Trademark Trial and Appeal Board (TTAB) Actions

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 take this opportunity to comment on proposed and/or continuing information collections, 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 May 24, 2004.

ADDRESSES:

Direct all written comments to Susan K. Brown, Records Officer, Office of the Chief Information Officer, Office of Data Architecture and Services, Data Administration Division, 703-308-7400, U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313, Attn: CPK 3 Suite 310; by e-mail at susan.brown@uspto.gov; or by facsimile at 703-308-7407.

FOR FURTHER INFORMATION CONTACT:

Requests for additional information should be directed to the attention of Mary Frances Bruce, Senior Administrator, Trademark Trial and Appeal Board, United States Patent and Trademark Office (USPTO), P.O. Box 1450, Alexandria, VA 22313-1450; by telephone 703-308-9300; or by e-mail at maryfrances.bruce@uspto.gov.

SUPPLEMENTARY INFORMATION:

I. Abstract

This collection of information is required by Sections 13 (15 U.S.C. 1063), 14 (15 U.S.C. 1064), and 20 (15 U.S.C. 1070) of the Trademark Act. The Act provides for the Federal registration of trademarks and service marks. Any individual or entity that adopts a trademark or service mark to identify its goods or services may apply to federally register its mark. Section 14 of the Trademark Act allows individuals and entities to file a petition to cancel a registration of a mark, while Section 13 allows individuals and entities who believe that they would be damaged by the registration of a mark to file an opposition to the registration of a mark. Section 20 of the Trademark Act allows individuals and entities to file an appeal from any final decision of the examiner in charge of the requested registration of a mark.

The United States Patent and Trademark Office (USPTO) administers the Trademark Act according to 37 CFR Part 2, which contains the rules that implement the Trademark Act. 37 CFR 2.111 and 2.112 govern the filing of a Petition to Cancel and 37 CFR 2.101, 2.102, and 2.104 govern the filing of an opposition to the registration of a trademark. 37 CFR 2.141 and 2.142 govern the filing of appeals. Petitions to cancel a trademark registration, oppositions, and appeals are filed with the Trademark Trial and Appeal Board (TTAB).

Individuals and entities now have the option to file the Request for Extension of Time to File an Opposition, the Notice of Opposition, and certain papers such as motions and briefs, electronically through the Electronic System for Trademark Trials and Appeals (ESTTA). In addition, the USPTO is currently developing forms to collect the Petition to Cancel, the Notice of Appeal, and Miscellaneous Ex Parte Papers such as motions and briefs, electronically through ESTTA as well. The USPTO plans to deploy these forms in FY 2004. These electronic forms, in addition to those already deployed through ESTTA, are being incorporated into this collection at this time for review and approval. The paper equivalent of the Notice of Appeal is also being submitted for review at this time.

There are no paper forms associated with this collection. However, the TTAB has suggested formats for the Petition to Cancel and the Notice of Opposition that individuals and entities can use when submitting these petitions and notices to the TTAB. These are not forms and as such do not have form numbers. If applicants or entities wish to submit the petitions, notices, and additional papers in inter partes and ex parte cases electronically, they must use the forms provided through ESTTA. Oppositions to extensions of protection under the Madrid Protocol (or requests for extensions of time to oppose) must be filed electronically through ESTTA.

This information collection was reviewed and approved by the Office of Management and Budget (OMB) on May 16, 2001 with 61,572 responses and 17,179 burden hours. On September 17, 2002, a change worksheet, which decreased the total responses by 19,172 responses per year and total burden hours by 5,679 hours per year, was submitted to OMB for review and approval. OMB approved this change worksheet on September 20, 2002, changing the currently approved inventory for this collection to 42,400 responses and 11,500 burden hours per year.

II. Method of Collection

By mail or hand carry when the applicant or agent files a petition to cancel a trademark registration, an opposition to the registration of a trademark, a request to extend the time to file an opposition, or a notice of appeal with the USPTO. These requirements, in addition to papers filed in Inter Partes and Ex Parte cases, can also be submitted electronically to the TTAB through ESTTA. Only Notices of Appeal for ex parte appeals can be submitted by facsimile.

