Should San Diego Be Allowed To Trademark The Name Comic Con?

[Darth_Primus Guardian of the Universe Find all posts View Profile Close Darth_Primus]

I still can't fathom how they think they will win this case, since they have already failed in the past, and there are quite obviously many, many other existing conventions that use the term "Comic Con". I can't quite figure out why they think this is a smart use of their funds...

The article notes that if SDCC wins this case it will ultimately affect other conventions using the term "Comic Con."

Since I work in the world of litigating and protecting intellectual property, patents, trade secrets and trade marks, it very understandable why SDCC believes they have a case.

Now, prior to the creation of SDCC, there wasn't the term "Comic Con." So, if anyone said the comic con before the existence of SDCC no one would have a clue to the meaning of the term. As such, SDCC secured trademark rights to the term. So with that in mind, "Comic Con" is actually a brand name rather than a description of an event like the "Super Bowl" or a generic word like "concert."

To make a comparison, the term "coke" has been widely used as a generic term to mean soda. But in reality, "Coke" is a brand name. So, if a company in Utah decided to sell a soda and label it "Salt Lake City Coke" is would be infringing on the trademarked "Coke" brand. Another example is the brand name "jacuzzi" which is often used as a generic term for hot tub. A company wanting to sell it's product with the "Salt Lake City Jacuzzi" would be infringing upon the brand name trademark.

To simply put it, you have to think of "Comic Con" as a brand name (that SDCC created) not as a description of an event. Which newer conventions have noted in naming their conventions as a "fanfest" or something similar.

To me, it's obvious these smaller conventions are trying to capitalize on SDCC's brand name and reputation. I've looked at the complaint in this case and that's exactly was SDCC citing in their lawsuit. Noting that the merchandise and promo materials for Salt City Comic Con are using very similar logos to SDCC.

And if these smaller conventions put out an inferior product and create bad press, it's very likely to have a negative effect on SDCC and ruin their good name.

So, the lawsuit by SDCC is about protecting their brand name, maintain their right to exclusively use the term they created and to make sure that brand name is not water down by other conventions using it.

[Mister Ed Horse of a Different Color Find all posts View Profile Close Mister Ed]

Coke and Jacuzzi STARTED as brand names which became somewhat generic in general usage, but demonstrably were NOT generic in origin, and neither of them are literal descriptors of the items in question, but derive their meaning wholly from their origins as brand names. Comic Con is a term made up of two generic terms that predate their usage together, and which are both literally descriptive of the item they reference.

You say "you have to think of "Comic Con" as a brand name not as a description of an event", but you only "have to" do that if you are trying to side with SDCC. Thinking of it that way is not at ALL the natural thing to do, IMHO, given that it IS LITERALLY the description of the event, using generic terms. SDCC WANTS us to think of it as a brand name, but to my mind if that was their original intent, then they shouldn't have used a term that was so generically descriptive. To trademark a term like that isn't akin to trademarking "Coke", but more analogous to somebody attempting to trademark the term "carbonated beverage" AFTER both those words had established, generic, descriptive meanings.

You say it is "obvious" that the smaller conventions were trying to capitalize on SDCC's name and reputation. I don't find that obvious at all. Have they admitted as much? Frankly, even if they have (which I find unlikely) it doesn't seem like a very successful strategy to me, given how generically descriptive the term is.

If I see something referred to as "fill-in-the-blank Comic Con", I think it is a Comic Book Convention associated with whatever "fill-in-the-blank" is, be it a location or other organizing entity. I don't think of SDCC at all unless "San Deigo" is what fills in the blank.

[Mister Ed Horse of a Different Color Find all posts View Profile Close Mister Ed]

Here's an article that seems to sum up my view on the matter, and provide some examples. Their examples are specifically of attempts to trademark things following the pattern "generic, literally descriptive term".com, but the principle seems identical to me, given that "con" as a standard abbreviation of "convention" is just as generic as ".com".

http://www.mbbp.com/news/generic-trademark

[Mister Ed Horse of a Different Color Find all posts View Profile Close Mister Ed]

Ultimately, though, the thing I find most baffling is SDCC continuing to try to enforce a trademark that they DON'T legally possess, and have been specifically rejected from establishing in the past, especially when they have failed numerous times in previous attempts to enforce it. Not only is general legal precedent on attempts to trademark generic terms against them, but legal precedent specifically involving their attempts to enforce this one.

