‘Comic Con’ Trademark Genericness Dispute Heading to Trial

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By Anandashankar Mazumdar

The operators of the Salt Lake Comic Con will get a chance to convince a jury that the term “Comic-Con” is generic for comic book conventions, according to a Sept. 22 federal district court ruling.

The U.S. District Court for the Southern District of California rejected a motion by the San Diego Comic Convention that the Salt Lake group doesn’t have enough evidence to go to trial on the issue ( San Diego Comic Convention v. Dan Farr Prods. , 2017 BL 337053, S.D. Cal., No. 14-1865, 9/22/17 ).

The Salt Lake organization must prove that, at some point since the first San Diego Comic Con, the term “Comic-Con” has come to mean a type of service—rather than an event specifically put on by the same people who do the San Diego convention. When consumers no longer understand a brand name to indicate the services of a specific provider, the trademark has become a victim of what is known as “genericide.”

The yearly event now known as the Comic-Con International: San Diego started in 1970, and its organizers have federal trademark registrations for “Comic-Con,” “Comic Con International,” “Anaheim Comic-Con,” and a logo incorporating the phrase “San Diego Comic Con International.” Over in Salt Lake City, Daniel Farr and Bryan Brandenburg started their own biannual convention in 2013.

A trial is scheduled for Nov. 28.

Survey Helped Avoid Early Ruling

The court said that “evidence of over 100 competitors” using the “Comic-Con” term “strongly suggests that the mark is generic.” But, the court said, the San Diego organization presented enough evidence of its own to avoid a summary ruling that would make a trial on the issue unnecessary.

Trademark lawyer Joshua M. Dalton of Morgan, Lewis & Bockius LLP told Bloomberg BNA that that part of the court’s ruling shows how important consumer surveys can be to this type of case. Part of the evidence that created enough of a dispute over genericness to send the case to a jury came from survey results suggesting that responders view “Comic-Con” as a brand name for the San Diego event—not as a generic term.

“The issue, ultimately, is, ‘Hey, consumers, does this word convey a brand or a thing?’” Dalton said. Survey evidence can help answer that question in court, he said.

Generic From the Start Not Proven

Farr tried to bypass the need to prove genericide by arguing that “Comic-Con” was already generic when the San Diego Comic Con first started—a concept the law calls “generic ab initio.”

But Farr’s evidence for ab initio genericness was weak, Scott Austin, a trademark lawyer with VLP Law Group LLP, Fort Lauderdale, Fla., told Bloomberg BNA.

“Although the court found defendants’ evidence, case law and reasoning insufficient to undermine plaintiff’s registered marks as generic ab initio, defendants’ true defense, genericide, was able to survive plaintiff’s summary judgment motion,” Austin said. “Nothing comical about that to the holder of a presumptively valid trademark.”

Judge Anthony J. Battaglia issued the court’s ruling.

Pillsbury Winthrop Shaw Pittman LLP represents San Diego Comic Convention. Maschoff Brennan Laycock Gilmore Israelsen & Wright PLLC represents Dan Farr Productions, the company that presents the Salt Lake convention.

San Diego Comic Con didn’t immediately respond to a Bloomberg BNA request for comment. A lawyer for Farr declined to comment.

To contact the reporter on this story: Anandashankar Mazumdar in Washington at AMazumdar@bna.com

To contact the editor responsible for this story: Mike Wilczek at mwilczek@bna.com

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