[Federal Register Volume 74, Number 24 (Friday, February 6, 2009)]
[Notices]
[Pages 6269-6271]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: E9-2539]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office


Madrid Protocol

ACTION: Proposed collection; comment request.

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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 the revision of a continuing information 
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 7, 2009.

ADDRESSES: You may submit comments by any of the following methods:
     E-mail: [email protected]. Include ``0651-0051 
comment'' in the subject line of the message.
     Fax: 571-273-0112, marked to the attention of Susan K. 
Fawcett.
     Mail: Susan K. Fawcett, Records Officer, Office of the 
Chief Information Officer, Customer Information Services Group, Public 
Information Services Division, United States Patent and Trademark 
Office, P.O. Box 1450, Alexandria, VA 22313-1450.
     Federal Rulemaking Portal: http://www.regulations.gov.

FOR FURTHER INFORMATION CONTACT: Requests for additional information 
should be directed to Jennifer Chicoski, Attorney Advisor, Office of 
the Commissioner for Trademarks, United States Patent and Trademark 
Office, P.O. Box 1451, Alexandria, VA 22313-1451; by telephone at 571-
272-8943; or by e-mail to [email protected].

SUPPLEMENTARY INFORMATION:

I. Abstract

    This collection of information is required by the Trademark Act of 
1946, 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 that use or intend to use such marks in 
commerce may file an application to register the marks with the United 
States Patent and Trademark Office (USPTO).
    The Protocol Relating to the Madrid Agreement Concerning the 
International Registration of Marks (``Madrid Protocol'') is an 
international treaty that allows a trademark owner to seek registration 
in any of the participating countries by filing a single international 
application. The International Bureau (``IB'') of the World 
Intellectual Property Organization (``WIPO'') in Geneva, Switzerland, 
administers the international registration system. The Madrid Protocol 
Implementation Act of 2002 amended the Trademark Act to provide that: 
(1) The owner of a U.S. application or registration may seek protection 
of its mark in any of the participating countries by submitting a 
single international application to the IB through the USPTO, and (2) 
the holder of an international registration may request an extension of 
protection of the international registration to the United States. The 
Madrid Protocol became effective in the United States on November 2, 
2003, and is implemented under 15 U.S.C. 1141 et seq. and 37 CFR Part 2 
and Part 7.
    An international application submitted through the USPTO must be 
based on an active U.S. application or registration and must be filed 
by the owner of the application or registration. The USPTO reviews the 
international application to certify that it corresponds to the data 
contained in the existing U.S. application or registration before 
forwarding the international application to the IB. The IB then reviews 
the international application to determine whether the Madrid filing 
requirements have been met and the required fees have been paid. If the 
international application is unacceptable, the IB will send a notice of 
irregularity to the USPTO and the applicant. The applicant must respond 
to the irregularities to avoid abandonment, unless a response from the 
USPTO is required. After any irregularities are corrected and the 
application is accepted, the IB registers the mark, publishes the 
registration in the WIPO Gazette of International Marks, and sends a 
certificate to the holder.
    When the mark is registered, the IB notifies each country 
designated in the application of the request for extension of 
protection. Once an international registration has been issued, the 
holder may also file subsequent designations to request an extension of 
protection to additional countries.
    Under Section 71 of the Trademark Act, a registered extension of 
protection to the United States will be cancelled unless the holder of 
the international registration periodically files affidavits of 
continued use in commerce or excusable nonuse. These affidavits cannot 
be filed until five years after the USPTO registers an extension of 
protection. Since the USPTO will not be

[[Page 6270]]

accepting these affidavits until February 1, 2010, the estimated burden 
for these affidavits will not be included in this collection at this 
time.
    This collection includes the information necessary for the USPTO to 
process applications for international registration and related 
requests under the Madrid Protocol. The USPTO provides electronic forms 
for filing the Application for International Registration, Subsequent 
Designation, and Response to a Notice of Irregularity online through 
the USPTO Web site. An electronic form for the Request for 
Transformation is under development. Applicants may also submit the 
items in this collection on paper or by using the forms provided by the 
IB, which are available on the WIPO Web site. The IB requires 
Applications for International Registration and Subsequent Designations 
that are filed on paper to be submitted on the official IB forms.

II. Method of Collection

    By mail, hand delivery, or electronically to the USPTO.