Even setting what I see as common sense aside, I cannot fathom why they think THIS attempt to enforce a trademark they don't actually own is more likely to succeed than all their other attempts that ended in failure.

It makes sense to me when companies repeatedly spend money successfully defending a trademark they DO own against infringement, because as I understand it that is necessary to maintain it. I just can't see why anybody would think it was a good use of funds to keep trying to "defend" a trademark that they legally do NOT own, despite repeatedly failing each time.

[Darth_Primus Guardian of the Universe Find all posts View Profile Close Darth_Primus]

That article points out that term "escalator" and "aspirin" were created to serve as marks but they were widely used and evolved into generic terms. And thus, the creators lost the ability to trademark the terms.

That's the underlying crux of this litigation, to prevent the term "Comic Con" from evolving to a generic term. Which, from your comments, is already the situation. And really that's the problem SDCC is facing; that "comic con" is being used as a generic term.

Moreover, you contention is that "comic con" is a generic term as the roots of the phrase are derived from generic words like "comic" and "convention." And that you should only consider "Comic Con" to be a brand name if you want to side with SDCC.

However, would term "comic con" be in existence without SDCC? Would term be understandable without SDCC?

My argument is not based on siding with SDCC, but rather inline with my occupation as noted above. If the term "Comic-Con" was truly a generic term than the could not have been registered as a trademark. Basically, I'm pointing out that "Comic-Con" is a registered trademark. That's a fact, not an opinion. And as a registered trademark, it should be considered a brand name like "Coke" or "Jacuzzi." And that's why I said you have to treat the "Comic-Con" as a brand name as it IS a registered trademark. Therefore, unlike the article you posted, the term "comic con" did not pre-exist like "hotel.com" or "mattress.com" so the facts are not exactly the same.

Comic convention is the equivalent of musical concert. So, if smaller or startup conventions wanted to name themselves "Salt Lake City Comic Convention" there are no legal or infringement issues. And using "Comic Convention" is just as descriptive, if not more than "Comic Con."

Now, I'm sure the Salt Lake City Comic Con will use your argument that "comic con" has become a generic term. And moreover, their convention name establishes a distinction from SDCC because the full name of their convention is "Salt Lake City Comic Con."

I'll be following the verdict of this case.

For the record, I'm not siding with SDCC per se, but rather siding on the legal right to protect intellectual property and trademarks granted by the government against infringement.

[Darth_Primus Guardian of the Universe Find all posts View Profile Close Darth_Primus]

Ultimately, though, the thing I find most baffling is SDCC continuing to try to enforce a trademark that they DON'T legally possess, and have been specifically rejected from establishing in the past, especially when they have failed numerous times in previous attempts to enforce it. Not only is general legal precedent on attempts to trademark generic terms against them, but legal precedent specifically involving their attempts to enforce this one.

Even setting what I see as common sense aside, I cannot fathom why they think THIS attempt to enforce a trademark they don't actually own is more likely to succeed than all their other attempts that ended in failure.

It makes sense to me when companies repeatedly spend money successfully defending a trademark they DO own against infringement, because as I understand it that is necessary to maintain it. I just can't see why anybody would think it was a good use of funds to keep trying to "defend" a trademark that they legally do NOT own, despite repeatedly failing each time.

I'm not sure where you getting the idea that SDCC doesn't legally own the "Comic-Con" trademark. Could you please provide the source of that information?


Here's an article that notes the that Court ruled against the founder of Salt Lake City Comic-Con's claim that the term "Comic-Con" being is a generic term before the creation of SDCC.


