In case you missed
it, last week a jury found Comic-Con to be a valid, enforceable trademark. The jury ruled
Salt Lake Comic Con (SLCC) infringed upon the Comic-Con trademark owned by
Comic-Con International (CCI), the company behind San Diego Comic-Con, and
it awarded CCI a judgment of $20,000, far less than the $12,000,000 it was
seeking. For a great recap of some of the background and issues underlying the dispute,
check out this Forbes article by Rob Salkowitz .
The two
conventions have been litigating the issue since 2014, and this decision has
implications for the broader comic book convention circuit. There are numerous
comic book conventions around the country, and many of them use the phrase “comic
con” in their name and branding. After this decision, many of these companies will
need to re-evaluate their brand and determine if they need to change their name,
change their marketing practices, or seek a license from CCI to use the phrase.
While SLCC has
vowed to appeal the decision, recent reports suggest they are also looking at
re-branding their convention.[1] The
validity of the Comic-Con trademark is also being challenged with the United States
Patent and Trademark Office (USPTO). Both routes are an uphill battle.
On appeal, the
issues being appealed and the standard of review the court applies will likely
determine the outcome. In order for SLCC to have a shot at winning on appeal, it
will have to convince the 9th Circuit to review the case de novo, meaning the 9th
Circuit will essentially rehear the case.[2] If
SLCC can show there is a question of law or a mixed question of law and fact
still at issue, then the 9th Circuit would use this standard of
review. If, however, the court applies another standard of review, such as clearly
erroneous, abuse of discretion, or substantial evidence, then the outcome
favors SDCC. These standards are deferential to the lower courts findings, and
it will be hard for SLCC to overturn the lower court’s ruling.
SLCC is also
facing a tough battle in their proceeding to cancel the Comic-Con trademark with
the Trademark Trial and Appeals Board (TTAB). CCI’s main Comic-Con trademark
was registered in 2007. In 2012, CCI filed for incontestability, which means
the mark had not been challenged during the previous 5 years, and it limits the
ways a trademark can be invalidated. Now, the only way for SLCC to invalidate
the mark would be to show it has become generic, which now may be impossible to
do as a result of the jury decision, or by showing CCI committed fraud upon the
USPTO when registering the trademark. The latter approach is the one being
taken by SLCC, but the proceeding was suspended pending the outcome of the trial.
Again, this is an uphill battle for SLCC, but if they can convince the TTAB the
statements made by CCI to obtain registration were fraudulently made, then they
have a shot.
Personally, I’m a
little surprised by the decision. When it was registered, the USPTO found the “Comic-Con”
mark to be merely descriptive because it describes comic conventions, but the
mark was granted registration due to it acquiring secondary meaning. Merely
descriptive marks describe the goods and services being offered and are usually
afforded weak protection. Perhaps that is one factor explaining the low
monetary award? Even though Comic-Con, and even Comic Con, are riskier phrases
for convention organizers to use, it’s hard to imagine organizers being
prevented from using the words comic book convention or comic convention to
describe their events going forward.
As I said near the
beginning, if you use the phrase “comic con” in your event title, you will need
to re-evaluate your brand strategy. Honestly, it’s not the worst thing to do
anyways. At best the comic con phrase is merely descriptive of the services
being offered. You’ll be doing yourself a favor if you can come up with a unique
brand name. It’ll be easier to trademark too, but that’s a discussion for next
time.
[1] https://icv2.com/articles/news/view/39144/salt-lake-comic-con-organizers-will-appeal
[2] http://cdn.ca9.uscourts.gov/datastore/uploads/guides/stand_of_review/I_Definitions.html#_Toc199130796
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