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Salt Lake, San Diego comic cons seek ruling on trademark lawsuit

FILE - Dan Farr, Producer and Founder of Salt Lake Comic Con, speaks at the Salt Lake Comic Con 2017 Press Conference at the Utah State Capitol on Wednesday, May 17, 2017. A trademark battle between the San Diego and Salt Lake Comic Cons has come down to
FILE - Dan Farr, Producer and Founder of Salt Lake Comic Con, speaks at the Salt Lake Comic Con 2017 Press Conference at the Utah State Capitol on Wednesday, May 17, 2017. A trademark battle between the San Diego and Salt Lake Comic Cons has come down to a showdown of court filings as both sides have petitioned a judge to make a decision in the case.
Laura Seitz, Deseret News

SALT LAKE CITY — A trademark battle between the San Diego and Salt Lake comic and pop culture conventions has come down to a showdown of court filings as both sides have petitioned a judge to make a decision in the case.

The dueling conventions each have submitted motions requesting a judge decide whether Utah's event is violating trademark by calling itself a "comic con." The motions came down as a federal judge in San Diego canceled a final conference after settlement talks broke down last week and as the case advances toward trial.

San Diego Comic-Con claims its trademark is incontestable, calling Salt Lake Comic Con's defense unproven and arguing that the competing convention's counterclaim should be tossed out.

But Salt Lake Comic Con is calling on the court to not only dismiss San Diego's lawsuit against the Utah event, but to terminate its existing trademarks, alleging the organization fraudulently claimed in 2006 it had had "exclusive" use of the term for years, despite knowing many third parties had long been using variations of the name, according to court filings.

The San Diego event, which has been held annually since 1970, holds a trademark on its own name and the term "comic-con" with a hyphen. Salt Lake Comic Con, established in 2013, maintains it has full right to call itself a "comic con," without a hyphen, a term it says was widely used even before the San Diego event abandoned its bid to trademark it more than 20 years ago.

In the lawsuit, filed after Salt Lake Comic Con founders Dan Farr and Bryan Brandenburg drove their branded Audi to the competing event in July 2014, the longstanding San Diego Comic-Con claims Salt Lake's young event deliberately chose its name to piggyback on San Diego's success.

"Defendants engaged in an aggressive campaign to trade off of the reputation, goodwill and brand value associated with the COMIC-CON marks. Such actions continue to this day," the motion by San Diego Comic-Con states, going on to call Salt Lake's use of the term "flagrant" and "egregious."

San Diego asserts in its motion that Salt Lake Comic Con cannot prove the term is generic, going on to cite evidence it has received customer service calls regarding Salt Lake's event out of confusion over the similar names.

According to San Diego's motion, a survey conducted by one of the organization's expert witnesses found "over 82 percent of the survey participants understand that 'Comic-Con' is a brand name and not a common or generic name. … In fact, consumers recognize 'Comic-Con' as a brand at a higher rate than they recognize Jell-O as a brand."

Salt Lake Comic Con's motion also argues that, in choosing the name, Brandenburg and Farr had researched San Diego's trademarks, its abandoned bid to trademark the unhyphenated term, and the long list of events using the name at the time without any opposition.

The organizers had every reason to believe they were in the clear to use the name "comic con," according to the filing, especially when they associated it with Salt Lake City to differentiate from other events.

Salt Lake argues the term has been generally and generically accepted to describe conventions featuring comic books and associated media for decades.

"But neither (Salt Lake Comic Con) nor (San Diego Comic-Con) originated either the concept or the term 'comic con.' By the mid-1960s, American (and British) comic book collectors and other aficionados were gathering for events they had already begun calling 'comicons,' a contraction of 'comic book conventions.' In 1966, three comicons were held in New York City alone. Not until 1970 did the individuals who would later form (San Diego Comic Con) organize their first con," Salt Lake argued in court documents filed with its motion.

Since the legal duel began, Brandenburg has vocally defended the convention's name and warned that the challenge threatens dozens of events, not just his own.

A motion hearing regarding the case is scheduled for Sept. 21.

Meanwhile, San Diego Comic-Con's 2017 event will run July 20-23 at the San Diego Convention Center.

Coming on the heels of its two-day FanX convention in March, Salt Lake Comic Con's headline event returns to the Salt Palace Convention Center Sept. 21-23.