WASHINGTON (Legal Newsline) - The U.S. Patent and Trademark Office has granted organizers of the Salt Lake Comic Con the trademark for the name, almost a year after San Diego Comic-Con -- the epic annual comic convention -- sent a cease and desist order.
According to the Utah convention, the trademark was issued July 14 to Dan Farr Productions -- which produces the Salt Lake Comic Con events -- and specifies that no claim is made to the exclusive right to use “comic con” apart from the mark as shown.
“The United States Patent and Trademark Office had already ruled that ‘comic con’ was ‘nondescript’ and now they have granted us a trademark for ‘Salt Lake Comic Con.’ We’re confident that this decision from the U.S. PTO will virtually eliminate this ongoing legal battle and allow us to prepare for another record-breaking show this September,” said Bryan Brandenburg, Salt Lake Comic Con co-founder and chief marketing officer.
“By granting us a trademark for ‘Salt Lake Comic Con,’ the trademark office is literally declaring our right to not only use comic con in our name, but that we are distinguished in the marketplace. It further declares that San Diego’s trademarked name is not ‘confusingly similar’ to our trademarked name, which is the nexus of the lawsuit.”
Last year, the San Diego Comic-Con demanded that the Salt Lake Comic Con stop using the term “comic con.”
In its cease and desist letter, representatives for the San Diego convention ordered the Salt Lake Comic Con to “immediately discontinue all use of ‘Comic Con,’ ‘Comic-Con,’ ‘Comiccon’ or any other confusingly similar variation of the Comic Con marks in connection with convention services.”
The Salt Lake event organizers have argued they are being singled out because of their “record-setting success.”
The cease and desist letter set off a lawsuit and countersuit that still looks to be headed to trial. According to the case docket for San Diego Comic Convention v. Dan Farr Productions et al, a telephone case management conference is set for Aug. 14 before Magistrate Judge Jan M. Adler.
The lawsuit was filed in the U.S. District Court for the Southern District of California in August 2014. It has been assigned to Judge Anthony J. Battaglia.
“We were confident naming ourselves Salt Lake Comic Con was appropriate based on the precedent of so many other groups before us and our legal advice before we began its use,” said Dan Farr, the founder of the Salt Lake convention and show producer.
“We held our ground on this not only for our own benefit but for all of the other groups who may not have been able to defend themselves.”
Peter Hahn, an attorney with the San Diego office of Pillsbury Winthrop Shaw Pittman LLP, which is representing San Diego Comic-Con in the federal lawsuit, said in a statement the trademark award has no bearing on the suit.
“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,” Hahn said.
Salt Lake Comic Con is represented in the lawsuit by IP law firm Maschoff Brennan.
Its 2015 convention is set for Sept. 24-26 at the Salt Palace Convention Center in downtown Salt Lake City.
From Legal Newsline: Reach Jessica Karmasek by email at patents@legalnewsline.com.