8:15am PT by Eriq Gardner
Jury to Decide Whether or Not "Comic-Con" Has Become Generic
A California federal judge has teed up a trial this coming November in a trademark dispute over "Comic Con." In a summary judgment ruling issued this past week, U.S. District Court Judge Anthony Battaglia has given the organizers of the San Diego Comic-Con some wins, but is nevertheless reserving the key issue of genericide for a jury.
SDCC is squaring off against Dan Farr and Bryan Brandenburg, who run the Salt Lake Comic Con and are being accused of trademark infringement. This is a test case. If SDCC prevails in San Diego vs. Salt Lake, other "Comic Cons" throughout the nation could be in danger.
On summary judgment, Battaglia takes judicial notice of SDCC's four registered trademarks and also accepts the testimony of its expert, Matthew Ezell, who conducted a survey that revealed that 82 percent of participants understood Comic-Con to be a brand name, and not a common generic name. The judge says Ezell's work is pertinent in understanding how consumers understand the plaintiff's trademark.
Conversely, Battaglia rejects the testimony of defendants' expert, Jeffrey Kaplan, who sought to provide linguistic evidence to support the proposition that "comic con" is generic and ubiquitous. The judge concludes his opinions aren't sufficiently reliable because they were generated from a narrow field of documents, mostly provided by SLCC.
Battaglia then turns to the issue now at the crux of the case.
He agrees with the plaintiff that there can be no contention of generic ab initio, meaning that when SDCC began holding a comic-con in 1970, the term was already generic. Although the judge was pointed to evidence of a "1964 New York Comicon" as well as one in 1969 in London, he says the 9th Circuit hasn't recognized a generic ab initio theory. And even if it had, the judge says the evidence is insufficient.
However, when it comes time to analyzing whether SDCC's motion for summary judgment should be granted on the issue of genericide, Battaglia does indeed see enough to at least make it a triable issue of fact.
"Here, Defendants produce evidence that demonstrates that “comic cons” are held in nearly every state of the United States including New York Comic Con, Amazing Arizona Comic Con, Emerald City Comic Con, and Tampa Bay Comic Con," states the opinion. "This evidence of over 100 competitors using the unhyphenated form of Plaintiff’s trademark strongly suggests that the mark is generic. Consequently, this is persuasive evidence of genericide."
The judge also nods to "copious amounts of news articles" presented from the defendant to the issue of the use of "comic con" in the generic sense. At trial, that evidence will do battle with the consumer survey referenced above.
Here's the full opinion, which also explains why the defendants can no longer argue why the trademark has been abandoned and what remaining issues, such as the likelihood of consumer confusion, will be resolved at trial.