Salt Lake Comic Con claims trademark win; SDCC: “Not so fast.”

The ongoing legal battle over the trademark of the term “comic-con” between The San Diego Comic-Con (or to give it it’s official name: Comic-Con International: San Diego) and the Salt Lake Comic Con flared up a bit yesterday when the SLC group claimed a win by being granted a trademark:

In a decision announced Thursday morning, the United States Patent and Trademark Office granted organizers in Salt Lake the trademark for the name “Salt Lake Comic Con”. The trademark (Reg. No. 4,774,453 Serial # 86-353,123) was issued on July 14, 2015 and is for: “Education and entertainment services, namely, organizing, producing, and conducting conventions in the fields of gaming, comics, television, movies, technology, science fiction, fantasy, and popular culture for entertainment purposes.”

Which when I read it, I though, hm, they just registered it. And sure enough a little bit later, an official statement from the CCI folks in San Diego came out:

“We were less surprised by the registration than we were of the organizers’ take on it,” commented David Glanzer, spokesperson for Comic-Con International. “As there is no opposition process for a Supplemental Registration we of course were not able oppose it, however we are engaging this matter as part of the normal course of protecting our already granted and incontestable trademarks.”

A clearer understanding of Supplemental Registration might be found at the website for the International Trademark Association (INTA) wherein it states:

“A registration on the Supplemental Register does not provide all the protection of a registration on the Principal Register. For example, a Supplemental Registration does not convey the presumptions of validity, ownership and exclusive rights to use the mark that arise with a registration on the Principal Register. In addition, a Supplemental Registration cannot be used to prevent the importation of infringing or counterfeit products. Finally, a Supplemental Registration can never become incontestable.”

Peter Hahn of Pillsbury Winthrop Shaw Pittman, legal counsel for San Diego Comic Convention, weighed in on the matter by stating, “The issuance of a Supplemental Register Registration has no effect on San Diego Comic Convention’s exclusive rights afforded by its Principle Register Registrations for various marks including the mark ‘Comic-Con.’ Contrary to Dan Farr Production’s statement, the Supplemental Registration will have no effect on the on-going infringement litigation in San Diego. San Diego Comic Convention will continue to protect its incontestable rights in the Comic-Con mark until Dan Farr Productions discontinues infringement of the Comic-Con mark—even if that means having the Court force Dan Farr Productions to comply with the law.”

So to back up a bit, the term “Comic-Con” (with hyphen) is indeed trademarked by CCI. SLC has been using the term, and did some other things—like loudly promoting their show outside last year’s SDCC—which irked CCI and so CCI first issued a restraining order, and then sued them for trademark infringement. There were talks for a while, but then they broke down earlier this year and the matter seems headed to court. The SLCC folks, led by showrunner Dan Farr, have been aggressively promoting their side of the story on a website and in the media.

Salt Lake Comic Con claims to be the third largest in the country, with 120,000 attending the last one—a number I questioned*, but which the show’s marketing director explained to me in greater depth. Anyway, a lot of people go. This year’s show takes place September 24-26, 2015 at the Salt Palace Convention Center, and Chris Evans will be there taking off his shirt signing autographs at a show for the first time.

As for the ongoing lawsuit, today’s registration has nothing to do with that. With many shows using variations of “comic con” in their titles, it should be a interesting trial and decision.

* BTW, all this fol-de-rol about how guests are counted (even YOU Angoulême???), and the endless contenders for “third biggest con in the US!” is why I will never update this chart.