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)
SAN DIEGO COMIC CON INTERNATIONAL (Registration #:3221808)
ANAHEIM COMIC-CON (Registration #:4425806)
SAN DIEGO COMIC CON INTERNATIONAL (Registration #:4835134)
SAN DIEGO COMIC CON INTERNATIONAL (Registration #:4835135)
SAN DIEGO COMIC CON INTERNATIONAL (Registration #:4835136)
COMIC-CON INTERNATIONAL PRESENTS WONDERCON ANAHEIM (Registration #:4854233)
LOS ANGELES COMIC-CON (Registration #:4856095)
COMIC-CON (Serial #:86482541)
SAN FRANCISCO COMIC-CON (Serial #:86482550)
COMIC-CON (Serial #:86482556)
COMIC-CON (Serial #:86482561)
SAN DIEGO COMIC CON INTERNATIONAL (Serial #:86484638)
COMIC-CON (Serial #:86485096)
LA COMIC-CON (Serial #:86774356)
COMIC-CON DEMAND (Serial #:86775699)
OFFICIAL COMIC CON AFFILIATE (Serial #:86805448)
SAN DIEGO COMIC CON INTERNATIONAL (Serial #:86937856)
COMIC-CON (Serial #:86937864)
COMIC CON (Serial #:86937870).