San Diego Comic Con succeeds on several motions in trademark infringement case against Salt Lake City Comic Con event organizers

Sept 24, 2017


The nonprofit organization presenting the event was incorporated in 1975. To protect its rights to the Comic-Con moniker, the San Diego entity registered a series of trademarks with the U.S. Patent and Trademark Office. These include U.S. Trademark Registration No. 3221808, which covers an illustration including eyes, shaded squares and the word mark “OFFICIAL COMIC CON AFFILIATE” for use in organizing and conducting conventions in the fields of animation, comic books and popular art. The San Diego Comic Convention also owns U.S. Trademark Registration No. 3219568, which covers the standard character mark “COMIC-CON” for use on video on-demand and audio-visual on-demand transmission services.

The recent order entered in the Southern California case denied Dan Farr Productions’ motion to exclude testimony from an expert witness testifying for plaintiff San Diego Comic Convention while also granting a motion by San Diego to deny an expert presented by Dan Farr. Dan Farr tried to argue that San Diego’s expert witness, which included the results of a Teflon survey on the generic nature of the term “Comic-Con”, as such evidence only matters in genericide cases and not where the trademark was generic prior to the owner’s use. However, the defendant’s own pleading in the counterclaim, where it asserted a defense of generic mark, and the court found the evidence to be relevant to the case.

For its part, San Diego moved that the testimony of a linguistics expert on the generic nature of the “comic con” term should be excluded, and San Diego won that motion. The report completed by this expert included several arguments in favor of the defendants including ongoing discussions of the term online, non-capitalization of “comic con” in some instances and the ubiquitous use of the term by 102 similar conventions. The court found that this expert’s testimony wasn’t relevant in light of the fact that Dan Farr’s motion to exclude San Diego’s expert argued that the term was generic before the first use in 1970.

The defendants also lost on a motion for summary judgment for genericness and abandonment, an argument with which the Southern California court took exception.

...


Further, the court noted that the Ninth District has not recognized an ab initio theory of defense in such matters. “For Defendants’ benefit, the Court highlights that even if it were to entertain a generic ab initio argument, the evidence produced by Defendants would fail to satisfy their burden.” Dan Farr argued that semantics information from the Oxford English Dictionary (OED) and books published before the first San Diego Comic Con in 1970 demonstrated the generic nature of the mark but the court rejected breaking down the “Comic-Con” mark into individual parts and noted that the 2002 OED entry for “con” was a new entry. As to Dan Farr’s genericide argument, the court denied San Diego’s motion for summary judgment against this defense in part because “evidence of over 100 competitors using the unhyphenated form of Plaintiff’s trademark” which strongly suggested that the mark was generic. However, the defendant’s motion for summary judgment on genericide was also denied because the results of the Teflon survey provided enough evidence that consumers believed that the term “Comic-Con” was a brand name and not generic.

As noted above, the case is whether or not the term "comic con" is considered a brand name or a generic term by the public as the court ruled against the notion "con" was a genetic term prior to the creation of SDCC in the 1970s as it cited the "con" term wasn't entered into the dictionary until 2002.

[Mister Ed Horse of a Different Color Find all posts View Profile Close Mister Ed]

They own the "Comic-Con" trademark, but according to the original article, they added the dash in the middle because they had specifically FAILED to trademark the term "Comic Con" without the dash.

[Mister Ed Horse of a Different Color Find all posts View Profile Close Mister Ed]

The grammar in that article is atrocious, by the way. To the point that some of the sentences are totally indecipherable.

"Dan Farr tried to argue that San Diego’s expert witness, which included the results of a Teflon survey on the generic nature of the term “Comic-Con”, as such evidence only matters in genericide cases and not where the trademark was generic prior to the owner’s use."

That is not a complete sentence. Neither is the following:

"However, the defendant’s own pleading in the counterclaim, where it asserted a defense of generic mark, and the court found the evidence to be relevant to the case."

Both seem to be missing a chunk in the middle that would make the meaning clear (and the grammar correct).

[Mister Ed Horse of a Different Color Find all posts View Profile Close Mister Ed]

Is Salt Lake using "Comic-Con" with the dash? If so, that would go a long way to explaining why SDCC thought they had a case HERE, even though they have failed in all previous attempts (unless I missed a story) at enforcing trademark against other Comic Cons.

