The term Comic Con has become synonymous with a certain culture.  In recent years, comic book conventions (and comic book culture), have become increasingly popular.  Annual comic book conventions are held in major cities across the U.S. and the world.  Many of these conventions are titled—officially or unofficially—“[City] Comic Con.”  One recent jury decision, however, may cause some (official) rebranding.

In 2014, the San Diego Comic Convention (San Diego CC) sued organizers of the Salt Lake Comic Convention (Salt Lake CC) for trademark infringement.  San Diego alleged that Salt Lake willfully infringed its registered COMIC-CON and COMIC CON INTERNATIONAL marks.

Salt Lake CC defended primarily on the ground that “comic con” is a generic term for comic book conventions.  The convention organizers cited to the names of various cities’ comic conventions to show the term is used generically—Motor City Comic Con, New York Comic Con, Denver Comic Con, and Emerald City Comic Con, among others.  Salt Lake CC also pointed to the usage of “comic con” in media to generically refer to a type of convention.

A sampling of the various Comic Cons pointed to by Salt Lake CC as evidence of generic use.

Throughout the case, Salt Lake CC worked to rally fans behind the view that “comic con” belongs to the public.  Eventually, Salt Lake CC’s tweets, Facebook posts, and press releases about the case prompted the federal judge to issue a gag order.  The order temporarily prevented Salt Lake CC from commenting on the case, and restricted their ability to republish public court documents.  The order was appealed to the Ninth Circuit and ultimately vacated on First Amendment grounds.

At trial, San Diego CC presented its Comic Con to the jury as a brand.  Through surveys and other evidence, San Diego CC convinced the jury that Comic Con is not a generic term for a type of event.  Instead, San Diego argued, it operates as a source designator for the San Diego convention.

The Jury found that Salt Lake CC’s use of “Comic Con” infringes on San Diego’s registered marks.  The infringement, however, was not willful according to the jury.  Thus, despite San Diego’s request of $12 million in damages, they were awarded only $20,000 for corrective advertising.  Post-trial motions will likely be filed, and the case may be appealed to the Ninth Circuit.  But at least for the time being, it seems Comic Con is (officially) off limits to event organizers without a license.  However, I suspect (unofficial) uses of the term will continue.

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.