III. Data

    OMB Number: 0651-0051.
    Form Number(s): PTO-2131, PTO-2132, PTO-2133.
    Type of Review: Revision of a currently approved collection.
    Affected Public: Individuals or households; businesses or other 
for-profits; and not-for-profit institutions.
    Estimated Number of Respondents: 5,330 responses per year.
    Estimated Time per Response: The USPTO estimates that it will take 
the public approximately 15 minutes (0.25 hours) to one hour to 
complete the information in this collection, including the time to 
gather the necessary information, prepare the documents, and submit the 
completed request to the USPTO.
    Estimated Total Annual Respondent Burden Hours: 1,347 hours per 
year.
    Estimated Total Annual Respondent Cost Burden: $417,570 per year. 
The USPTO expects that the information in this collection will be 
prepared by attorneys. Using the professional rate of $310 per hour for 
attorneys in private firms, the USPTO estimates that the respondent 
cost burden for submitting the information in this collection will be 
approximately $417,570 per year.

----------------------------------------------------------------------------------------------------------------
                                                                                     Estimated       Estimated
                     Item                         Estimated time for response         annual       annual burden
                                                                                     responses         hours
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Application for International Registration     15 minutes.......................           3,900             975
 (PTO-2131).
Subsequent Designation (PTO-2132)............  15 minutes.......................             400             100
Response to Notice of Irregularity (PTO-2133)  15 minutes.......................           1,000             250
Request that the USPTO Replace a U.S.          30 minutes.......................               4               2
 Registration with a Subsequently Registered
 Extension of Protection to the United States.
Request to Record an Assignment or             30 minutes.......................               5               3
 Restriction of a Holder's Right to Dispose
 of an International Registration.
Request that the USPTO Transform a Cancelled   15 minutes.......................               6               2
 Extension of Protection into an Application
 for Registration under Section 1 or 44 of
 the Act.
Petition to Review Refusal to Certify an       1 hour...........................              15              15
 International Application.
Affidavit of Continued Use or Excusable        15 minutes.......................           (\1\)               0
 Nonuse under Section 71 of the Act.
                                              ------------------------------------------------------------------
    Total....................................  .................................           5,330          1,347
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\1\ Not until Feb. 2010.

    Estimated Total Annual Non-hour Respondent Cost Burden: $529,701 
per year. There are no capital start-up, maintenance, or recordkeeping 
costs associated with this information collection. However, this 
collection does have annual (non-hour) costs in the form of filing fees 
and postage costs.
    The USPTO charges fees for processing international applications 
and related requests under the Madrid Protocol as set forth in 37 CFR 
7.6. In addition to these USPTO fees, applicants must also pay 
international filing fees to the IB as indicated in 37 CFR 7.7. The 
USPTO estimates that the total filing fees in the form of USPTO 
processing fees associated with this collection will be approximately 
$529,650 per year as calculated in the accompanying table.

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                                                                     Estimated                       Estimated
                              Item                                    annual        Fee amount     annual filing
                                                                     responses                         costs
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Application for International Registration, for certifying an              2,000         $100.00     $200,000.00
 international application based on a single basic application
 or registration (per international class)......................
Application for International Registration, for certifying an              1,900          150.00      285,000.00
 international application based on more than one basic
 application or registration (per international class)..........
Subsequent Designation..........................................             400          100.00       40,000.00
Response to Notice of Irregularity..............................           1,000            0.00            0.00
Request that the USPTO Replace a U.S. Registration with a                      4          100.00          400.00
 Subsequently Registered Extension of Protection to the United
 States (per international class)...............................
Request to Record an Assignment or Restriction of a Holder's                   5          100.00          500.00
 Right to Dispose of an International Registration..............
Request that the USPTO Transform a Cancelled Extension of                      6          375.00        2,250.00
 Protection into an Application for Registration under Section 1
 or 44 of the Act...............................................
Petition to Review Refusal to Certify an International                        15          100.00        1,500.00
 Application....................................................
Affidavit of Continued Use or Excusable Nonuse under Section 71              \1\          100.00            0.00
 of the Act (per international class)...........................
                                                                 -----------------------------------------------

[[Page 6271]]

 
    Total.......................................................           5,330  ..............     529,650.00
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\1\ Not until Feb. 2010.

    The public may submit the items in this collection to the USPTO by 
mail through the United States Postal Service. The USPTO estimates that 
approximately 1% (53 out of 5,300) of the international applications, 
subsequent designations, and responses to notices of irregularities may 
be filed on paper, and that 15 of the 30 responses for the other items 
in this collection will also be filed on paper, for a total of 
approximately 68 of the 5,330 total responses per year being submitted 
by mail. The average first-class postage cost for a mailed submission 
will be 75 cents, for a total postage cost of approximately $51 per 
year.
    The total non-hour respondent cost burden for this collection in 
the form of filing fees and postage costs is estimated to be $529,701 
per year.

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 also will become a matter of public record.

    Dated: January 30, 2009.
Susan K. Fawcett,
Records Officer, USPTO, Office of the Chief Information Officer, 
Customer Information Services Group, Public Information Services 
Division.
[FR Doc. E9-2539 Filed 2-5-09; 8:45 am]
BILLING CODE 3510-16-P