PTO- 1957
`
`Approved for use through 11/30/2023. OMB 0651-0050
`
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number
`
`Response to Office Action
`
`Input Field
`
`SERIAL NUMBER
`
`LAW OFFICE ASSIGNED
`
`MARK SECTION
`
`MARK
`
`LITERAL ELEMENT
`
`STANDARD CHARACTERS
`
`USPTO-GENERATED IMAGE
`
`MARK STATEMENT
`
`ARGUMENT(S)
`
`The table below presents the data as entered.
`
`Entered
`
`90097093
`
`LAW OFFICE 103
`
`mark
`
`COMIC-CON@HOME
`
`YES
`
`YES
`
`The mark consists of standard characters, without claim to any particular font style,
`size or color.
`
`The complete response is being submitted as an attachment, as there were too many formatting issues.
`
`EVIDENCE SECTION
`
`        EVIDENCE FILE NAME(S)
`
`       ORIGINAL PDF FILE
`
`       CONVERTED PDF FILE(S)
`       (7 pages)
`
`       ORIGINAL PDF FILE
`
`       CONVERTED PDF FILE(S)
`       (4 pages)
`
`       ORIGINAL PDF FILE
`
`       CONVERTED PDF FILE(S)
`       (8 pages)
`
`evi_1-2042272555-20210604 182321641891_._035997-051
`3732_Response_to_Office_A ction.pdf
`
`\\TICRS\EXPORT18\IMAGEOUT 18\900\970\90097093\xml3\ ROA0002.JPG
`
`\\TICRS\EXPORT18\IMAGEOUT 18\900\970\90097093\xml3\ ROA0003.JPG
`
`\\TICRS\EXPORT18\IMAGEOUT 18\900\970\90097093\xml3\ ROA0004.JPG
`
`\\TICRS\EXPORT18\IMAGEOUT 18\900\970\90097093\xml3\ ROA0005.JPG
`
`\\TICRS\EXPORT18\IMAGEOUT 18\900\970\90097093\xml3\ ROA0006.JPG
`
`\\TICRS\EXPORT18\IMAGEOUT 18\900\970\90097093\xml3\ ROA0007.JPG
`
`\\TICRS\EXPORT18\IMAGEOUT 18\900\970\90097093\xml3\ ROA0008.JPG
`
`evi_1-2042272555-20210604 182321641891_._EXHIBIT_A_ TO_ROA.pdf
`
`\\TICRS\EXPORT18\IMAGEOUT 18\900\970\90097093\xml3\ ROA0009.JPG
`
`\\TICRS\EXPORT18\IMAGEOUT 18\900\970\90097093\xml3\ ROA0010.JPG
`
`\\TICRS\EXPORT18\IMAGEOUT 18\900\970\90097093\xml3\ ROA0011.JPG
`
`\\TICRS\EXPORT18\IMAGEOUT 18\900\970\90097093\xml3\ ROA0012.JPG
`
`evi_1-2042272555-20210604 182321641891_._EXHIBIT_B_ TO_ROA.pdf
`
`\\TICRS\EXPORT18\IMAGEOUT 18\900\970\90097093\xml3\ ROA0013.JPG
`
`\\TICRS\EXPORT18\IMAGEOUT 18\900\970\90097093\xml3\ ROA0014.JPG
`
`       
`       
`       
`       
`       
`       
`       
`       
`       
`       
`

