The San Diego Comic Convention (SDCC) and the proprietors of Utah’s “Salt Lake Comic Con” sparred recently in summary judgment arguments over the SDCC’s COMIC CON trademark. The SDCC owns four registrations for COMIC CON, and claims that Dan Farr Productions and other defendants infringed those trademarks by capitalizing upon the fame and goodwill of COMIC CON in promoting their “Salt Lake Comic Con” events. The complaint seeks treble damages, pre-judgment and post-judgment interest, and an injunction against Dan Farr Productions and other defendants from using the COMIC CON mark.

Dan Farr Productions asserted multiple affirmative defenses based on SDCC’s acquiescence to widespread use of “comic con” by multiple third parties, listing over 100 competitors that use “comic con” in their counterclaims and subsequent filings. Their countersuit against SDCC seeks declaratory judgments of non-infringement as well as invalidity and cancellation of SDCC’s COMIC CON marks.

Takeaway: Trademark owners should consistently police their registrations. Advertisers that fail to police their brands consistently may be open to affirmative defenses and possible cancellation for failure to enforce its trademark rights against third party infringers.