Comic-Con has become a big deal. Multiple conventions are held annually throughout the country. Thousands of people attend. But the San Diego installment of the event wants to make sure that everyone knows that it is the real, original Comic-Con and is taking action to do so.
San Diego Comic-Con (“SD Comic-Con”) trademark attorneys recently sent Salt Lake Comic-Con (“SL Comic-Con”) a cease-and-desist letter exerting its trademark registration on the term “Comic-Con” and demanding that the Salt Lake convention stop using the name for its event. In response, Salt Lake argues that it is being unfairly singled out among all the other events calling themselves Comic-Con and states that it will continue using the name.
SD Comic-Con has a long history. It began in 1970 and was attended by a couple hundred people. The most recent edition of the convention was attended by over 130,000. With this incredible growth in popularity, SD Comic-Con took steps to protect its Comic-Con brand. In 2005, the group filed a trademark application on “Comic-Con” in the class “Education and entertainment services, namely, organizing and conducting conventions in the fields of animation, comic books and popular art.” In the application, SD Comic-Con claimed use in commerce back to the original 1970 convention.
To SD Comic-Con’s dismay, the U.S. Patent and Trademark Office rejected its trademark application claiming that the mark was merely descriptive. A mark will not be granted trademark registration if the mark merely describes an element or characteristic of the product or service. This is to prevent a situation where other competitors can’t accurately describe their product because someone has a trademark registration for a descriptive term needed to describe a relevant feature of the goods or services. The U.S. Patent and Trademark Office argued that “Comic-Con” was merely short for Comic Convention and exactly described what the event was.
SD Comic-Con apparently conceded this argument and sought trademark registration on the Supplemental Register. The Supplemental Register does not grant all the benefits of a trademark registration on the Principal Register, but does allow some protection. Moreover, if the mark is used long enough and acquires distinctiveness, then the mark may be able to be registered on the Principal Register. This is exactly what SD Comic-Con did.
In 2006, SD Comic-Con responded to the merely descriptive rejection to its trademark application with evidence in the form of a declaration to demonstrate acquired distinctiveness. SD Comic-Con claimed that even though “Comic-Con” is a descriptive term, consumers had come to associate the name with its convention. The U.S. Patent and Trademark Office accepted the evidence and SD Comic-Con’s argument and in 2007 granted SD Comic-Con a trademark registration for the mark Comic-Con.
Fast-forward to 2014 when SD Comic-Con is exerting its trademark registration against the Salt Lake City event. It’s not clear whether SD Comic-Con intends to take action against all of the other Comic-Cons, but several cities have sought to register their own “Comic-Con” trademarks with the inclusion of their city names. For example, in 2013 a group in Denver filed a trademark registration application for the mark “Denver Comic Con” SD Comic Con has filed an opposition to registration of the mark. So it appears that Salt Lake isn’t the only one being targeted.