`

`\\TICRS\EXPORT18\IMAGEOUT 18\900\970\90097093\xml3\ ROA0015.JPG
`
`\\TICRS\EXPORT18\IMAGEOUT 18\900\970\90097093\xml3\ ROA0016.JPG
`
`\\TICRS\EXPORT18\IMAGEOUT 18\900\970\90097093\xml3\ ROA0017.JPG
`
`\\TICRS\EXPORT18\IMAGEOUT 18\900\970\90097093\xml3\ ROA0018.JPG
`
`\\TICRS\EXPORT18\IMAGEOUT 18\900\970\90097093\xml3\ ROA0019.JPG
`
`\\TICRS\EXPORT18\IMAGEOUT 18\900\970\90097093\xml3\ ROA0020.JPG
`
`DESCRIPTION OF EVIDENCE FILE
`
`Response to Office Action, Exhibit A and Exhibit B.
`
`GOODS AND/OR SERVICES SECTION (041) (current)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`041
`
`Education and entertainment services, namely, organizing, promoting and conducting conventions in the fields of animation, comic books and
`popular art; education and entertainment services, namely, providing information, virtual conventions and multimedia productions by means of
`a global computer network in the fields of animation, comic books and popular art
`
`FILING BASIS
`
`Section 1(b)
`
`GOODS AND/OR SERVICES SECTION (041) (proposed)
`
`INTERNATIONAL CLASS
`
`TRACKED TEXT DESCRIPTION
`
`041
`
`Education and entertainment services, namely, organizing, promoting and conducting conventions in the fields of animation, comic books and
`popular art; Education and entertainment services, namely, organizing and conducting conventions, presentations and meetings in the fields of
`animation, comic books and popular art; education and entertainment services, namely, providing information, virtual conventions and
`multimedia productions by means of a global computer network in the fields of animation, comic books and popular art; education and
`entertainment services, namely, providing information, presentations, virtual meetings and multimedia productions by means of a global
`computer network in the fields of animation, comic books and popular art; museum services.
`
`FINAL DESCRIPTION
`
`Education and entertainment services, namely, organizing and conducting conventions, presentations and meetings in the fields of animation,
`comic books and popular art; education and entertainment services, namely, providing information, presentations, virtual meetings and
`multimedia productions by means of a global computer network in the fields of animation, comic books and popular art; museum services.
`
`        WEBPAGE URL
`
`        WEBPAGE DATE OF ACCESS
`
`FILING BASIS
`
`None Provided
`
`None Provided
`
`Section 1(b)
`
`GOODS AND/OR SERVICES SECTION (035)(class added)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`035
`
`Promoting conventions, presentations and meetings in the fields of animation, comic books and popular art.
`
`        WEBPAGE URL
`
`        WEBPAGE DATE OF ACCESS
`
`FILING BASIS
`
`ADDITIONAL STATEMENTS SECTION
`
`DISCLAIMER
`
`SECTION 2(f) Claim of Acquired Distinctiveness, IN PART,
`based on Active Prior Registration(s)
`
`None Provided
`
`None Provided
`
`Section 1(b)
`
`No claim is made to the exclusive right to use @HOME apart from the mark as
`shown.
`
`COMIC CON has become distinctive of the goods/services as evidenced by the
`ownership on the Principal Register for the same mark for sufficiently similar
`
`       
`       
`       
`       
`       
`       
`

`

`goods/services of active U.S. Registration No(s). 2218236, 3219568
`
`CORRESPONDENCE INFORMATION (current)
`
`NAME
`
`PETER K. HAHN
`
`PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE
`
`docket_ip@pillsburylaw.com
`
`SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES)
`
`peter.hahn@pillsburylaw.com; sandra.edge@pillsburylaw.com;
`jeanne.scaramella@pillsburylaw.com
`
`DOCKET/REFERENCE NUMBER
`
`35997-513732
`
`CORRESPONDENCE INFORMATION (proposed)
`
`NAME
`
`Peter K. Hahn
`
`PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE
`
`docket_ip@pillsburylaw.com
`
`SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES)
`
`peter.hahn@pillsburylaw.com; sandra.edge@pillsburylaw.com;
`jeanne.scaramella@pillsburylaw.com
`
`DOCKET/REFERENCE NUMBER
`
`35997-513732
`
`PAYMENT SECTION
`
`APPLICATION FOR REGISTRATION PER CLASS
`
`NUMBER OF CLASSES
`
`TOTAL FEES DUE
`
`SIGNATURE SECTION
`
`DECLARATION SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`SIGNATORY'S PHONE NUMBER
`
`DATE SIGNED
`
`SIGNATURE METHOD
`
`RESPONSE SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`350
`
`1
`
`350
`
`/Peter K. Hahn/
`
`Peter K. Hahn
`
`Attorney of record, California bar member
`
`6195443108
`
`06/04/2021
`
`Sent to third party for signature
`
`/Peter K. Hahn/
`
`Peter K. Hahn
`
`Attorney of record, California Bar member
`
`SIGNATORY'S PHONE NUMBER
`
`DATE SIGNED
`
`6195443108
`
`06/04/2021
`
`ROLE OF AUTHORIZED SIGNATORY
`
`Authorized U.S.-Licensed Attorney
`
`SIGNATURE METHOD
`
`Signed directly within the form
`
`FILING INFORMATION SECTION
`
`SUBMIT DATE
`
`TEAS STAMP
`
`Fri Jun 04 18:51:17 ET 2021
`
`USPTO/ROA-XXX.XXX.XXX.X-2
`0210604185117212470-90097
`093-7804c7f8286d01ce4dbc0
`2019876902326dc88d123dcbe
`bcd72caab2c15d67ee2d-DA-5
`1153188-20210604182321641
`891
`
`

