Saturday as folks were enjoying San Diego Comic-Con, a letter made its way through the press from Salt Lake Comic Con concerning a cease and desist letter they received from SDCC concerning their use of the word “Comic-Con.”  San Diego Comic-Con, or Comic-Con International as they’re going by now, trademarked the term in 2005.

Here’s a link to the letter SLCC received from SDCC’s law firm of Pillsbury Winthrop Shaw Pittman LLP. And here’s a copy of the press release that Salt Lake Comic Con sent out.

San Diego Comic-Con International vs. Salt Lake Comic Con 
 
– San Diego Comic-Con International sends cease and desist order siting intellectual property infringement for use of name of “Comic Con” –
 
SALT LAKE CITY, July 26, 2014 – On Friday, July 25, 2014 Salt Lake Comic Con (http://saltlakecomiccon.com/) organizers received a cease and desist order from San Diego Comic-Con International asserting that Salt Lake Comic Con cannot use the term “Comic Con” for any event, logo, trademark or website moving forward, further claiming ownership of all variations of the generic term “Comic Con.”
 
San Diego Comic-Con International is asserting intellectual property infringement for use of the name “Comic Con”, challenging hundreds of comic conventions around the country and the world already using the words comic con for their show.
 
To view a copy of the cease and desist order or to join Salt Lake Comic Con’s effort to protect Comic Con, click here.
 
Dan Farr Productions produces the Salt Lake Comic Con events.  The next Salt Lake Comic Con is scheduled for September 4-6, 2014 at the Salt Palace Convention Center in downtown Salt Lake City, Utah.
 
“This cease and desist order is baseless and has been attempted before by this organization and has failed. Our primary concern is our fans and making sure we provide them with an event that allows them to meet, greet and get up close and personal with their favorite celebrities and pop culture icons,” said Dan Farr, Salt Lake Comic Con Founder and Show Producer.  “We’re puzzled why Salt Lake Comic Con was apparently singled out amongst the hundreds of Comic Cons around the country and the world. We intend to vigorously defend ourselves from this frivolous action.”
 
In one year, Salt Lake Comic Con has achieved record setting success.  The first Salt Lake Comic Con surpassed more than 72,000 fans.  In its second event called Salt Lake Comic Con FanXperience (FanX) attendance exceeded more than 100,000 people making it the third largest Comic Con in the country. For Salt Lake Comic Con 2014 show organizers anticipate an even larger outpouring of fan support with expectations of more than 120,000 fans.
 
“San Diego Comic-Con International is threatening not only us, but all the other Comic Cons by trying to prohibit them from using the term for their events, “said Bryan Brandenburg, Salt Lake Comic Con Co-Founder and Chief Marketing Officer.   “San Diego Comic-Con attempted to trademark ‘Comic Con’ in 1995 and the application failed. Furthermore, precedence for the mark ‘Comic Con’ was set when Denver Comic Con received a trademark for their convention on November 26, 2013. Nobody owns the words ‘Comic Con’ (short for comic convention) and the United States Patent and Trademark Office has already ruled on this.”
 
To find out more information about Salt Lake Comic Con, the country’s third largest comic con, visit the Salt Lake Comic Con website.
 
ABOUT SALT LAKE COMIC CON:
Salt Lake Comic Con is organized by Dan Farr Productions in partnership with Media One of Utah, a joint operating agreement between the Salt Lake Tribune and the Deseret News, and ABC4/CW30 of the Nexstar Broadcasting Group. Dan Farr Productions is an event and marketing group devoted to organizing events, launching and acquiring new shows, and partnering with premium celebrities and brands in the pop culture arena. Dan Farr Productions is dedicated to producing spectacular celebrations of popular culture that lead the market in providing exceptional and rewarding experiences for our consumers, fans, celebrity guests, vendors and partners. Find out more at: www.SaltLakeComicCon.com, www.mediaoneutah.com,www.abc4.com/.

While I’m not a lawyer, I know quite a few individuals who are, and a few individuals who actually deal in trademark. Companies doing this sort of thing isn’t anything new. So, I decided to consult them as to what this all means and how much of a viable case San Diego Comic-Con has.

SDCC started in 1970, and since then dozens of other conventions using “Comic-Con” (or some variation) have sprung up. SDCC even isn’t the first “Comic-Con,” that belongs to the British Comic Art Convention which began in 1968, and does go by Comicon. That variation is important as you’ll see below. There is a strong case that the “Comic-Con” mark has been abandoned, as mark owners have a positive duty to defend the mark, or lose it.

SDCC’s complaint stems from SLCC supposedly sending a car to promote their show during San Diego Comic-Con 2014. Except, that didn’t happen. In an interview with The Outhousers, SLCC gives us the scoop:

There are “comic cons,” “comic-cons,” and “comiccons” all over the world every year. Why do you think Salt Lake Comic Con has been targeted in particular?

They found out we were bringing our wrapped car to San Diego and threatened us with legal action. We agreed not to bring it down and didn’t but they sent the letter anyway

We also had our 2nd event the same weekend as their Wonder Con and we had record attendance over 100,000 and they did poorly.

 

So, claims made in the letter to begin with are possibly false. But there’s the trademark claim itself. San Diego Comic-Con has sent “cease and desist” notices in the past, for example to Chicago Comic-Con, but those haven’t gone anywhere. So, they aren’t defending their trademark at all, and at a minimum not consistently. If you fail to enforce it, there’s legal consequences about how much you can defend it down the road, and what you’d get out of it if you do.

Next there’s the trademark granted. San Diego’s trademark is  for “Comic-Con” while Salt Lake uses “Comic Con.” It is a minor detail, but could be enough to distinguish the two uses in combination with the other context. If SDCC also claims the name without a hyphen, then they might also try to use other derivations including Comicon, which as we stated before was in use for a convention that proceeds SDCC by two years. Also, originally as filed, the term “Comic-Con” is a pretty narrow term to begin with, as it is not really unique . It is, at its heart, an abbreviation.

There’s also a chance that any decision if it were to go to court would grant the convention the use of the trademark in a geographic area, but not generally. Basically, San Diego to prevail would likely need to show actual damages from Salt Lake’s move. SDCC claims that SLCC promoted their show a the same time, both in person and online. Unfortunately for SDCC, so have many other conventions with the word “Comic-Con” in them. I’ve seen numerous online ads for instance during the same time period with that trademarked item included.

Salt Lake Comic Con has vowed they’re going to fight this, and they should, as from my understanding as well as the lawyer I consulted, San Diego’s claim is thin at best. But more importantly, this needs to be fought, because while SLCC might be the latest to be bullied, they won’t be the last.