By Jessica Nichols
It’s no secret that in a world full of fan conventions and gatherings, there is a constant battle to be the biggest spectacle of all. Many conventions are fighting to book the biggest stars and have the highest grossing photo-ops and panels. Some have even gone so far as to create contracts of exclusivity for celebrities. The latest showdown of exclusivity has nothing to do with star-power, however. In a battle of originality, the Salt Lake Comic Con finds itself on the other side of the San Diego Comic Con for the rights to their name.
What’s In A Name?
In the United States, “Comic-Con”, “Comic Con” and “ComicCon” are registered trademarks of San Diego Comic-Con International, which was founded in 1970. In 2014, Messrs. Dan Farr and John Sloan of the Salt Lake Comic Con were served with a letter informing them of a lawsuit for Intellectual Property Infringement, and demanding an immediate cease and desist of the use of the name “Salt Lake Comic Con”, stating:
“Attendees, exhibitors and fans seeing use of “Comic Con” in connection with your convention will incorrectly assume that your convention is in some way affiliated with SDCC and its Comic-Con convention. Use of “Comic-Con” in connection with your convention is likely to cause confusion in the minds of attendees, exhibitors and fans as to the source, sponsorship or endorsement of your Salt Lake Comic Con convention. In fact, we are aware of multiple instances where persons have incorrectly believed that the Salt Lake Comic Con convention was an SDCC event. One such example occurred this week when a business contacted SDCC about a vehicle skinned to promote the Salt Lake Comic Con convention. These persons believed that this vehicle belonged to SDCC. Use of “Comic Con” in this manner is an infringement of SDCC’s valuable registered trademark rights. As a result, SDCC is entitled to an awarded of damages against your companies, as well as entry of an injunction prohibiting further infringing conduct.” (Source: Peter K. Hahn of Pillsbury Winthrop Shaw Pittman LLP / saltlakecomiccon.com)
Salt Lake Comic Con owners Dan Farr and Bryan Brandenburg are disputing the claims of Intellectual Property Infringement, stating that:
“Our position is that the phrases “comic con,” “comicon” and “comic-con” are generic and are abbreviations for the term “comic convention.’ This has been a common expression since 1964, six years before San Diego Comic-Con even existed. When used with another set of words such as “Salt Lake,” “Big Apple,” Chicago” or “New York,” they become a name that has protection and exclusivity. Salt Lake Comic Con trademark was refused because “Comic Con” is merely descriptiveness”. According to the United States Trademark Office both “Salt Lake and “Comic Con” are considered merely descriptive. Salt Lake Comic Con Square Image with city and mountain-scapes trademark was refused because “Comic Con” is merely descriptive. The USPTO examining attorney wants us to disclaim the words: “Salt Lake” and “Comic Con”, as they are both merely descriptive. It does not mean that we can’t use the wording in the trademark application. It simply means that if the TM is issued, we will not be able to prevent others from using the words: “Salt Lake” or “Comic Con”. The image itself is protectable (assuming we get registered).” (Source: saltlakecomiccon.com)
According to their website, Salt Lake Comic Con, who received the trademark on their name on July 14, 2015, will present an argument to the courts that the terms “Comic-Con”, “Comicon” and “Comic Con” are generic terms, presented as an abbreviation to the term “Comic Convention”. They will present arguments that there are conventions around the world that use the title “Comic Con”, and that they alone have been singled out by SDCC. Additionally, they are set to pursue their counterclaim, which was filed 2014, and requests that SDCC take nothing by the complaint and that a declaration of non-infringement with respect to SDCC’s asserted trademarks be issued, amongst other requests.
Trial for this case began on June 11th, 2017, and is expected to last a week. Stay tuned to The Nerdd to see the final results for this lawsuit.