`

`PTO- 1957
`
`Approved for use through 11/30/2023. OMB 0651-0050
`
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number
`
`To the Commissioner for Trademarks:
`
`Response to Office Action
`
`Application serial no. 90097093 COMIC-CON@HOME(Standard Characters, see https://tmng-al.uspto.gov/resting2/api/img/90097093/large)
`has been amended as follows:
`
`ARGUMENT(S)
`In response to the substantive refusal(s), please note the following:
`
`The complete response is being submitted as an attachment, as there were too many formatting issues.
`
`EVIDENCE
`Evidence has been attached: Response to Office Action, Exhibit A and Exhibit B.
`Original PDF file:
`evi_1-2042272555-20210604 182321641891_._035997-051 3732_Response_to_Office_A ction.pdf
`Converted PDF file(s) ( 7 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7
`Original PDF file:
`evi_1-2042272555-20210604 182321641891_._EXHIBIT_A_ TO_ROA.pdf
`Converted PDF file(s) ( 4 pages) Evidence-1Evidence-2Evidence-3Evidence-4
`Original PDF file:
`evi_1-2042272555-20210604 182321641891_._EXHIBIT_B_ TO_ROA.pdf
`Converted PDF file(s) ( 8 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8
`
`CLASSIFICATION AND LISTING OF GOODS/SERVICES
`
`Applicant proposes to amend the following:
`
`Current:
`Class 041 for Education and entertainment services, namely, organizing, promoting and conducting conventions in the fields of animation, comic
`books and popular art; education and entertainment services, namely, providing information, virtual conventions and multimedia productions by
`means of a global computer network in the fields of animation, comic books and popular art
`Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a
`bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a
`collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a
`bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with
`the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the
`applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in
`connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the
`mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification
`standards of the applicant.
`
`Proposed:
`
`Tracked Text Description: Education and entertainment services, namely, organizing, promoting and conducting conventions in the fields of
`animation, comic books and popular art; Education and entertainment services, namely, organizing and conducting conventions, presentations
`and meetings in the fields of animation, comic books and popular art; education and entertainment services, namely, providing information,
`virtual conventions and multimedia productions by means of a global computer network in the fields of animation, comic books and popular art;
`education and entertainment services, namely, providing information, presentations, virtual meetings and multimedia productions by means of a
`global computer network in the fields of animation, comic books and popular art; museum services.
`
`Class 041 for Education and entertainment services, namely, organizing and conducting conventions, presentations and meetings in the fields of
`animation, comic books and popular art; education and entertainment services, namely, providing information, presentations, virtual meetings
`and multimedia productions by means of a global computer network in the fields of animation, comic books and popular art; museum services.
`
`

