If you were one of the 160,000 people lucky enough to score passes to San Diego Comic Con earlier this month, then you already understand the scope of the madness that engulfs the city and takes over the downtown Convention Center every July. Whether you go because you enjoy comic books, you hope to see your favorite actor previewing a new sci-fi movie, or you just like dressing up as a Star Wars Storm Trooper, you probably haven’t thought much about the San Diego Comic Con brand. Obviously derived from a combination of “comic” and “convention,” when these words are paired with the name San Diego they take on a whole new meaning. To millions of people, San Diego Comic Con, besides being a registered trademark (USPTO TM No. 1675405), is synonymous with all things nerd and geek.
So, it isn’t hard to imagine that when a competing convention featuring comic books held in a city other than San Diego starts using the term “Comic Con,” it upsets the folks at San Diego Comic Con.
In a move some consider controversial, San Diego Comic-Con has filed suit against one such competitor, Salt Lake Comic Con, alleging trademark infringement and seeking to force the competing convention to call itself something other than “Comic-Con.” While Salt Lake Comic Con is only a few years old, it has grown in size considerably over the last few years, whereas San Diego Comic Con is a non-profit organization that has been running its convention for almost 45 years. Nevertheless, Salt Lake Comic successfully obtained an active use federal registration for its trademark in mid-July of this year.
Under U.S. trademark law, a business that uses a trademark has the exclusive right to continue using that trademark and to stop other persons or entities from using an identical mark or a potentially confusing similar mark. Additionally, an argument can be made that the owner of a trademark has an affirmative obligation to stop others from infringing on the mark in order to enhance its primary function as a source identifier for goods and services. After all, trademark laws are intended to protect consumers, not the companies that own the trademarks.
Generally speaking, U.S. trademark law also recognizes that priority of usage is a key factor in determining whether or not a trademark can be enforced against a competing use. In the San Diego versus Salt Lake City dispute, San Diego holds the upper hand in terms of earlier use. However, an analysis of trademark infringement usually includes a geographic component. If two trademarks are competing in different markets, a reviewing court will not necessarily rule that the latter mark is infringing and therefore cannot be used at all. In fact, it is not uncommon for such marks to be allowed to co-exist, albeit with restrictions on the expansion of their use into directly competing areas.
San Diego Comic Con is wildly profitable for the city and for the on-site vendors, generating hundreds of millions of dollars in revenue every year. And with popularity and profitability, it is inevitable that competition will arise. Comic book and popular media conventions are now held in cities throughout North America (many are even held in Europe and the Middle East) and the thing that unites them all is the desire to mimic San Diego Comic Con and to use the Comic Con name. The problem for San Diego Comic Con is that the proliferation of such conventions comes at the risk of misleading attendees of the other convention into believing that there is some affiliation between them and San Diego Comic Con. There is not. And, San Diego Comic Con must protect its valuable trademark or run the risk of losing it.
Why it matters.
San Diego Comic Con has become a cultural phenomenon that is so big and so influential that The Big Bang Theory has used it as a running theme throughout its episodes, Conan O’Brien brought his entire show to San Diego for a week and magazines like Entertainment Weekly devote entire issues to coverage of the convention. Favorable fan response to actor panels and movie previews are said to be able to make or break multimillion dollar Hollywood productions. And, entire careers can be launched with a successful debut at San Diego Comic Con (just ask Sacha Baron Cohen or Kristen Stewart).
In San Diego versus Salt Lake City case, it seems likely that the average consumer who is familiar with comic book conventions would identify “Comic Con” as a reference to San Diego Comic-Con. Further, it seems obvious that those same consumers would believe that other, smaller and/or newer conventions have some affiliation or license with San Diego Comic-Con.
However, besides Wonder Con (held in the spring in Anaheim) and the Alternative Press Expo (held in the Bay Area in the fall)t, San Diego Comic-Con does not have any licensing arrangement with any other comic book convention. Oddly enough, San Diego Comic-Con has allowed a number of the competing conventions, such as New York City Comic Con, to exist without suing them or taking other steps to protect their registered trademark.
Given that Salt Lake Comic Con also now has its own registered trademark, it will be interesting to see whether or not San Diego Comic Con will continue to prosecute its infringement lawsuit. Can’t the nerds and the geeks just get along?