10066940 – super hero and a ninja doing battle.

A federal judge in San Diego has cleared for trial a case that may strip San Diego Comic-Con from trademark protection.

First, some background. Even a registered trademark such as Comic-Con can lose protection if it becomes generic, that is, if consumers regard it as designating a class of good or services rather than a branded product or service from a particular source. History has many examples of former trademarks, such as “aspirin,” “escalator” and “cellophane,” that over time were appropriated by the public to become the generic name of the product. Trademark lawyers call this process “genericide.” It’s for this reason that the owners of ubiquitous trademarks such as “Kleenex” diligently police their marks to remind competitors and the public against their use in a generic manner.

In the case at hand, Dan Farr and Bryan Brandenburg founded the Salt Lake Comic Con, which like the San Diego Comic-Con, is a fan event for lovers of comics, gaming, fantasy and science fiction. San Diego Comic Convention (“SDCC”), the owner of the registered Comic-Con  trademark, sued and moved for summary judgment on the ground that there is no issue of fact that, with or without a hyphen, the name Salt Lake Comic Con infringes its mark. Apart from the registration itself, which creates a presumption of validity, the plaintiff cited as key evidence a consumer survey in which 82% of respondents identified Comic-Con as a brand name rather than a common generic name.

The defendants were nevertheless able to create an issue of fact on genericide sufficient to withstand summary judgment. The court noted that over 100 competitors used the unhyphenated form of Comic Con to identify events in virtually every state, including New York Comic Con, Amazing Arizona Comic Con, Emerald City Comic Con and Tampa Bay Comic Con. The defendants also cited many news articles that use “comic con” in a generic sense, such as “New Yorkers get their nerd on at Comic Con” and “Comic Cons business update.”

The case is scheduled for trial in November. Stay tuned for a jury to decide whether mighty SDCC wipes the other Cons away, or srappy Salt Lake Comic Con has some Kryptonite® up its sleeve.