`

`Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a
`bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a
`collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a
`bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with
`the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the
`applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in
`connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the
`mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification
`standards of the applicant.
`
`Webpage URL: None Provided
`Webpage Date of Access: None Provided
`
`Applicant hereby adds the following class of goods/services to the application:
`New: Class 035 for Promoting conventions, presentations and meetings in the fields of animation, comic books and popular art.
`Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a
`bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a
`collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a
`bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with
`the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the
`applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in
`connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the
`mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification
`standards of the applicant.
`
`Webpage URL: None Provided
`Webpage Date of Access: None Provided
`
`ADDITIONAL STATEMENTS
`Disclaimer
`No claim is made to the exclusive right to use @HOME apart from the mark as shown.
`
`SECTION 2(f) Claim of Acquired Distinctiveness, IN PART, based on Active Prior Registration(s)
`COMIC CON has become distinctive of the goods/services as evidenced by the ownership on the Principal Register for the same mark for
`sufficiently similar goods/services of active U.S. Registration No(s). 2218236, 3219568
`
`Correspondence Information (current):
`      PETER K. HAHN
`      PRIMARY EMAIL FOR CORRESPONDENCE: docket_ip@pillsburylaw.com
`      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): peter.hahn@pillsburylaw.com; sandra.edge@pillsburylaw.com;
`jeanne.scaramella@pillsburylaw.com
`
`The docket/reference number is 35997-513732.
`
`Correspondence Information (proposed):
`      Peter K. Hahn
`      PRIMARY EMAIL FOR CORRESPONDENCE: docket_ip@pillsburylaw.com
`      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): peter.hahn@pillsburylaw.com; sandra.edge@pillsburylaw.com;
`jeanne.scaramella@pillsburylaw.com
`
`The docket/reference number is 35997-513732.
`
`Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the
`owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic
`Application System (TEAS).
`
`FEE(S)
`
`

`

`Fee(s) in the amount of $350 is being submitted.
`
`SIGNATURE(S)
`Declaration Signature
`
`DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both,
`under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or
`any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all
`statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the
`application or AOU and this submission made on information and belief are believed to be true.
`
`STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C.
`§1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be
`registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with
`the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use
`in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in
`the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark
`application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the
`use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged in
`the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification
`program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no
`other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce,
`either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective
`membership organization of such other persons, to cause confusion or mistake, or to deceive.
`
`STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a)
`COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b),
`1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that:
`for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services
`specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in
`commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification
`mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and
`had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date;
`the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, the applicant will
`not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the
`certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge
`and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in
`commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the
`goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.
`
`Signature: /Peter K. Hahn/      Date: 06/04/2021
`Signatory's Name: Peter K. Hahn
`Signatory's Position: Attorney of record, California bar member
`Signatory's Phone Number: 6195443108
`
`Signature method: Sent to third party for signature
`
`Response Signature
`Signature: /Peter K. Hahn/     Date: 06/04/2021
`Signatory's Name: Peter K. Hahn
`Signatory's Position: Attorney of record, California Bar member
`
`Signatory's Phone Number: 6195443108 Signature method: Signed directly within the form
`
`The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a
`U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or
`an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated
`with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a
`
`

`

`signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder
`has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of
`attorney appointing him/her as an associate attorney in this matter.
`
`Mailing Address:    PETER K. HAHN
`   PILLSBURY WINTHROP SHAW PITTMAN LLP
`
`      12255 EL CAMINO REAL, SUITE 300
`
`   SAN DIEGO, California 92130
`Mailing Address:    Peter K. Hahn
`   PILLSBURY WINTHROP SHAW PITTMAN LLP
`   12255 EL CAMINO REAL, SUITE 300
`   SAN DIEGO, California 92130
`
`PAYMENT: 90097093
`PAYMENT DATE: 06/04/2021
`
`Serial Number: 90097093
`Internet Transmission Date: Fri Jun 04 18:51:17 ET 2021
`TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.X-2021060418511721
`2470-90097093-7804c7f8286d01ce4dbc020198
`76902326dc88d123dcbebcd72caab2c15d67ee2d
`-DA-51153188-20210604182321641891
`
`        
`        
` 
`

`

`RESPONSE TO NON-FINAL OFFICE ACTION
`
`MARK:
`
`COMICCON @ HOME
`
`SERIAL NO.:
`
`90/097,093
`
`Client/Matter:
`
`035997-05 13732
`
`In response to the Office Action issued on December 7, 2020, having a period for response set to
`
`expire on June 7, 2021, please enter the following Response:
`
`REMARKS
`
`This is intended as a full and complete response to the Office Action dated December 7, 2020.
`
`I.
`
`Summaryof the Office Action
`
`In the Office Action, the Examining Attorney is refusing registration asserting that the
`
`mark merely describes applicant’s services, namely, providing comic book convention services
`
`at home.
`
`II.
`
`
`
`Section 2(e) (1) Refusal — Merely Descriptive
`
`Applicant disagrees that the mark is merely descriptive. Applicant asserts that the terms
`
`“Comic Con” have acquired distinctiveness and are registerable, without a disclaimer, under 2(f)
`
`of the Trademark Act.
`
`(See distinctiveness claimbelow).
`
`4814-0291-2491 v1
`
`