[Mister Ed Horse of a Different Color Find all posts View Profile Close Mister Ed]

Further research makes me suspect that the reason why SDCC is taking this case so far is that SLCC seems to be making the claim that even the trademark on "Comic-Con" should be invalid. If SLCC prevails, not only would they maintain the right to the name they are using, but would possibly void SDCC's trademark on the hyphenated term.

If that DOES happen, I will laugh, since SDCC would then be responsible for causing their own trademark to be voided by pushing this suit in the first place.

[Darth_Primus Guardian of the Universe Find all posts View Profile Close Darth_Primus]

You say it is "obvious" that the smaller conventions were trying to capitalize on SDCC's name and reputation. I don't find that obvious at all. Have they admitted as much? Frankly, even if they have (which I find unlikely) it doesn't seem like a very successful strategy to me, given how generically descriptive the term is.

Straight from the horses mouth.

Here's a link to the complaint filed by SDCC, and on page 9 there's a citation to an article from a website (that's no longer valid) quoting the following:

http://www.ipwatchdog.com/wp-content...-complaint.pdf

Unlike a lot of the show segment, Brandenburg and Farr knew they were starting with an advantage from a branding perspective.

"We knew that the term 'comic con' is kind of like a Xerox, it's a generic band," Brandenburg says. "All it means is comic convention, but we knew that there was brand equity associated with the phrase that we could capitalize on, being the only comic con in our market."

The core audience would be served by leveraging the name and experience associated with other giant comic cons, including the industry's mega show, Comic Con International, but Brandenburg wanted to cast a wider net.

They own the "Comic-Con" trademark, but according to the original article, they added the dash in the middle because they had specifically FAILED to trademark the term "Comic Con" without the dash.

I see where you're coming. Mostly every claim in that article is by SLCC, without any real legal citations to support those claims.

The grammar in that article is atrocious, by the way. To the point that some of the sentences are totally indecipherable.

"Dan Farr tried to argue that San Diego’s expert witness, which included the results of a Teflon survey on the generic nature of the term “Comic-Con”, as such evidence only matters in genericide cases and not where the trademark was generic prior to the owner’s use."


That is not a complete sentence. Neither is the following:

"However, the defendant’s own pleading in the counterclaim, where it asserted a defense of generic mark, and the court found the evidence to be relevant to the case."

Both seem to be missing a chunk in the middle that would make the meaning clear (and the grammar correct).

Now, I understand the legal language is difficult to comprehend as it's very technical and I still have trouble with it now and then.

In layman terms, SLCC said that SDCC expert testimony (evidence) is not relevant because it only applies to situations where a trademark term (like aspirin) becomes a generic term and not in situations where was the term was generic before it was attempted to be trademark (i.e. hotels.com).

In short, SLCC was trying to block evidence submitted by SDCC to support that "Comic Con" (without the hyphen) is a brand name.

And SLCC argued against itself, and the court ruled against them because their were arguing out of both sides of their mouth; that "comic con" was a generic term before the creation of SDCC and that the trademark term has evolved into a generic term.

Is Salt Lake using "Comic-Con" with the dash? If so, that would go a long way to explaining why SDCC thought they had a case HERE, even though they have failed in all previous attempts (unless I missed a story) at enforcing trademark against other Comic Cons.

SDCC also owns the trademark of "Comic Con International" which has no hyphen noted on page 5 of the complain in the link above.

Based on my research, SDCC has not sued any other conventions. SLCC probably was sued because they made public comments about capitalizing on the SDCC brand name and intentionally, misrepresenting themselves to attract more attendees.

Further research makes me suspect that the reason why SDCC is taking this case so far is that SLCC seems to be making the claim that even the trademark on "Comic-Con" should be invalid. If SLCC prevails, not only would they maintain the right to the name they are using, but would possibly void SDCC's trademark on the hyphenated term.

If that DOES happen, I will laugh, since SDCC would then be responsible for causing their own trademark to be voided by pushing this suit in the first place.

Well, "Comic-Con" would still be a registered trademark, which no other convention could use, but ultimately, yes the term "comic con" would be considered a generic term like "aspirin."

