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). 

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