`

`III.
`
`Claim of Acquired Distinctiveness in Part Under Section 2
`
`Belowis a chart of Applicant’s registered marks that contain the terms COMIC-CONor
`
`COMIC CON:
`
`
`
`DISCLAIMER OR
`IDENTIFICATION OF
`REG. NO.
`(Reg. Date)
`SERVICES AND CLASS
`OTHERINFO.
`
`
`MARK
`
`3,219,568
`(03/20/2007)
`
`COMIC-CON
`
`
` LOS ANGELES COMIC-
` Class 41: Education and
` Registered: 2(f)-In Part
`
` 4,856,095
`
`Class 41: Education and
`entertainmentservices, namely,
`organizing and conducting
`conventions in the fields of
`animation, comic books and
`popular art.
`
`
`Registered: 2(f)
`Incontestable
`
`Disclaimer: None
`
`Registered: 2(f)
`Class 41: Education and
`COMIC CON
`2,218,236
`
`
`(01/19/1999) entertainment services, namely,|IncontestableINTERNATIONAL
`organizing and conducting
`conventions in the fields of
`animation, comic books and
`popular art.
`
`
`Disclaimer: None
`
`3,221,808
`(03/27/2007)
`
`SAN DIEGO COMIC CON
`INTERNATIONALand Eye
`Logo
`
`
`
`INTERNATIONAL
`
`Class 41: Education and
`entertainmentservices, namely,
`organizing and conducting
`conventions in the fields of
`animation, comic books and
`popular art.
`
`Registered: 2(f)
`Incontestable
`
`Disclaimer: None
`
`
`
`4,425,806
`(10/29/2013)
`
`ANAHEIM COMIC-CON
`
`Class 41: Education and
`entertainmentservices, namely,
`organizing and conducting
`conventions in the fields of
`animation, comic books and
`popular art.
`
`Registered: 2(f)-In Part
`
`Disclaimer: ANAHEIM
`
`(11/17/2015)
`
`CON
`
`entertainmentservices, namely,
`organizing and conducting
`conventions in the fields of
`animation, comic books and
`popularart.
`
`
`Disclaimer: LOS
`ANGELES
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`4814-0291-2491 v1
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`

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`
`
`DISCLAIMER OR
`IDENTIFICATION OF
`REG. NO.
`(Reg. Date)
`SERVICES AND CLASS
`OTHERINFO.
`
`
`Class 41: Education and
`COMIC-CON
`4,854,233
`entertainmentservices, namely,
`INTERNATIONAL
`(11/17/2015)
`PRESENTS WONDERCON|organizing and conducting
`ANAHEIM and Swirl Logo
`conventions in the fields of
`Disclaimer: ANAHEIM
`animation, comic books and
`
`Registered: 2(f)-In Part
`
`MARK
`
`aS
`
`WONDERCON
`
`popular art.
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`
`
`
`
`
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` 4,835,134 SAN DIEGO COMIC CON Class 16: Printed matter, Registered: 2(f)-In Part
`
`
`
`4,835,135
`(10/20/2015)
`
`SAN DIEGO COMIC CON
`INTERNATIONALand Eye
`Logo
`
` ©
`
`INTERNATIONAL
`
`(10/20/2015)
`
`INTERNATIONALand Eye
`
`Logo
`
`Class 35: Promoting public
`recognition and awareness of the
`creative andartistic
`
`developments of others in the
`fields of entertainment,
`animation, comic books and
`popular art.
`
`Class 41: Educational and
`entertainmentservices, namely,
`providing incentives by way of
`awards to people to demonstrate
`excellence in the field of
`entertainment, animation, comic
`books and popular art; providing
`recognition and incentives by the
`way of awards to demonstrate
`excellence in the fields of
`entertainment, animation, comic
`books and popular art.
`
`namely, magazines, newsletters,
`and event guidebooksall in the
`fields of entertainment,
`animation, comic books and
`popularart.
`
`Registered: 2(f)-In Part
`
`Disclaimer: None
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`Disclaimer: None
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`4814-0291-2491 v1
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`INTERNATIONAL
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`
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`

