Is Close Enough Good Enough?: “Comic Con” vs. “Comic-Con”
Today comic conventions are large, multi-day events that fans buy tickets a year in advance for. The comic conventions of 2014 have come a long way from the one-day event, which included only two guest stars, that was held in San Diego on March 21, 1970. From those humble beginnings, the San Diego Comic Convention has grown into a four-day event, offering attendees the opportunity to meet numerous celebrities and attend exclusive panels.
As the San Diego Comic Convention grew, other cities and countries began to hold their own comic conventions, or comic cons. The sheer number and popularity of comic conventions have lead to them being well known in popular culture, usually branded with the phrase “Comic Con.” While many groups use the phrase “Comic Con,” the San Diego Comic Convention isn’t so keen on the phrase’s rise. On August 8, 2014, SDCC filed a lawsuit against Salt Lake Comic Con for trademark infringement and false designation of origin.
Of course, trademark owners have the right to stop others from using their exact marks or marks that are confusingly similar, but that all depends on how the similar mark is used, specifically whether the mark is being used for competing goods or services, on related goods, or in a manner that might confuse customers.
The San Diego Comic Convention alleges that the Salt Lake Comic Con produces the sort of conventions SDCC produces under its registered trademarks—Comic-Con, Comic Con International, Anaheim Comic-Con, and San Diego Comic Con International—and that SLCC’s use of “Comic Con” is intended to lead customers to believe the two conventions are affiliated. Though SDCC previously attempted to trademark “Comic Con,” they ended up abandoning their efforts in 1999. So they must instead show that SLCC’s use of “Comic Con” is similar enough to “Comic-Con” to constitute infringement. The answer to the question of whether close enough is good enough comes down to how likely it is that Salt Lake’s use of “Comic Con” will cause attendees to believe that they are affiliated with the San Diego Comic Convention
In response, SLCC is attempting to trademark “Salt Lake Comic Con”:
“Our position is that the phrases ‘comic con,’ ‘comicon’ and even ‘comic-con’ are generic and are abbreviations for the term “comic convention.” This has been a common expression since 1964, six years before San Diego Comic-Con even existed. When used with another set of words such as ‘Salt Lake,’ ‘Big Apple,’ ‘Chicago’ or ‘New York,’ they become a name that has protection and exclusivity.”
The Salt Lake Comic Con’s stated position is grounded in 15 U.S. Code § 1115, which provides a safe harbor against infringement where “…a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic region.”
So why sue the Salt Lake Comic Con for trademark violation when so many other conventions use the phrase “Comic Con”? It’s probably a mixture of the similarities between the two conventions and the fact that SLCC held their first annual convention in September of 2013, well after SDCC filed its trademark in 2005. SLCC also advertised their convention outside of this year’s San Diego convention and has quickly become the nation’s third largest comic convention. Still, SDCC’s potential enforcement should be a concern for current and potential comic conventions, as they would almost certainly be considered to be infringing on the same grounds. The newly minted Indianapolis Comic Con, for example, may need to change its name before fully establishing itself. And though larger conventions like the New York Comic Convention, which surpassed the San Diego Comic Convention’s attendance this year, may have more resources, it would probably fail to the same arguments applied against SLCC.
Still, SDCC has a tough case to make. While SLCC’s advertising makes the case more interesting, SDCC already abandoned the “Comic Con” mark partly based on opposition. And convention attendees tend to be rather aware of the distinctions between conventions due to the heavy investment usually involved. With the amount of planning that goes into everything from costumes to hotels, it’s hard to believe that there is a high probability that these individuals would be confused between America’s most well-known and oldest comic convention and a convention in another state that began only two years ago.
Latore Price is a J.D. candidate, ’16, at the NYU School of Law.