Federal Judge Refuses to Dismiss San Diego Comic-Con Trademark Case
San Diego – The Trademark case between San Diego Comic-Con and Salt Lake Comic Con is now moving toward trial. After Salt Lake Comic Con filed a Motion for Summary Judgment claiming that Comic Con was a generic term, U.S. District Judge Anthony Battaglia refused to dismiss the trademark case citing lackluster evidence to support such a claim.
San Diego Comic-Con is claiming that the two defendants and operators of Salt Lake Comic Con, Daniel Farr and Bryan Brandenburg, chose to capitalize on the goodwill and success of San Diego Comic-Con’s brand. Beginning in 2013, Farr advertised the Salt Lake Comic Con announcing “Comic-Con is coming to Utah” which San Diego Comic-Con claims is implying affiliation to San Diego Comic-Con.
Farr’s argument is that “Comic-Con” has been a generic word to refer to all conventions for comic fans. The claim is that it was also used regularly and generically prior to the first Comic-Con in San Diego held in 1970. However, San Diego Comic-Con conducted a survey that showed 80% of consumers thought that “Comic-Con” is a brand, and not a generic name.
Through Farr’s evidence it became apparent to Judge Battaglia that San Diego Comic-Con’s trademark is a potential victim to “genericide.” Indeed, it appears that San Diego Comic-Con may have been lax about policing its trademark and also always using it as a trademark rather than a descriptive term. Genericide occurs when a brand becomes so successful that its formerly trademarked name becomes interchangeable with the product or service itself rather than being seen by consumers as a brand. Escalator and Aspirin are notable examples of formerly trademarked words that became generic.
As part of the reason for using Salt Lake Comic Con, Farr claimed that he relied on the many other Comic Con’s in use and a settlement between San Diego Comic-Con and another comic convention which appeared to allow the similar use. In other words, Farr believed that San Diego Comic-Con was not actively protecting its trademark and that other companies could use “Comic-Con” at will without being sued.
U.S. District Judge Anthony Battaglia ruled to exclude expert testimony by both sides and set a final pretrial conference and motion hearing for the end of September 2017.