Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1046309
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`Filing date:
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`04/01/2020
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`Applicant
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`88041543
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`Amazon Technologies, Inc.
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`Applied for Mark
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`COMICSTAAN
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`Correspondence
`Address
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`DAN ENGLANDER
`KILPATRICK TOWNSEND & STOCKTON, LLP
`1100 PEACHTREE STREET, SUITE 2800
`ATLANTA, GA 30309
`UNITED STATES
`tmadmin@kilpatricktownsend.com, sday@kilpatricktownsend.com, worlddock-
`et@kilpatricktownsend.com
`202-508-5800
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`Submission
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`Attachments
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Applicants Request for Remand and Amendment
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`US - COMICSTAAN - Request for Remand.pdf(21852 bytes )
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`Daniel Englander
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`denglander@kilpatricktownsend.com, tmadmin@kilpatricktownsend.com
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`/Daniel Englander/
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`04/01/2020
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`APPLICANT
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`MARK
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`SERIAL NO.
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`CLASSES
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`:
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`:
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`:
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`:
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` Amazon Technologies, Inc.
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` COMICSTAAN
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` 88/041,543
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` International Class 41
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`REQUEST FOR REMAND TO AMEND APPLICANT’S
`IDENTIFICATION OF SERVICES AND MOTION TO SUSPEND
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`Applicant respectfully requests the Board to remand Application Serial No. 88/041,543
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`(the “Application”) to the Examining Attorney for amendment of the identification of services in
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`Class 41, as laid out below. In light of this requested amendment, Applicant further requests the
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`Examining Attorney to withdraw the refusal to register the Application based on a perceived
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`likelihood of confusion with the mark underlying Registration No. 5,271,553 (the “Cited Mark”).
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`Applicant also requests the Board to suspend the appeal proceedings pending its review of this
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`Request for Remand.
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`I.
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`Background
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`Applicant filed the Application to register the mark COMICSTAAN for the following
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`services in Class 41:
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`Entertainment in the nature of an ongoing television comedy series; entertainment
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`services, namely, an ongoing comedy series provided through television, cable, the
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`Internet and wireless communications networks; providing online non-downloadable
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`comic books and graphic novels; providing a website featuring blogs and non-
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`downloadable publications in the nature of books, graphic novels, comics and
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`screenplays in the field of entertainment; providing a website featuring entertainment
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`

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`information, audio, video and prose presentations, and online-non-downloadable
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`publications in the nature of fiction and non-fiction books, graphic novels and comics all
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`in the field of entertainment; entertainment services, namely, arranging and conducting
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`contests; providing current event news and information in the field of entertainment
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`relating to contests, video, audio and prose presentations and publications all in the field
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`of entertainment; providing on-line reviews of television shows and movies; providing a
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`video-on-demand website featuring non-downloadable movies and films; providing a
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`website featuring non-downloadable videos in the field of movies, television shows, and
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`film trailers on a variety of topics; providing a searchable on-line entertainment database
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`featuring on-line non-downloadable music, movies, television shows, multimedia
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`presentations in the field of entertainment, audio files featuring music, comic books, and
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`publications in the nature of entertainment; and providing information on entertainment,
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`movies and television shows via social networks.
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`On October 25, 2018, the Examining Attorney preliminarily refused registration under
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`Section 2(d) on the basis of the Cited Registration, which covers “Television program and film
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`production, and distribution; providing a website featuring electronic media, multimedia content,
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`videos, movies, pictures, images, text, photos, audio content, and entertainment information over
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`the internet and mobile media networks in the field of Indian cinema” in Class 41. On April 25,
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`2019, Applicant responded by submitting arguments in opposition to the Section 2(d) refusal.
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`On June 3, 2019, the Examining Attorney issued a Final Office Action again refusing
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`registration under Section 2(d). On December 3, 2019, Applicant responded to the Final Office
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`Action by filing a Request for Reconsideration in which it again traversed the Section 2(d)
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`refusal. Applicant also timely noticed an appeal in conjunction with the Request for
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`Reconsideration. On January 31, 2020, the Examining Attorney denied the Request for
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`Reconsideration. On February 3, 2020, the USPTO reinstated this appeal.