You may laugh at SDCC, but I find it unethical for SLCC openly say their were going to cash in on SDCC's brand name. And I hope they're not rewarded for that.

[Mister Ed Horse of a Different Color Find all posts View Profile Close Mister Ed]

So it sounds like SLCC DID do a few things that were questionable. (I think the worst, to my mind, was probably sending a vehicle to SDCC to advertise their event, because that DOES seem calculated to cause at least SOME confusion about an association between the two).

Still, I would hope that any ruling against SLCC would be narrow, and focus on specific actions that they took, because the idea of enforcing trademark on a generic, descriptive term that they were not the first to use, and which is widely used across the nation and has been for years (the fact that they have not sued other conventions, if true, SHOULD actually work AGAINST SDCC), still seems ludicrous to me.

I cannot believe that there is actually a large enough class of people that both know about SDCC at all AND are somehow unaware that there are tons of Comic Cons that are not affiliated with SDCC to make the sort of "confusion" that SDCC is claiming all that likely (at least not based solely on the use of the term Comic Con. It seems like SLCC may have taken actions beyond simply using the term that would make such confusion more likely in that case). I guess I could just be projecting, but you are literally the first person I've ever met that doesn't seem to think that comic con is a generic term.

[Darth_Primus Guardian of the Universe Find all posts View Profile Close Darth_Primus]

Obviously, we don't inter act with the same group of people. When I tell people that I'm going to Comic Con or some one is telling they're going to Comic Con, both they and I naturally assume it's SDCC. SDCC is the first comic book convention I ever recall recognizing as I remember it being advertised in the comic books I've read. Other than NYCC in relative current history, I don't recall other comic conventions advertising in comic books. And importantly, trying to pass themselves off as being associated with SDCC. Moreover, when media outlets like the LA Times, Entertainment Weekly, Access Hollywood, etc cover the SDCC event they refer to it as "Comic-Con."

Again, it's a fact that SDCC owns the registered trademark of "Comic Con International" (no hyphen) and "Comic-Con." It's a brand name.

Here's an excerpt from this article from BleedingCool that, not only I, but the founders of Rose City Comic Con recognize "Comic Con" as a brand name:

Rose City Comic Con stating that “Rose City Comic Con, Portland, Oregon’s largest comics and pop-culture convention, is proud to announce its association with San Diego Comic Convention for its three-day event taking place September 7-9, 2018 at the Oregon Convention Center. Rose City Comic Con received the license at no additional cost to the show, and acknowledges the trademark owned by San Diego Comic Convention and is excited to affiliate itself with the prestigious event.”

“Comic-Con, the San Diego convention, is without question the biggest and most important event in the comics and popular arts industry every year. To have the respected event recognize the hard work of Rose City Comic Con by providing a license agreement is really remarkable for the city of Portland and the incredible community of creators we’re lucky to have here,” said Rose City Comic Con founder Ron Brister.

And as I posted earlier, the founders of SLCC also recognized "Comic Con" to be a brand name and wanted to capitalize on it. In this article from Bleeding Cool a few days ago, exposes a 2013 email from the founders of SLCC acknowledging "Comic Con" is brand name that carries cache and their intention to exploit that acknowledgement:

2013 e-mail from the organisers of Salt Lake, Dan Farr and Bryan Brandenburg, appearing to trade on the San Diego mark, saying:

I wanted to follow up to discuss our opportunity this week to leverage the
San Diego Comic Con to help people relate more to our event.

—
I just feel the more we can leverage San Diego to boost our brand here the
better.

—-

It may be a good time to get us on the news again to discuss the show so they associate us with San Diego.

The article further points out that SDCC presented this statement as some sort of smoking gun that SLCC knowing and intentionally infringe on the Comic-Con brand name:

Defendants (SLCC) further spoke freely and openly of their plan to “hijack” the SDCC brand as they ventured onto the comic convention scene, a brand that was created through SDCC’s decades-long use of and investment in its COMIC-CON marks. Mr. Brandenburg went so far as to admit that “hijacking the Comic Con brand” was part of Defendants’ “magic formula.” According to Mr. Brandenburg, the word hijack means “taking something and using it for your own purposes.”

