Here at Costello Law Corporation, we advise people and businesses about legal issues related to trademarks, including whether the usage of a brand likely violates a pre-existing mark. We also represent parties in disputes about trademark violations in related litigation.
An interesting San Diego trademark case just survived dueling motions for summary judgment and is scheduled for a November 28 trial, according to Ars Techica. The dispute concerns the San Diego Comic Convention’s Comic-Con and Dan Farr Productions’ Salt Lake Comic Con.
Allegation of trademark violation
Nonprofit San Diego Comic Convention sued Dan Farr Productions for using Comic Con, alleging that this violated its trademarked Comic-Con. Each party holds popular comic conventions using these names.
Notice the difference between the two terms is a hyphen. One of the main issues in the motion for summary judgment was whether the term Comic-Con, which is a registered trademark, has become so generically and universally used to describe comic conventions in general that use of the term no longer violates the trademark.
This process of a protected mark becoming too generic is called, appropriately, genericide. In his opinion, the federal judge noted other terms that have lost protection for this reason include cellophane, aspirin and escalator.
The judge refused to grant summary judgment because he found that there is a genuine issue of material fact about the mark’s genericness. Accordingly, he allowed the case to proceed to trial so that the finder of fact can consider all the evidence to make this determination.
The judge considered defendant’s evidence that “over 100 competitors” use the “comic con” phrase without the hyphen to refer to these gatherings. The judge noted that use of a mark by competitors may be evidence of genericide as a reflection of “how the public identifies the term.”
In addition, the defendant had submitted evidence of the repeated use of the unhyphenated term in the media, another legitimate source of evidence of generic use.
However, the court did not find defendant’s evidence to be strong enough to support judgment for it as a matter of law. The court pointed to plaintiff’s evidence of a survey showing that more than 80 percent of those surveyed thought Comic-Con an actual brand, rather than a generic term.
Those in the intellectual property legal community will watch this important case with interest as it proceeds to resolution.