Notable Case: San Diego Comic Convention v. Dan Farr Productions

Notable Case: San Diego Comic Convention v. Dan Farr Productions

The purpose of a trademark is to allow consumers to tell the difference between competing products.  Trademarks are intended to prevent consumer confusion.  Companies are allowed to place trademarks on products so that consumers can tell the difference between similar products from different companies.  When a company begins placing a trademark on products, that company is granted the exclusive right to use the trademark in the marketplace.  If other companies start putting popular trademarks on their products to try to trick consumers, that is considered trademark infringement.  But trademark law has its limits, companies are not allowed to claim popular words as trademarks.  If a word is already associated with a type of product, it is considered generic and cannot be claimed by anyone.

San Diego Comic Convention v. Dan Farr Productions 3:14-cv-01865-AJB-JMA is a case that started in 2014 and is beginning to get interesting.  The plaintiff, San Diego Comic Convention, is a company that organized a very popular convention called San Diego Comic-Con.  The plaintiff registered the trademark Comic-Con in 2005. San Diego Comic Convention’s registered trademark covers: Education and entertainment services, namely, organizing and conducting conventions in the fields of animation, comic books and popular art. San Diego Comic Convention claims that it first used the trademark Comic-Con in August 1970. The plaintiff claims that the defendant, Dan Farr Productions, infringed on the plaintiff’s trademark when the defendant held a convention which was called Salt Lake Comic-Con.

Lets restate a different way to make is easy to understand.  The plaintiff and defendant organize events that revolve around comic books. The plaintiff’s event is called San Diego Comic-Con and the defendant’s event is called Salt Lake Comic-Con.  The plaintiff has a registered trademark, the plaintiff claims that the defendant’s event infringes on the plaintiff’s right to the trademark Comic-Con.  If you only listen to the plaintiff is seems like a clear cut case of trademark infringement.

The defendant responds that it is not committing trademark infringement because the term Comic-Con is generic.  The events are comic book conventions.   It is a popular practice in English, and may other languages, to shorten and press words together to make common phrases easier to say and type.  If you shorted and compress the phrase “comic book convention”, Comic-Con is a logical result.

The defendant points out that even though the plaintiff successfully registered Comic-Con as a trademark in 2005, but the plaintiff’s trademark application was denied by the United States Patent and Trademark Office in 1995 for being merely descriptive.

The defendant also points out that other companies were using the phrase Comic-Con to describe comic book based conventions in 1968, two years before the plaintiff starting using the phrase Comic-Con.

The plaintiff and defendant spent three years arguing with each other and could not reach a compromise.  A jury trial was held in late November 2017  on December 8th 2017 the Jury reached a decision.  The jury found for the Plaintiff on the count of Federal Trademark Infringement. Judgment will be entered shortly.

Despite the fact that the jury found in favor of the plaintiff’s the defendant is not done yet.  The judge could still rule in favor of the defendant and both parties could appeal.  It will be interesting to see what the judgement will contain.

If you have comments for the authors of this blog please email us at: