Statement of Use) (TEAS) |
109,086 |
14 |
109,100 |
2 |
Request for Extension of Time to File a Statement of Use (Paper) |
59 |
-30 |
29 |
2 |
Request for Extension of Time to File a Statement of Use (TEAS) |
234,906 |
30 |
234,936 |
10 |
Petition to the Director Under Trademark Rule 2.146 (TEAS Global) |
750 |
100 |
850 |
12 |
Petition to the Director Under Trademark Rule 2.147 (Paper) |
0 |
30 |
30 |
12 |
Petition to the Director Under Trademark Rule 2.147 (TEAS) |
0 |
30 |
30 |
Total |
|
344,828 |
160 |
344,988 |
Changes in Burden Hours
IC # |
Item |
Current Annual Time Burden (hours) |
Increases in Time Burden (hours) |
Proposed Annual Time Burden (hours) |
1 |
Trademark/Service Mark Allegation of Use (Amendment to Allege Use/Statement of Use) (Paper) |
14 |
-7 |
7 |
1 |
Trademark/Service Mark Allegation of Use (Amendment to Allege Use/Statement of Use) (TEAS) |
45,453 |
5 |
45,458 |
2 |
Request for Extension of Time to File a Statement of Use (Paper) |
15 |
-8 |
7 |
2 |
Request for Extension of Time to File a Statement of Use (TEAS) |
46,981 |
6 |
46,987 |
10 |
Petition to the Director Under Trademark Rule 2.146 (TEAS Global) |
313 |
41 |
354 |
12 |
Petition to the Director Under Trademark Rule 2.147 (Paper) |
0 |
15 |
15 |
12 |
Petition to the Director Under Trademark Rule 2.147 (TEAS) |
0 |
13 |
13 |
Total |
|
92,776 |
65 |
92,841 |
Changes to Non-hourly Cost Burdens
|
IC Item |
Current Cost |
Changes in Cost |
Proposed Cost |
1 |
Trademark/Service Mark Allegation of Use (Amendment to Allege Use/Statement of Use) (Paper) |
$5,413 |
-$2,807 |
$2,606 |
1 |
Trademark/Service Mark Allegation of Use (Amendment to Allege Use/Statement of Use) (TEAS) |
$10,908,600 |
$1,400 |
$10,910,000 |
2 |
Request for Extension of Time to File a Statement of Use (Paper) |
$13,304 |
$-6,765 |
$6,539 |
2 |
Request for Extension of Time to File a Statement of Use (TEAS) |
$29,363,250 |
$3,750 |
$29,367,000 |
10 |
Petition to the Director Under Trademark Rule 2.146 (TEAS Global) |
$75,000 |
$10,000 |
$85,000 |
12 |
Petition to the Director Under Trademark Rule 2.147 (Paper) |
$0 |
$6,000 |
$6,000 |
12 |
Petition to the Director Under Trademark Rule 2.147 (TEAS) |
$0 |
$3,000 |
$3,000 |
|
Total |
$40,365,567 |
$14,578 |
$$40,380,145 |
Changes in Burden
Burden Type |
Currently Approved |
Proposed Changes |
New Estimate |
Annual Respondent |
374,972 |
160 |
375,132 |
Annual hourly burden |
101,401 |
65 |
101,466 |
Hourly Cost Burden |
$44,413,360 |
$28,470 |
$44,441,830 |
Annual (non-hourly) cost burden |
$42,650,869 |
$14,578 |
$42,665,447 |
0651-0054’s revised total burden is as follows:
375,132 annual respondents
101,466 in annual hourly burden
$44,441,830 in hourly cost burden
$42,665,447 in annual (non-hourly) cost burden
File Type | application/vnd.openxmlformats-officedocument.wordprocessingml.document |
Author | Ameyedowo, Barbara (AMBIT) |
File Modified | 0000-00-00 |
File Created | 2021-01-11 |