III. Data

OMB Number: 0651-0040.

Form Number(s): Electronic forms for the Petition to Cancel, the Notice of Opposition, the Request for Extension of Time to File an Opposition, Electronic Papers in Inter Partes Cases, and Electronic Miscellaneous Ex Parte Papers.

Type of Review: Revision of a currently approved collection.

Affected Public: Individuals or households; business or other for profit; not-for-profit institutions; farms, Federal Government; and state, local or tribal Government.

Estimated Number of Respondents: 46,900 total responses per year. Of this total, the USPTO estimates that 1,520 Petitions to Cancel, 4,400 Notices of Opposition, 21,000 Extensions of Time to File an Opposition, and 2,400 Notices of Appeal will be submitted in paper per year. The USPTO further estimates that 380 Petitions to Cancel, 1,100 Notices of Opposition, 9,000 Requests for Extension of Time to File an Opposition, 5,000 Papers in Inter Partes Cases, 600 Notices of Appeal, and 1,500 Miscellaneous Ex Parte Papers will be submitted electronically per year.

Estimated Time Per Response: The USPTO estimates that it will take the public 45 minutes to complete the Petitions to Cancel and the Notices of Opposition; 10 minutes to complete the Extensions of Time to File an Opposition, the Electronic Papers in Inter Partes Cases, and the Electronic Miscellaneous Ex Parte Papers; and 15 minutes to complete the Notices of Appeal. This includes time to gather the necessary information, create the documents, and submit the completed request. The USPTO believes that it will take the same amount of time to submit the Petitions to Cancel, the Notices of Opposition, the Extensions of Time to File an Opposition, and the Notices of Appeal electronically as it does to submit them in paper.

Estimated Total Annual Respondent Burden Hours: 12,505 hours per year.

Estimated Total Annual Respondent Cost Burden: $2,294,669. The USPTO estimates that it will take a 50/50 level of effort by associate attorneys and paraprofessional/paralegals to complete the requirements in this collection. Using a typical professional hourly rate of $286 for associate attorneys in private firms and the paraprofessional/paralegal rate of $81 for paralegals/legal assistants in private firms and calculating the average of these rates, the USPTO believes that the average hourly rate for those completing the petitions, notices, requests, and other papers in this collection will be $183.50. Therefore, the USPTO estimates that the salary costs for the respondents providing this information will be $2,294,669 per year.

Estimated Total Annual Non-Hour Respondent Cost Burden: $2,539,140. There are postage costs, recordkeeping costs, and filing fees associated with this information collection. This collection does not have any capital start-up or maintenance costs.

The USPTO believes that 69% of the Petitions to Cancel, the Notices of Opposition, the Extensions of Time to File an Opposition, and the Notices of Appeal filed with the TTAB will be sent by first-class mail. Using a typical first-class postage rate of 49 cents, the USPTO estimates a total of $15,837 in postage costs for this collection.

For the Petitions to Cancel, Notices of Opposition, the Extensions of Time to File an Opposition, the Notices of Appeal, the Electronic Papers in Inter Partes Cases, and the Electronic Miscellaneous Ex Parte Papers that are filed electronically, the USPTO suggests that the applicant print a copy of the receipt for their records. The USPTO estimates that it will take 5 seconds (0.001) to print out this receipt and that 17,580 petitions, notices, extensions, and other papers will be submitted electronically. Using the average hourly rate of $183.50, the USPTO estimates an approximate recordkeeping cost of $3,303 for this information collection.

There are filing fees associated with the Petitions to Cancel, the Notices of Opposition, and the Notices of Appeal; the Extensions of Time to File an Opposition do not have filing fees. The Electronic Papers in Inter Partes Cases and Electronic Miscellaneous Ex Parte Papers do not add new fees to this information collection. The filing fees for the Petitions to Cancel, the Notices of Opposition, and the Notices of Appeal are per class; therefore the total filing fees can vary depending on the number of classes. The total filing fees of $2,520,000 shown here are the minimum fees associated with this information collection.

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.