[Federal Register Volume 75, Number 124 (Tuesday, June 29, 2010)]
[Notices]
[Pages 37380-37382]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2010-15772]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office


Trademark Trial and Appeal Board (TTAB) Actions

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 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 August 30, 2010.

ADDRESSES: You may submit comments by any of the following methods:
     E-mail: [email protected]. Include ``0651-
0040 Trademark Trial and Appeal Board (TTAB) Actions 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, U.S. Patent and Trademark Office, P.O. Box 
1450, Alexandria, VA 22313-1450.
     Federal e-Rulemaking Portal: http://www.regulations.gov

FOR FURTHER INFORMATION CONTACT: Requests for additional information 
should be directed to the attention of LaToya Brown, Technical Quality 
Review Analyst, Trademark Trial and Appeal Board, U.S. Patent and 
Trademark Office (USPTO), P.O. Box 1450, Alexandria, VA 22313-1450; by 
telephone 571-272-4283; or by e-mail at [email protected].

SUPPLEMENTARY INFORMATION:

I. Abstract

    This collection of information is required by the Trademark Act 
Sections 13, 14, and 20, 15 U.S.C. 1063, 1064, and 1070, respectively. 
Under the Trademark Act, 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, or an extension of time 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 Trademark Examining Attorney assigned to review an application for 
registration of a mark.
    The USPTO administers the Trademark Act pursuant to 37 CFR part 2, 
which contains the various rules that govern the filing of petitions to 
cancel the registrations of marks, notices of opposition to the 
registration of a mark, extensions of time to file an opposition, 
appeals, and other papers filed in connection with inter partes and ex 
partes proceedings. These petitions, notices, extensions, and 
additional papers are filed with the Trademark Trial and Appeal Board 
(TTAB), an administrative tribunal empowered to determine the right to 
register and subsequently determine the validity of a trademark.
    The information in this collection can be submitted in paper format 
or electronically through the Electronic System for Trademark Trials 
and Appeals (ESTTA). 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, extensions, and 
additional papers in inter partes and ex parte cases electronically, 
they must use the forms provided through ESTTA. Oppositions to 
extension of protection under the Madrid Protocol, as well as requests 
for extensions to oppose, must be filed electronically through ESTTA. 
This collection contains two suggested formats and six electronic 
forms.
    The additional papers filed in inter partes and ex parte 
proceedings can be filed in paper or electronically. Although the 
number of paper filings is decreasing in favor of electronic filings, 
there still are a small percentage of paper submissions.
    The information in this collection is a matter of public record, 
and is used by the public for a variety of private business purposes 
related to establishing and enforcing trademark rights. This 
information is important to the public, as both common law trademark 
owners and federal trademark registrants must actively protect their 
own rights.

II. Method of Collection

    By mail, hand delivery, or electronically through ESTTA when a 
party 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, a notice of appeals, or additional papers 
for inter partes and ex parte proceedings with the USPTO. However, 
notices of opposition and extensions of time to file notices of 
opposition against the extensions of protection under the Madrid 
Protocol must be filed electronically through ESTTA. Only notices of 
appeal for ex parte appeals can be submitted by facsimile, in 
accordance with 37 CFR 2.195(d)(3).

III. Data

    OMB Number: 0651-0040.
    Form Number(s): PTO 2120, 2151, 2153, 2188, 2189, and 2190.
    Type of Review: Revision of a currently approved collection.
    Affected Public: Business or other for profit; not-for-profit 
institutions.
    Estimated Number of Respondents: 80,025 responses per year.
    Estimated Time per Response: The USPTO estimates that it takes the 
public approximately 10 to 45 minutes (0.17 to 0.75 hours) to complete 
this information, depending on the request. This includes the time to 
gather the necessary information, prepare the petitions, notices, 
extensions, or additional papers, and submit the completed request to 
the USPTO. The USPTO believes that it will take the same amount of time 
(and possibly less time) to gather the necessary information, prepare 
the submission, and submit it electronically to the TTAB as it does to 
submit it in paper form.
    Estimated Total Annual Respondent Burden Hours: 17,815 hours per 
year.
    Estimated Total Annual Respondent Cost Burden: $3,794,595. The 
USPTO

[[Page 37381]]

estimates that it will take a 50/50 level of effort by attorneys and 
paraprofessional/paralegals to complete the requirements in this 
collection. The professional hourly rate for attorneys in private firms 
is $325, while the hourly rate for paraprofessional/paralegals in 
private firms is $100. After calculating the average of these rates, 
the USPTO believes that the hourly rate for completing the petitions, 
notices, requests, and other papers will be $213. Using this hourly 
rate, the USPTO estimates that the total respondent cost burden for 
this collection is $3,794,595 per year.