As you noted above, SLCC intentionally created confusion with their advertising vehicle in 2014 which effected the brand name "Comic-Con" in a negative way to which consumers contacted SDCC demanding a refund, which SDCC's attorneys pointed out:

Further instances of confusion manifested during and after Defendants’ Salt Lake Comic Con convention held in September 2014. SDCC received several phone calls from persons who attended (or attempted to attend) Defendants’ convention complaining about their abysmal experience. (Id.) SDCC also received numerous emails from disenchanted patrons complaining about Defendants’ convention and asking for refunds. One consumer urged SDCC to “do everything you can have to have Salt Lake Comic Con separate themselves and their version of business from yours. I bought tickets believing it was the original, as did many others.” Another chastised SDCC because “I waited in your Salt Lake comic con line for almost 3 hours tonight, and never even got in the door! What the Hell!! I sent messages to your Salt Lake City personnel and it appears as if nobody here cares!” Yet others asked SDCC for a refund due to their poor experience at the Salt Lake Comic Con convention.”

So, again, I'm not the only that recognizes the term "Comic Con" to be a brand name.

And I as posted on the previous page, SLCC's poor product reflected negatively on SDCC. And the paragraph above shows that several paying consumers were upset by this confusion and at least one of the urged SDCC to "do everything you can have to have Salt Lake Comic Con separate themselves and their version of business from yours," as "I bought tickets believing it was the original."

And that's one of the issues that SDCC is trying to clear up with the paying consumers with this lawsuit. Which is why I posted previously that SLCC probably wouldn't haven't been sued if they did not openly/publicly say they wanted to exploit the "Comic Con" term by "hijacking the Comic Con brand" for their own benefit.

Mister Ed, I'm not trying to persuade you to side with SDCC in this litigation, but I do hope this information helps you fathom why SDCC is fighting to protect their brand name and prevent confusion among consumers.

[Darth_Primus Guardian of the Universe Find all posts View Profile Close Darth_Primus]

As I mentioned previously, the Court has already rejected SLCC's claim that the term "comic con" was a generic term before SDCC owned the trademarks of "Comic Con International" and "Comic-Con;" citing the word "con" (in this context) wasn't entered into a certain respected dictionary until 2002.

So, the crux of the case is whether or not "Comic Con" has evolved into a generic term like "aspirin" (which is noted as "genercide" in the court papers (i.e. pleadings, court orders)) or if it's a recognized brand name by the consumers. Both SLCC and SDCC have presented evidence to support by sides of the argument.

I believe that if the court rules against SDCC, at the very least, that the it will also rule that SLCC and other comic conventions using the term "comic con" in their name must provide a caveat to the general public that they are not affiliated or associated with SDCC.

[Mister Ed Horse of a Different Color Find all posts View Profile Close Mister Ed]

I have a better idea why they are fighting, but I still reject the notion that a generic descriptive term should have any protection as a "brand name".

I think that there IS evidence that SLCC was intentionally trying to misrepresent themselves as associated with SDCC, and that sounds like some kind of fraud to me, but I reject the notion that the mere use of the term "Comic Con" should be problematic legally on its own.

The situation with Rose City Comic Con is meaningless as evidence of "Comic Con" alone having brand name status, IMHO. Rose City Comic Con has used the term since 2012 without seeking any kind of permission or recognition from SDCC. Their current relationship seems to me to be something that was initiated by SDCC, and accepted by Rose City Comic Con less because they actually feel like SDCC has an exclusive legal right to the term, and more because they feel like being linked to SDCC specifically is good for business. The cynic in me says SDCC made this move solely to try to bolster their ongoing case by using their clout to entice other long-term users of the term to make some kind of acknowledgement after the fact in return for being publicly linked to SDCC. Frankly, it argues the opposite for me. If the mere use of the term "Comic Con" creates an unavoidable link to SDCC in the minds of the public, then there would be no reason for those Cons that have been using it for years to value SDCC offering them such an "official" link. By making this agreement, they are, in effect, saying that merely using the term did NOT link them to SDCC all these years.