A Case Of Genericide?

9.29.17 IN: Public

Genericide – a kind of bug spray or potential doom in the intellectual property world? This word strikes fear in the hearts of trademark owners the same way it takes care of common household pests. But, instead of applying to the owner, it applies to their trademarks.

Genericide occurs when a registered trademark loses its meaning – becoming an everyday word for the product itself. Think Kleenex or Frisbee. Do you think of the actual source (Proctor & Gamble and Wham-O, respectively) that makes those products? Or do you use them interchangeably for facial tissues and flying disc toys? Essentially, the whole point of a trademark is that it lets the consumers know the source behind it, to help them trust the product because they know they can trust that source. So when the mark no longer identifies the source behind it, it becomes generic, and can lose its status as a trademark.

This is what the San Diego Comic Convention is currently trying to avoid. The convention has been around since 1970 and is arguably the most famous convention of its kind. Every year, close to a hundred thousand people flock to California to meet their favorite celebrities, get the inside scoop on upcoming movies or video games, and dress as their favorite characters. The gathering gets a lot of publicity – far more than other similar conventions across the country.

In addition to being the most popular event of its kind, and likely because of this fact, the Convention actually owns registered trademarks that are used at the event. On file with the United States Patent and Trademark Office are marks for “Comic-Con” and the drawing featuring “Official Comic Con Affiliate.” It is because of these marks that the suit in question began.

The San Diego Comic Con sued Dan Farr Productions, the founders of the Salt Lake City Comic Con for trademark infringement, claiming that people would think that the Salt Lake City convention is affiliated with the San Diego trademark, due to their similarity. Specifically, Salt Lake’s use of “Comic-Con” was pointed out. What seemed like a straightforward case was made more interesting by Dan Farr Productions response; the company filed a counterclaim stating that the marks in question have become generic.

Since a generic mark does not receive protection, this argument may have teeth. However, the Defendants made a few errors in their counterclaim. Most importantly, they argue both that the marks had become generic and that the marks started out generic. These seem to be competing arguments Well at least one appellate judge here in the 7th Circuit has hinted that even legitimate trademarks can become generic over time. See Ty v. Perryman, 306 F. 3d, 509, 514 (7th Cir. 2002) and the highly respected (and recently retired) Richard Posner.

After a lot of motion practice by the lawyers San Diego has been allowed to present expert testimony on genericism. Where it goes from there is anyone’s guess. As this case progresses, we will keep you updated on whether this giant in the world of comic conventions loses its trademark rights.