Denis Poroy, Associated Press
Fun. Imaginative. Inventive.
Those three words aptly describe Salt Lake City’s Comic Con and the nearly 175,000 people who have attended the event since its launch last year. The success of the event was unexpected and remarkable. It is beyond my expertise to explain why Utahns are so heavily drawn to an event so steeped in escapism, but the reasons now seem largely irrelevant. Salt Lake’s Comic Con is, and likely will remain, a massively successful and important event.
The San Diego Comic Convention recently sent a “cease and desist” letter to the producers of the Salt Lake City Comic Con demanding the event be renamed. Although the Salt Lake organizers began using the Comic Con name last year, the San Diego organizers were apparently driven to action when a car prominently promoting the Salt Lake event was driven around the convention center where the San Diego event was taking place. Rather than shirk from this legal salvo, the Salt Lake organizers took to the press to proclaim their innocence and declare their intent to vigorously defend their use of the Comic Con name.
A simple Google search reveals many other major events in the United States and around the world that don’t appear to have any connection with the San Diego convention. This third-party use of the term will be relevant to at least two significant legal questions.
The first is whether “Comic Con” is merely descriptive of comic book conventions. Marks that are merely descriptive are generally not protectable because public policy disfavors giving one company a monopoly over the use of terms that simply describe generic things. Notably, the United States Patent and Trademark Office initially refused to register the “Comic-Con” trademark because of this very issue. The San Diego producers overcame that refusal by arguing that “Comic-Con” had “acquired distinctiveness,” meaning that the term had become so closely tied to the San Diego event in the minds of consumers that it was in fact functioning as trademark. To support that position, the San Diego producers contended that they had been using the “Comic-Con” mark “continuously and exclusively” between 1970 and 2006. Although the “Comic-Con” mark was ultimately registered, just this year the Patent and Trademark Office also allowed the registration of the mark “Denver Comic Con” by an individual with no apparent connection to the San Diego event. The Trademark Office noted in its file that “comic con” was merely short-hand for “comic convention” — an argument the Salt Lake producers will no doubt repeat if a lawsuit is ultimately filed.
The second way in which the seemingly ubiquitous use of the “Comic Con” term by others may be relevant is in an evaluation of whether the San Diego producers have adequately protected and policed their mark. Trademark owners have a duty to protect their marks or risk losing them. Given that there appears to be ongoing events in at least 15 major cities promoted as “Comic Cons,” this may be an uphill battle.
The Salt Lake organizers’ steadfast defiance and ongoing gravitas has turned a simple trademark dispute into a national news story with mountains of free publicity for the Salt Lake event. If this was intentional, it is an astonishing display of marketing genius. If this was mere happenstance, it is the comic book convention equivalent of the accidental invention of Post-It notes. Either way, the value of the publicity that is flowing to the event — whether it is ultimately called “Comic Con” or something else — is incalculable. Perhaps more importantly, the producers of the event are also endearing themselves to their core audience. After all, most comic book convention attendees are far more Clark Kent and Bruce Banner than their superhero alter egos Superman and The Hulk.
The media coverage of the dispute may also have an interesting effect on the outcome of any litigation. One of the principal ways plaintiffs in trademark disputes prove the “likelihood of confusion” that is central to a court’s analysis is through surveys of likely consumers of the goods or services at issue. Given the headlines and the Salt Lake organizers’ efforts to draw attention to the dispute, it seems less and less likely that those interested in attending a Comic Con would believe there is any affiliation between the Salt Lake event and the San Diego event.
The good news for geeks like me is that Salt Lake City will, in all likelihood, have a massively successful, well-run comic book convention for years to come. Whether that event is called “Comic Con” or something else, our city and state will be better for the continued presence of an event that brings creative people together and contributes so much from both a social and economic perspective.
Evan Stassberg is a partner and civil ligitator at Salt Lake City’s Michael Best & Friedrich, LLP. His firm is not the law firm representing Salt Lake Comic Con.