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Dueling Comic Conventions

Posted in Genericide, Infringement, Law Suits, Trademarks, TTAB

really-300x168My husband and I tried to get tickets to San Diego Comic-Con this year. Tickets are in such high demand, they’re offered for sale through a lottery process. Unfortunately, our number wasn’t drawn this year. Fingers crossed for next year.

San Diego Comic-Con is an annual tradition attended by over 130,000 fans. One of the oldest comic conventions, San Diego began in 1970.

Today, there are comic conventions held in various cities throughout country. Salt Lake Comic Con is one of the more recent conventions, beginning as recently as 2013, but has quickly grown to become a major event in the comic convention scene.  Salt Lake boasted 126,000 attendees at its 2015 convention.

Unfortunately, Salt Lake’s fast fame has garnered some unwanted attention. The San Diego Comic-Con filed suit last year against Salt Lake Comic Con for trademark infringement. San Diego claims that Salt Lake’s use of COMIC CON is identical to or confusingly similar to San Diego’s COMIC-CON marks. San Diego currently holds at least five COMIC-CON standard character marks.

Among other defenses, Salt Lake argues that Comic Con and Comic-Con are generic terms that refer generally to a variety of comic conventions, without source designation. In their answer to the complaint, Salt Lake lists a number of other comic conventions using different forms of the term:

  • Baltimore Comic Con
  • New York Comic Con
  • Dallas Comic Con
  • Denver Comic Con
  • Emerald City Comicon
  • Motor City Comic Con
  • Phoenix Comic Con
  • Ohio Comic Con
  • Pittsburg Comicon
  • Wildcat Comic Con
  • Rose City Comic Con

While these are arguably the largest comic conventions in the U.S., there are many others as well. How about Bakersfield Comic-Con and Grand Rapids Comic-Con, each employing the hyphenated form of the term. UpcomingCons.com provides a list of upcoming “Comic Cons” throughout the U.S.. And Twitter hashtags like #comicon and #comiccon are used generally to refer to any comic convention, including San Diego Comic-Con.

In July of this year, however, Salt Lake successfully registered SALT LAKE COMIC CON on the Supplemental Register. (The Supplemental Register generally does not provide all the federal benefits of the Principal Register, and is frequently used for marks deemed descriptive.) While Salt Lake has argued that the successful registration of their mark illustrates its distinction from San Diego’s marks, it also seems at odds with Salt Lake’s genericness argument.

Despite some earlier failed settlement attempts, the two convention companies now seem to be making headway in settlement negotiations, perhaps because they recognize that a ruling of genericness for Comic-Con and Comic Con could ultimately harm both parties.