----------------------------------------------------------------------------------------------------------------
                                                                                     Estimated       Estimated
                     Item                          Estimated time for response        annual       annual burden
                                                                                     responses         hours
----------------------------------------------------------------------------------------------------------------
Petition to Cancel............................  45 minutes......................             125              94
Electronic Petition to Cancel.................  45 minutes......................           1,300             975
Notice of Opposition..........................  45 minutes......................             350             263
Electronic Notice of Opposition...............  45 minutes......................           5,000           3,750
Extension of Time to File an Opposition.......  10 minutes......................             150              26
Electronic Request for Extension of Time to     10 minutes......................          17,000           2,890
 File an Opposition.
Papers in Inter Partes Cases..................  10 minutes......................           6,000           1,020
     Answers
     Amendments to Pleadings
     Amendment of Application or
     Registration During Proceeding
     Motions (such as consent motions,
     motions to extend, motions to suspend,
     etc.)
     Evidence
     Briefs
     Surrender of Registration
     Abandonment of Application
     Documents Related to Concurrent
     Use Applications
     Notice of Intent to Appeal a TTAB
     decision
Electronic Papers in Inter Partes Cases.......  10 minutes......................          39,500           6,715
     Answers
     Amendments to Pleadings
     Amendment of Application or
     Registration During Proceeding
     Motions (such as consent motions,
     motions to extend, motions to suspend,
     etc.)
     Evidence
     Briefs
     Surrender of Registration
     Abandonment of Application
     Documents Related to Concurrent
     Use Applications
     Notice of Intent to Appeal a TTAB
     decision
Notice of Appeal..............................  15 minutes......................             500             125
Electronic Notice of Appeal...................  15 minutes......................           3,000             750
Miscellaneous Ex Parte Papers.................  10 minutes......................           4,700             799
Electronic Miscellaneous Ex Parte Papers......  10 minutes......................           2,400             408
                                               -----------------------------------------------------------------
        Totals................................  ................................          80,025          17,815
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    Estimated Total Annual Non-Hour Respondent Cost Burden: $2,417,326.
    There are no capital start-up or maintenance costs associated with 
this information collection. There are, however, postage and 
recordkeeping costs, as well as filing fees, associated with this 
information collection.
    The petitions to cancel, the notices of opposition and appeal, the 
extensions of time to file an opposition, and the additional papers 
filed in inter partes and ex partes cases may be submitted to the USPTO 
or served on other parties by Express or first-class mail through the 
United States Postal Service. These papers can also be hand delivered 
to the TTAB. The USPTO estimates that 6% of the petitions, notices, 
extensions, and additional inter partes and ex parte papers that are 
filed in paper will be submitted using Express Mail. The USPTO 
estimates that the average submission will weigh 2 ounces and that the 
respondent will be mailing the original to the TTAB and serving copies 
on the other parties involved in the proceedings. The USPTO estimates 
that it costs an average of $18.54 to send the petitions, notices, 
extensions, appeals, and additional papers by Express Mail to the TTAB. 
To account for the service of papers on other parties, the USPTO is 
adding an additional 20% of the postage rate ($3.71) for an estimated 
cost of $22.25. The USPTO estimates that up to 710 submissions per year 
may be mailed to the USPTO and other parties by Express Mail, for a 
postage cost of $15,798.
    The USPTO believes the remaining petitions to cancel, the notices 
of opposition and appeal, the extensions of time to file an opposition, 
and the additional papers filed in inter partes and ex parte 
proceedings that are filed in paper (roughly 94%) will be sent by 
first-class mail. The USPTO estimates that the average submission will 
weigh 2 ounces and that the respondent will mail the original to the 
TTAB and serve copies on the other parties involved in the proceedings. 
The USPTO estimates that it costs 61 cents to mail the petitions, 
notices, extensions, appeals, and additional papers to the TTAB. To 
account for the service of papers on other parties, the USPTO is adding 
an additional 80% of the postage rate (49 cents) for an estimated cost 
of $1.10. The USPTO estimates that up to 11,116 submissions per year 
may be mailed to the USPTO and other parties by first-class mail, for a 
postage cost of $12,228.
    Therefore, the USPTO estimates that the total postage cost for this 
collection is $28,026 per year.
    In addition, the USPTO also strongly advises applicants who file 
their