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`To underscore the absence of likelihood of confusion and overlap between the services in
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`the Cited Registration and Applicant’s services, Application now intends to amend its
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`identification of services as follows:
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`Entertainment in the nature of an ongoing television comedy series; entertainment
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`services, namely, an ongoing comedy series provided through television, cable, the
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`Internet and wireless communications networks; providing online non-downloadable
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`comic books and graphic novels; providing a website featuring blogs and non-
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`downloadable publications in the nature of books, graphic novels, comics and
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`screenplays in the field of entertainment; providing a website featuring entertainment
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`information, audio, video and prose presentations, and online-non-downloadable
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`publications in the nature of fiction and non-fiction books, graphic novels and comics all
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`in the field of entertainment; entertainment services, namely, arranging and conducting
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`contests; providing current event news and information in the field of entertainment
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`relating to contests, video, audio and prose presentations and publications all in the field
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`of entertainment; providing on-line reviews of television shows and movies; providing a
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`video-on-demand website featuring non-downloadable movies and films; providing a
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`website featuring non-downloadable videos in the field of movies, television shows, and
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`film trailers on a variety of topics; providing a searchable on-line entertainment database
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`featuring on-line non-downloadable music, movies, television shows, multimedia
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`presentations in the field of entertainment, audio files featuring music, comic books, and
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`publications in the nature of entertainment; and providing information on entertainment,
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`movies and television shows via social networks
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`With the above amendments, there will be an absence of overlap between the services in
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`the Cited Registration and Applicant’s services, thereby further ensuring no risk of confusion
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`with the mark covered by the Cited Registration. In light of this requested amendment to
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`Applicant’s identification of services, Applicant further requests the Examining Attorney to
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`withdraw the refusal to register the Application based on a perceived likelihood of confusion
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`between Applicant’s COMICSTAAN mark and the mark underlying the Cited Registration.
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`II.
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`The Board Should Remand The Application To The Examining Attorney For
`Amendment To The Identification Of Services
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`Applicant respectfully requests remand of its application to the Examining Attorney for
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`amendment to the identification of services pursuant to TBMP § 1205.01. A request for remand
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`will be granted upon a showing of good cause. See TBMP § 1205.01. “Good cause will generally
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`be found, for example, when the amendment is an attempt to comply with a requirement, such as
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`an amendment to the identification of goods or services in response to a requirement for an
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`acceptable identification, or when the amendment will obviate a ground for refusal . . . .” Id.
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`Especially because this is Applicant’s first request for a remand1 and because this appeal remains
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`in its earliest stage,2 good cause exists here.
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`1 The Board previously has suspended this appeal and remanded jurisdiction to the Examining
`Attorney to allow her to consider Applicant’s request for reconsideration; the occasion of that
`remand, however, was not a motion by Applicant. See In re Monster Cable Prods., Inc., No.
`85318060, 2015 WL 9702629, at *1 (T.T.A.B. Dec. 28, 2015) (nonprecedential) (noting prior
`grant of three requests for remand); In re Advanced Armament Corp., LLC, No. 74077096, 2013
`WL 6355603, at *2 (T.T.A.B. Nov. 29, 2013) (nonprecedential) (noting prior grant of two
`requests for remand).
`2 See T.B.M.P § 1209.04 (“In determining whether good cause has been shown, the Board will
`consider . . . the point in the appeal at which the request for remand is made.”); see also In re
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` Specifically, if entered on remand, the proposed amendments to Applicant’s
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`identification of services will obviate the Examining Attorney’s refusal because they will further
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`distinguish the Application from the Cited Registration and remove any overlap in the services
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`provided under the respective marks. These amendments will sufficiently distinguish the
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`Application from the Cited Registration, especially considering the differences in the marks and
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`the unique connotation of Applicant’s mark when used in connection with the amended services,
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`among the other arguments Applicant has put forth in the record to date. Applicant remains
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`confident that the issues can be resolved without the need for further extensive proceedings.
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`III.
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`The Board Should Suspend The Appeal Pending Its Consideration Of This Request
`For Remand
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`Pursuant to TBMP § 1213, Applicant respectfully requests the suspension of further
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`proceedings in connection with Applicant’s ex parte appeal – including postponement of the
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`deadline for Applicant’s appeal brief – pending the Board’s consideration of this Request for
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`Remand. Because the proposed amendment will place the application in condition for
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`publication, the appeal will be moot, saving the Board, the Examining Attorney, and Applicant
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`tremendous time and effort. If the Examining Attorney does not accept the proposed
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`amendment, or accepts the amendment but maintains the refusal, then the appeal proceedings
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`may be resumed, and the due date for Applicant’s appeal brief may be reset with no prejudice to
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`the Office or further investment of the Board’s resources.
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`IV.
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`Conclusion
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`Having shown good cause, Applicant respectfully requests the Board to remand the
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`Application to the Examining Attorney for amendment of the identification of services in Class
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`Ourke-Nicaud Ventures, L.L.C., No. 77035443, 2009 WL 4075437, at *1 (T.T.A.B. June 30,
`2009) (granting remand despite prior completion of appellate briefing).
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`41. The requested amendment will obviate the need for the Board to address the ground for
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`refusal and qualify the Application for publication.
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`Date: April 1, 2020
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`Respectfully submitted,
`AMAZON TECHNOLOGIES, INC.
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`/s/ Daniel Englander
`Allisen Pawlenty
`Daniel Englander
`Kilpatrick Townsend & Stockton, LLP
`Mailstop: IP Docketing – 22
`1100 Peachtree Street Suite 2800
`Atlanta, GA 30309
`Phone: 202-508-5800
`apawlent@kilpatricktownsend.com
`denglander@kilpatricktownsend.com
`
`Attorneys for Applicant Amazon
`Technologies, Inc.
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`