Friday, December 15, 2017

Comic-Con Trademark - Part 2

            I previously wrote a little about the Comic-Con trademark dispute here. In this post, I’d like to look at the history of the Comic-Con trademark and why it is a protectable mark.
A quick search of the United States Patent and Trademark Office (USPTO) database shows 79 entries using the phrase comic con, of which 59 are still active. At least 21 of those registrations belong to Comic Con International (CCI). You can find a list of the CCI trademarks at the end of the article.
            First, in order to register a trademark or service mark – for brevity, I’m just going to use trademark to refer to both – with the USPTO, the trademark must be used in interstate commerce, and it must not be confusingly similar to another registered mark. Additionally, there are four types of marks with varying degrees of strength of protection: fanciful or arbitrary, suggestive, merely descriptive, and generic.
Fanciful and arbitrary trademarks are the strongest trademarks. Fanciful marks are invented words used as a trademark, such as Pepsi, and arbitrary marks are common words used in a unique way, such as Apple for computers. Suggestive marks are also considered strong trademarks, and they suggest something about the product, but do not explicitly describe the product or service. An example of a suggestive mark would be Speedi Bake for frozen dough; it suggests an attribute of the product but does not describe the product. Merely descriptive marks describe the goods or services being offered. They are considered to have weak protection and cannot be registered unless they have acquired secondary meaning. A generic mark is when the ordinary, everyday name of a good or service is used as a trademark. Generic marks cannot be registered with the USPTO.   
In 1990, Comic-Con International (CCI) filed an application to register a “San Diego Comic Con” trademark as a logo featuring an image of a toucan and the words previously mentioned. It was registered in 1992, but later abandoned in 2016 for failure to file a renewal. CCI’s first attempt to register “Comic Con” as a trademark was in 1995. Eventually, the application was abandoned after it was challenged by Chicago Comicon. “Comic Con International” was registered as a trademark in 1999.
            As you can see, CCI has been working to secure their trademark portfolio for a while. In 2005, it filed an application to register “Comic-Con” as a trademark. This application was initially rejected because the examiner found the trademark to be merely descriptive of the goods and services being offered. A merely descriptive trademark is not eligible to be registered on the Principal Register, which entitles it to the fullest trademark protection possible, unless it has acquired secondary meaning. CCI petitioned the trademark office to register the mark because it had acquired secondary meaning. As evidence, it pointed to the fact Comic-Con had revenues in excess of $22 million between 2001 and 2006, it had spent $11 million in advertising over the same period, and attracted more than 100,000 visitors in 2005. CCI also claimed exclusive use of the trademark. Based on this evidence, the USPTO found “Comic-Con” had acquired secondary meaning and allowed the registration to issue in 2007. CCI also filed its statement of use and incontestability in 2012, which further strengthened the “Comic-Con” mark. Because it has acquired incontestability status, the “Comic-Con” trademark can only be invalidated on a few specific grounds going forward, such as the mark becoming generic or if there was a fraud committed upon the USPTO.
            It was this trademark CCI relied upon in its lawsuit against Salt Lake Comic Con, and it’s this mark and other related marks CCI has used to thwart other conventions’ attempts to register trademarks with comic con in the name, with Denver Comic Con, Wizard World Comic Con Box, and Wizard World Comic Con TV being notable examples.  
            Undeniably, CCI has managed to build a massive brand around Comic-Con, and they have taken the appropriate steps along the way to protect the brand. As evidenced when it was being registered, the Comic-Con mark is merely descriptive and not entitled to strong trademark protection. However, CCI has spent the time and money building it as a brand, and the recent victory against SLCC shows they have been successful.

The list of registered trademarks and applications belonging to CCI includes the following: COMIC CON INTERNATIONAL (Registration #:2218236)
COMIC-CON (Registration #:3219568)
ANAHEIM COMIC-CON (Registration #:4425806)
LOS ANGELES COMIC-CON (Registration #:4856095)
COMIC-CON (Serial #:86482541)
SAN FRANCISCO COMIC-CON (Serial #:86482550)
COMIC-CON (Serial #:86482556)
COMIC-CON (Serial #:86482561)
COMIC-CON (Serial #:86485096)
LA COMIC-CON (Serial #:86774356)
COMIC-CON DEMAND (Serial #:86775699)
COMIC-CON (Serial #:86937864)
COMIC CON (Serial #:86937870). 

Thursday, December 14, 2017

The Comic-Con Trademark - Part 1

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.