[[Page 37382]]

petitions to cancel, notices of opposition, appeals, extensions of time 
to file an opposition, and additional papers for ex parte and inter 
partes cases electronically to keep a copy of the acknowledgment 
receipt as clear evidence that the file was received by the USPTO on 
the date noted. The USPTO estimates that it takes 5 seconds (0.001 
hours) to print the acknowledgment receipt and that 68,200 petitions, 
notices, extensions, and other papers will be submitted electronically, 
for a burden of 68 hours. Using the paraprofessional rate of $100 per 
hour, the USPTO estimates that the total recordkeeping cost for this 
collection will be $6,800 per year.
    There is also annual nonhour cost burden in the way of filing fees 
associated with this collection. The petitions to cancel and the 
notices of opposition and appeal have filing fees. There are no filing 
fees for the extensions of time to file an opposition. The additional 
papers that are filed in ex parte and inter partes proceedings do not 
have their own specific fees, so they do not add new fees to the 
collection. The filing fees for the petitions to cancel, notices of 
opposition, and notices of appeal are per class of goods and services 
in the subject application or registration; therefore the total filing 
fees can vary depending on the number of classes. The total filing fees 
of $2,382,500 shown here are the minimum fees associated with this 
information collection.

------------------------------------------------------------------------
                                                         Total non-hour
            Item               Responses    Filing fee  cost burden (a x
                                  (a)        ($) (b)         b) (c)
------------------------------------------------------------------------
Petition to Cancel..........          125      $300.00        $37,500.00
Electronic Petition to              1,300       300.00        390,000.00
 Cancel.....................
Notice of Opposition........          350       300.00        105,000.00
Electronic Notice of                5,000       300.00      1,500,000.00
 Opposition.................
Extension of Time to File an          150         0.00              0.00
 Opposition.................
Electronic Request for             17,000         0.00              0.00
 Extension of Time to File
 an Opposition..............
Papers in Inter Partes Cases        6,000         0.00              0.00
     Answers
     Amendments to
     Pleadings
     Amendment of
     Application or
     Registration During
     Proceeding
     Motions (such
     as consent motions,
     motions to extend,
     motions to suspend,
     etc.)
     Evidence
     Briefs
     Surrender of
     Registration
     Abandonment of
     Application
     Documents
     Related to Concurrent
     Use Applications
     Notice of
     Intent to Appeal a TTAB
     decision
Electronic Papers in Inter         39,500         0.00              0.00
 Partes Cases...............
     Answers
     Amendments to
     Pleadings
     Amendment of
     Application or
     Registration During
     Proceeding
     Motions (such
     as consent motions,
     motions to extend,
     motions to suspend,
     etc.)
     Evidence
     Briefs
     Surrender of
     Registration
     Abandonment of
     Application
     Documents
     Related to Concurrent
     Use Applications
     Notice of
     Intent to Appeal a TTAB
     Decision
Notice of Appeal (Ex parte).          500       100.00         50,000.00
Electronic Notice of Appeal         3,000       100.00        300,000.00
 (Ex parte).................
Miscellaneous Ex Parte              4,700         0.00              0.00
 Papers.....................
Electronic Miscellaneous Ex         2,400         0.00              0.00
 Parte Papers...............
    Totals..................       80,025  ...........      2,382,500.00
------------------------------------------------------------------------

    The USPTO estimates that the total non-hour respondent cost burden 
for this collection, in the form of postage and recordkeeping costs, in 
addition to the filing fees, is $2,417,326 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 will also become a matter of public record.

Susan K. Fawcett,
Records Officer, USPTO, Office of the Chief Information Officer.
[FR Doc. 2010-15772 Filed 6-28-10; 8:45 am]
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