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`While the Applicant disputes the Examining Attorney’s contention that the terms ofthe
`
`mark are descriptive, Applicant is willing to add a claim ofacquired distinctiveness under
`
`Section 2(f) of the Trademark Act.
`
`The terms “Comic Con” are virtually identical to the subject of U.S. Registration No.
`
`3,219,568 (the “568 Registration”) which is owned by the Applicant. The ‘568 Registrationis
`
`incontestable. In the application leading up to that registration, Applicant submitted a
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`declaration evidencing acquired distinctiveness ofthe terms “Comic-Con” for convention related
`
`services. The evidence wasaccepted, the distinctiveness claim was added, and the registration
`
`wasissued. Because the Examining Attorney has taken the position that the services in this
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`application are conventionrelated, the prior showing ofdistinctiveness should likewise be
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`applicable to the present mark andservices.
`
`In addition to the ‘568 Registration, U.S. Reg. Nos. 2,218,236, 3,221,808, 4,425,806,
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`4,856,095, 4,854,233, 4,835,135 and 4,835,134 each include the terms “Comic-Con” or “Comic
`
`Con” and are owned by the Applicant. Each mark wasregistered based on a 2(f) distinctiveness
`
`claim for the terms “Comic-Con” or “Comic Con” -- which Applicant considers to be identical
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`marks. Each of these Registrations are further evidence ofthe acquired distinctiveness ofthe
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`terms “Comic Con”.
`
`Applicant asserts that the terms “Comic Con” have acquired distinctiveness and are
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`registerable under 2(f) of the Trademark Act.
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`4814-0291-2491 v1
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`In connection with this claim ofdistinctiveness, Applicant requests that the following
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`statement of acquired distinctiveness, in part, under Trademark Act Section 2(f) be added to the
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`record:
`
`The mark has become distinctive ofthe services in part as to the wording
`“COMIC CON” as evidenced by ownership of U.S. Registration Nos. 3,219,568
`and 2,218,236 on the Principal Register for the same mark for the sameorrelated
`goods andservices.
`
`See TMEP §1212.04(e):; see 15 U.S.C. §1052(f); 37 C.F.R. §2.41(b).
`
`With regard to the term “(@HOME” Applicant requests entry of the following disclaimer:
`
`No claimis madeto the exclusive right to use “@HOME” apart from the mark as
`shown.
`
`IV.
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`Prior Filed Application
`
`The Examining Attorney noted in the Office Action the existence ofprior pending Ser.
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`No. 86619912. Applicant notes that that application was suspended in view of Applicant’s
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`district court litigation, San Diego Comic Convention v. Dan Farr Productions, et al., Case No.
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`3:14-cv-01865 (the “Civil Action”). That litigation has been concluded. See the Amended
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`Judgment fromthe Civil Action, dated April 15, 2019 and the Memorandumfromthe United
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`States Court of Appeals for the Ninth Circuit, dated April 20, 2020, attached hereto. In viewof
`
`that resolution Applicant requests that the Office lift the suspensionofthe ‘912 application.
`
`The Civil Action has beenfinalized, as follows: On December8, 2017, the Jury in the
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`Civil Action rendered its verdict: (1) that the Comic-Con marks were valid and enforceable
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`(rejecting the defense argumentthat the marks “comic-con” or “comic con” were generic); (ii)
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`that the Comic-Con marks were infringed by the defendants; and(111) that Plaintiff was damaged.
`
`On August 23, 2018, the District Court entered the Judgmentin a Civil Case in favor of Plaintiff
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`4814-0291-2491 v1
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`

