View Single Post
Old 12-08-2017, 06:53 PM   #39
Guardian of the Universe
Darth_Primus's Avatar
Join Date: Feb 2010
Posts: 26,066

Originally Posted by Mister Ed View Post
I DO truly have a better idea of why this lawsuit is even happening (especially given SLCC's apparent efforts to present themselves as affiliated in ways that went beyond their, what I consider reasonable, simple use of the term "Comic Con" in their name). I just don't feel like "legally defensible" and "reasonable" are always synonyms.

(I'm not trying to call it quits right after I post in some attempt to get the last word in...feel free to respond to anything I've said here. I'll just try not to drag it out any further.)
Ya know, I'm actually happy we had this lengthy conversation as it provided more insights to the case.

Before I posted in this thread, I read all the previous comments and most of them, if not, all of them sided on the side of SLCC and thought the lawsuit was ridiculous. I also felt the undertones of this is a case of big corporation versus the small guy as the founders of SLCC and certain articles expressed as much. So, I just wanted to offer another perspective as to why the lawsuit has occurred and why it isn't without merit.

If it weren't for the fact that I've worked with IP (Intellectual Property), patents, trademarks, etc for the last 20 years or so, I would most likely feel that SDCC was trying to screw with other comic conventions too.

Originally Posted by Mister Ed View Post
Actually, apple IS a descriptive term. (Or would you argue that it is not being used as a descriptive term in "apple pie"?)

(In fact, it is still a descriptive term in "Apple computer", just not literally so.)

So yes, generic and descriptive are not equivalent. But they can certainly overlap, and when they DO so, completely, in a certain term, I think allowing trademark of that term is wrong. (I would even go so far as to say that if somebody, through some miracle, managed to literally make a computer out of an apple, they SHOULD be allowed to refer to it as such. They should not be allowed to intentionally try to mislead people into believing that they are affiliated with the Apple Computer Company, but simply using a term which is literally descriptive of their product using the generic meanings of all the words involved should not be precluded.)

In "Apple Computer" the "Apple" part of the term is descriptive, but not generic, because it does not refer to a literal apple. "Apple" and "computer" both have generic meanings, but the generic meaning of "apple" is not the same meaning it has in the combined term.

In "Comic Con" both "comic" AND "con" BOTH have generic meanings that ARE the SAME meanings they have in the combined term.

By rejecting that distinction as meaningful (I'm making an assumption that that is at least implied when they refer to precedents rejecting the notion of regarding the genericness of individual components of something) , I think the courts have left common sense behind.
Let me say this about the legal process, rules, precedents and what not. I know it sounds convoluted and it just seems like it creates more problems than it solves. But, by evidence of this discussion, the meaning/interpretation of words and terms and the consumers' knowledge of those things is numerous by nature. I mean, you've even caught yourself making conflicting statements and arguments. It's for these reasons, the court and the law set out to establish rules on how words and terms should be interpreted and defined so everyone gets on the same page and go from there.

Let's take the word "apple" for example again since we've been using it. As you pointed out, "apple" can be considered both a "generic term" and a "descriptive term." Moreover, "Apple" is a brand name. Therefore, because the word "apple" can be interpreted to have different meanings, it's up to the law and courts to define it on a case by case basis. Meaning, it can't make an make a blanket ruling on the meaning of "apple" to apply to every situation. Which is why the term "comic con" was rejected by the Trademark Office to be a registered trademark. However, the law does allow for a "Supplemental Register" which offers some protection from infringement or hijacking to which SDCC was able to own the rights to "Comic Con International" and "Comic-Con." Additionally, the law provides that if the mark is used long enough and acquires distinctiveness, then the mark may be able to be registered on the Principal Register, which is noted in this article in the following excerpt:

To SD Comic-Con’s dismay, the U.S. Patent and Trademark Office rejected its trademark application claiming that the mark was merely descriptive. A mark will not be granted trademark registration if the mark merely describes an element or characteristic of the product or service. This is to prevent a situation where other competitors can’t accurately describe their product because someone has a trademark registration for a descriptive term needed to describe a relevant feature of the goods or services. The U.S. Patent and Trademark Office argued that “Comic-Con” was merely short for Comic Convention and exactly described what the event was.

SD Comic-Con apparently conceded this argument and sought trademark registration on the Supplemental Register. The Supplemental Register does not grant all the benefits of a trademark registration on the Principal Register, but does allow some protection. Moreover, if the mark is used long enough and acquires distinctiveness, then the mark may be able to be registered on the Principal Register. This is exactly what SD Comic-Con did.

In 2006, SD Comic-Con responded to the merely descriptive rejection to its trademark application with evidence in the form of a declaration to demonstrate acquired distinctiveness. SD Comic-Con claimed that even though “Comic-Con” is a descriptive term, consumers had come to associate the name with its convention. The U.S. Patent and Trademark Office accepted the evidence and SD Comic-Con’s argument and in 2007 granted SD Comic-Con a trademark registration for the mark Comic-Con.
So, by this last paragraph, it specifically states, that SDCC provided enough evidence to prove that "consumers had come to associate the name with its convention." I suspect for this very reason, SLCC did not argue a "descriptive term" defense.

Basically, what I'm trying to say, is that the courts and the law are often burden by the people arguing on which and who's "common sense" (or common interpretation) of certain words like "apple," to which you have admittedly noted could have different and overlapping meanings.

As such the law and the trademark office acknowledges both a descriptive term and it having a "secondary meaning" as noted in this article:
Once it can be shown that a descriptive term or phrase has achieved this "second meaning" (the first meaning being the generally understood meaning of the term or phrase), a protectable trademark is developed. Secondary meaning can be achieved through long term use, or large amounts of advertising and publicity.

Examples of marks which might be considered descriptive but have clearly developed secondary meaning include:

SHARP for televisions;
DIGITAL for computers;
WINDOWS for windowing software;
INTERNATIONAL BUSINESS MACHINES for computers and other business machines; and
POWER COMPUTING for computers based on the Power PC chip.
Just food for thought, so you can consider this to be a rhetorical question, knowing that words "apple" and "sharp" do have multiple and overlapping meanings, how do you propose common sense solves this problem? Could you use common sense to make a word like "apple" have a ubiquitous meaning to apply to every situation and combination of words to solve a dispute? Or would you have to take it by a case by case basis, which I said earlier, the courts are burden to deal with on daily basis.
You just witnessed the strength of geek knowledge. N.W.A., Nerd With Attitude. Straight out of Vulcan!

Last edited by Darth_Primus; 12-08-2017 at 08:22 PM.
Darth_Primus is offline   Reply With Quote