A jury will decide if the term “Comic-Con” is generic after a federal court judge in California recently denied summary judgment in favor of the trademark holders.

The Comic-Con San Diego convention, which dates back to 1970 and drew more than 135,000 attendees in July 2016, celebrates comic art, books and other aspects of the popular arts. Its organizers filed suit against the Salt Lake City Comic Con, which was launched in 2013 and is also a three-day fan event that focuses on comic books, movies, television shows and gaming, and uses a similar square-shaped logo that prominently features the term “Comic Con.”

The plaintiff holds four trademark registrations for the hyphenated term “Comic-Con,” and it alleged infringement and false designation of origin in a 2014 lawsuit. The defendant responded with a counterclaim asserting that the marks are generic.

After weighing competing motions for summary judgment, U.S. District Court Judge Anthony J. Battaglia decided to deny both and move the suit forward.

The court rejected the defendant’s position of genericness from the start. It noted that the U.S. Court of Appeals, Ninth Circuit has not recognized this theory, and that even if it had, the evidence produced by the defendant was “insubstantial.”

However, the court was persuaded by the defendant’s argument of genericide, and found a genuine issue of material fact on the issue despite the strong presumption of validity based on the plaintiff’s trademark registration.

“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,” Judge Battaglia wrote. “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 defendants also provided “copious” news articles using “comic con” in a generic sense, which also favored finding the term generic.

While the evidence was strong enough for the court to deny the plaintiff’s motion for summary judgment on the defense of genericide, it was not enough for the defendants to win their own summary judgment motion on the issue, the court found. “This conclusion is reinforced by Plaintiff’s submission of its consumer survey that demonstrates that over 80 percent of consumers believed ‘Comic-Con’ to be a brand name and not a generic name.”

Triable issues of fact remain, Judge Battaglia wrote, such as the similarity of the marks themselves (both marks are a square shape with the phrase “Comic Con” as the prominent slogan within, but have varying fonts and colors).

The defendant also raised a novel argument that the plaintiff abandoned its marks by failing to police them, and that competitors made widespread use of the marks for identical services over time. In dismissing the argument, the court noted that the Lanham Act provides only two ways that a trademark can be abandoned: nonuse or the mark becoming generic.

To read the order in San Diego Comic Convention v. Dan Farr Productions, click here.

Why it matters: Although the court found that the use of an unhyphenated version of the term “Comic Con” by more than 100 competitors was sufficient to overcome the plaintiff’s summary judgment motion, it wasn’t enough for judgment as a matter of law for the defendants, particularly in light of a survey finding that a large majority of consumers believe the term to be a brand name. The pivotal issue of genericide is now set to be decided by a jury later this year.