An Epic Battle of Blockbuster Proportions Underscores the Importance of Protecting your Trademarks from Genericide, Part I

Barry Scholl

January 2018

In December 2017, the epic trademark infringement battle pitting San Diego’s long-running “Comic-Con” versus Salt Lake City’s upstart “Comic Con,” reached what appeared to have been at least a temporary lull when a federal jury in California found that contrary to Salt Lake Comic Con’s claims, the San Diego group’s trademark is valid. The jury awarded $20,000 in damages to San Diego Comic-Convention, much less than the $12 million being sought by the San Diego event, because the jury didn’t find Salt Lake City group’s infringement to be willful.

The dispute involved differing interpretations of the term “comic con” (with and without the hyphen). San Diego Comic Convention has a registered trademark for “Comic-Con” and argued that Salt Lake City’s “Comic Con” capitalized on the good will of San Diego’s Comic-Con’s mark in order to confuse attendees into believing the two events are related. It sought an injunction to prevent the Salt Lake City event from using the term “comic con” for any event, logo, trademark or website.

Salt Lake City’s Comic Con countered that more than 100 events across the country have long used the term “comic con” to describe events celebrating popular culture, superheroes, fantasy, science fiction, etc. Consequently, Salt Lake Comic Con argued, the trademark has become genericized, and it petitioned the United States Patent and Trademark Office to cancel the San Diego group’s trademark.

In a pre-trial order, U.S. District Court Judge Anthony Battaglia appeared to agree (at least in part) with both litigants, writing, “After a careful review of the parties’ moving papers, the applicable law, and the evidence on the record, the Court finds that Defendants have satisfied their burden of demonstrating a genuine issue of material fact as to genericide.”

Significantly, however, the Court didn’t close the door entirely on San Diego’s argument, noting that Salt Lake City’s Comic Con might be free-riding on the reputation of the well-established San Diego Comic-Con, because consumers could believe the two events are hosted by the same source:

“Here, both of the services at issue are indeed complementary of each other,” “Battaglia wrote, pointing out that each of the events involved three-day fan conventions celebrating comic books, comic art, science fiction, fantasy films, and similar entertainment.

In early January, several media sources reported (either erroneously or prematurely, as it turns out) that Salt Lake’s Comic Con had agreed to change its name. However, only a few days after these reports appeared, lawyers for Salt Lake’s Comic Con filed a motion for a new trial, arguing, in part, that use of the term “comic con” by other third parties could make the term generic.

What is Genericide?

In his pre-trial ruling, Judge Battaglia explained that “a mark is the victim of genericide when the ‘majority of the relevant public appropriates a trademark term as the name of a product (or service) . . .’”

Citing the formerly trademarked terms “aspirin,” “escalator,” and “cellophane,” Judge Battaglia said that each of these examples “only identified the brand or producer during the period of its initial use, however after the passage of time, they were appropriated by the public and soon became the generic name of the product.”

Avoiding Genericide

Next week, in Part II, we’ll review the elements of genericide and what you can do to protect your valuable trademarks from the fate that befell “aspirin,” “escalator,” and “cellophane” (not to mention “thermos,” “teleprompter,” and “trampoline”).

Barry Scholl is a shareholder at the Salt Lake City law firm of Richards Brandt Miller Nelson. He can be reached at Barry-Scholl@RBMN.com.