Boston, Rhode Island And Kansas Comic Cons Enter Trademark Battle

Posted by July 27, 2015 Comment

b5e71150-137f-489c-bdd4-7f106fd88ab7This week sees the kick-off of this year’s Boston Comic Con. Which seems a good a time as any to register the trademark for the name for “Organizing and conducting conventions, exhibitions, and gatherings for entertainment purposes and in the fields of artwork, animation, comic books, fantasy, gaming, popular culture, science fiction, and television and film” and for “Comic books, commemorative comic books, posters, commemorative posters” and “T-shirts, commemorative T-shirts.”

They can expect a challenge from Comic-Con International, the organisers of San Diego Comic-Con and WonderCon, who own the trademarks on San Diego Comic-Con, Anaheim Comic-Con, San Francisco Comic-Con and Los Angeles Comic-Con.

They are not alone. Rhode Island Comic Con and Kansas Comic Con have also launched trademark bids in the past month. ‘Tis the season… they may be inspired by the attempts and claims of Salt Lake Comic Con. Denver Comic Con also has a trademark registration.

But despite Salt Lake Comic Con’s claims, no one has won the full trademark rights yet. Grand Rapids Comic Con have abandoned their registration after the trademark office told them,

In the case of COMIC-CON, applicant has merely added geographically descriptive wording to a registered trademark.  Adding a term to a registered mark generally does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL and BENGAL LANCER and design confusingly similar); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and MACHO COMBOS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part.

Applicant’s mark is also highly similar to the remaining cited marks.  All consist of the word “COMIC-CON” combined with descriptive wording or wording that identifies a geographic location.  As such, consumers are likely to associate GRAND RAPIDS COMIC-CON with the COMIC-CON line of services and events provided by the San Diego Comic Convention.

Trademark registration, and challenges to it can take considerable time, often many months between moves. This won’t be sorted by Boston Comic Con 2015… but maybe 2016? Or 2017?

(Last Updated July 27, 2015 6:30 pm )