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`San Diego Comic Convention and against Defendants Dan Farr Productions, LLC, Daniel Farr,
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`and Bryan Brandenburg which, among other things, awarded damages and substantial attorneys’
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`fees and expenses to SDCC anddirected the Clerk of Court to issue the Permanent Injunction as
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`set forth therein. On October 16, 2018, Defendants appealed the Judgment to the Ninth Circuit
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`Court of Appeals. On April 15, 2019, the District Court entered an Amended Judgment(the
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`“Amended Judgment” and attached hereto as Exhibit A).
`
`On April 20, 2020, the United States Court of Appeals for the Ninth Circuit, by
`
`Memorandum, affirmed the Amended Judgmentin all material aspects. A copy of the Appellate
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`Court’s Memorandumis attached hereto as Exhibit B.
`
`A Satisfaction of Judgement wasfiled on September 3, 2020. The Amended Judgement
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`remains in place and is nowfinal.
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`MN;
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`Recitation of Services
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`Applicant requests that the recitation of services be amended along the lines suggested by
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`the Examining Attorney, namely, to read as follows:
`
`Class 35: Promoting conventions, presentations and meetingsin the fields of animation,
`
`comic books and popularart.
`
`Class 41: Education and entertainment services, namely, organizing and conducting
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`conventions, presentations and meetings in the fields of animation, comic books and popularart;
`
`education and entertainment services, namely, providing information, presentations, virtual
`
`meetings and multimedia productions by means of a global computer network inthe fields of
`
`animation, comic books and popularart; museumservices.
`
`The fee for the added class is provided herewith.
`
`4814-0291-2491 v1
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`VI.
`
`Conclusion
`
`Based onthe foregoing, Applicant respectfully requests that the rejection and clarification
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`requirement be withdrawnand that this application, as amended, be approved for publication.
`
`4814-0291-2491 v1
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`

`

`EXHIBIT A
`
`

`

`Case 3:14-cv-01865-AJB-JMA Document 599Filed 04/15/19 PagelD.43402 Page 1 of 3
`
`Be |
` 7
`|
`4
`Ima,
`
`United StatesDistrict Court
`
`\
`
`SOUTHERN DISTRICT OF CALIFORNIA
`
`Defendant.
`
`Plaintiff,
`
`Vv
`
`San Diego Comic Convention, a
`California non-profit corporation,
`
`DanFarr Productions, a Utah limited
`hability company; Daniel Farr, an
`individual; (See attachment for additional
`arties
`e
`)
`
`Civil Action No._14-cv-01865-AJB-JMA
`
`AMENDED
`
`JUDGMENT IN A CIVIL CASE
`
`Decision by Court. This action cametotrial or hearing before the Court. The issues have been tried
`or heard and a decision has been rendered.
`
`IT IS HEREBY ORDERED AND ADJUDGED:
`
`The Court has exhaustively and carefully considered the totality of the circumstancesin this case.
`Having doneso, the Court finds that this case stands out when compared to run of the mill trademark
`infringement cases. Accordingly, in its discretion, finding this case “exceptional” pursuant to 15 U.S.C.
`§ 1117(a), SDCC asthe prevailing party is awarded attorneys’ fees and costs subject to the deductions
`listed above. It is accordingly ORDERED that SDCC is awarded attorneys’ fees and costs totaling
`$3,962,486.84. This award includes $3,767,921.06 in attorneys’ fees and $212,323.56 in expert costs.
`Judgmentis entered for SDCC and against DFP, Dan Farr an individual, and Bryan Brandenburg an
`individual, and each of them,in this amount, as well as the $20,000 awarded by the jury, in this case.
`Permanent injunctionis issued. Accordingly, SDCC’s motion for attorneys’ fees and costs is
`GRANTED IN PART AND DENIED IN PART.
`
`Date:
`
`4/15/19
`
`CLERK OF COURT
`JOHN MORRILL, Clerk of Court
`By: s/ T. Ferris
`T. Ferris, Deputy
`
`

`

`Case 3:14-cv-01865-AJB-JMA Document 599 Filed 04/15/19 PagelD.43403 Page 2 of 3
`
`United States District Court
`SOUTHERN DISTRICT OF CALIFORNIA
`
`(ATTACHMENT)
`
`Civil Action No. 14-cv-01865-AJB-JMA
`
`Within the structure of the presen