A federal court in California recently rejected a motion by the San Diego Comic Convention and will hear whether the mark COMIC-CON is generic.
The San Diego Comic Convention (“SDCC”), a non-profit corporation, has been celebrating comic art, books, and other aspects of popular culture in San Diego since 1970. The organization’s eponymous “Comic-Con” convention has grown in popularity with attendance exceeding over 135,000 attendees in 2016. SDCC applied for and obtained a federal trademark registration for the mark COMIC-CON in connection with “education and entertainment services, namely, organizing and conducting conventions in the fields of animation, comic books and popular art.” However, while SDCC may be the largest gathering of comic fans, it is not the first and certainly not the only entity using the phrase “Comic Con.”
In 2013, Dan Far Productions (“DFP”) held the inaugural Salt Lake Comic Con (“SLCC”). SLCC is a three-day fan event featuring movies, television shows, gaming, sci-fi, fantasy and comic books. SLCC was advertised using a logo including the phrase COMIC CON (without the hyphen in SDCC’s mark) preceded by the geographic term “Salt Lake.”
SDCC filed a complaint against DFP in 2014, asserting that use of the term “Comic Con” constituted federal trademark infringement and false designation of origin. DFP responded by filing a counter claim asserting that the term COMIC-CON is generic.
What does it mean to be generic?
A trademark serves as the identifier of the source of goods or services. In contrast, a generic term is the generally known name of the goods or services themselves. Put another way, a non-generic mark answers the customer’s questions “Who are you? Where do you come from?” but the generic name of a product answers the question “What are you?” Some well-known generic terms, such as aspirin, cellophane, and escalator, were originally trademarks but became generic when the public appropriated the trademark term as the generic name of each product. A federal registration grants a mark a presumption of validity, so a registration owner need not prove that a registered mark is non-generic. Instead, a challenger must prove that the registered mark has become generic.
The SDCC filed a motion asserting that DFP did not have enough evidence to go to trial on the issue of the generic-ness of SDCC’s mark. Federal courts view usage of a term by the media and by competitors in the industry as strong evidence of how the public perceives the term. The more members of a public see a term used by competitors in the field, or used generically by the media, the less likely they will be to identify the term with one particular entity. Here, DFP provided documents and news articles showing that “comic cons” are held in nearly every state of the United States and identified over 100 competitors using the unhyphenated form of SDCC’s COMIC-CON mark. The court considering this showing persuasive evidence that SDCC’s mark is generic. As such, the court rejected SDCC’s motion and DFP will have the opportunity to convince a jury that the term “Comic Con” is generic for comic book conventions. The court has scheduled a trial in this case for November 28, 2017.
Impact for Trademark Owners
For trademark owners, this ruling shows the value of policing competitors’ use of similar terms. Ownership of a federal registration provides SDCC with the valuable presumption that its mark is valid. However, its failure to contest competitors’ use of the term “Comic Con” on similar conventions for decades now raises the possibility that its mark has been appropriated by the public and become an unprotectable generic term. Now that SDCC has chosen to assert its trademark rights, its failure to act against earlier competitors may result in it losing its trademark rights altogether.
Impact for Business Owners
For those considering using another’s mark or adopting a mark similar to another’s mark, this ruling shows that there is strength in numbers. A single entity using another’s mark may be easily identifiable as an infringer. However, like the proverbial camel’s nose in the tent, one uncontested infringer may be followed by another, and another, until the original mark becomes generic and the entities are no longer considered infringers. That being said, the generic-ness of a mark is a fact specific inquiry in which the mark owner receives the benefit of the doubt, so it is very risky to be the first (or second, or third) entity to use another’s mark.