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Old 12-06-2017, 11:46 PM   #26
Darth_Primus
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Originally Posted by Mister Ed View Post

You say it is "obvious" that the smaller conventions were trying to capitalize on SDCC's name and reputation. I don't find that obvious at all. Have they admitted as much? Frankly, even if they have (which I find unlikely) it doesn't seem like a very successful strategy to me, given how generically descriptive the term is.
Straight from the horses mouth.

Here's a link to the complaint filed by SDCC, and on page 9 there's a citation to an article from a website (that's no longer valid) quoting the following:

http://www.ipwatchdog.com/wp-content...-complaint.pdf
Unlike a lot of the show segment, Brandenburg and Farr knew they were starting with an advantage from a branding perspective.

"We knew that the term 'comic con' is kind of like a Xerox, it's a generic band," Brandenburg says. "All it means is comic convention, but we knew that there was brand equity associated with the phrase that we could capitalize on, being the only comic con in our market."

The core audience would be served by leveraging the name and experience associated with other giant comic cons, including the industry's mega show, Comic Con International, but Brandenburg wanted to cast a wider net.

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Originally Posted by Mister Ed View Post
They own the "Comic-Con" trademark, but according to the original article, they added the dash in the middle because they had specifically FAILED to trademark the term "Comic Con" without the dash.
I see where you're coming. Mostly every claim in that article is by SLCC, without any real legal citations to support those claims.

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Originally Posted by Mister Ed View Post
The grammar in that article is atrocious, by the way. To the point that some of the sentences are totally indecipherable.

"Dan Farr tried to argue that San Diego’s expert witness, which included the results of a Teflon survey on the generic nature of the term “Comic-Con”, as such evidence only matters in genericide cases and not where the trademark was generic prior to the owner’s use."


That is not a complete sentence. Neither is the following:

"However, the defendant’s own pleading in the counterclaim, where it asserted a defense of generic mark, and the court found the evidence to be relevant to the case."

Both seem to be missing a chunk in the middle that would make the meaning clear (and the grammar correct).
Now, I understand the legal language is difficult to comprehend as it's very technical and I still have trouble with it now and then.

In layman terms, SLCC said that SDCC expert testimony (evidence) is not relevant because it only applies to situations where a trademark term (like aspirin) becomes a generic term and not in situations where was the term was generic before it was attempted to be trademark (i.e. hotels.com).

In short, SLCC was trying to block evidence submitted by SDCC to support that "Comic Con" (without the hyphen) is a brand name.

And SLCC argued against itself, and the court ruled against them because their were arguing out of both sides of their mouth; that "comic con" was a generic term before the creation of SDCC and that the trademark term has evolved into a generic term.




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Is Salt Lake using "Comic-Con" with the dash? If so, that would go a long way to explaining why SDCC thought they had a case HERE, even though they have failed in all previous attempts (unless I missed a story) at enforcing trademark against other Comic Cons.
SDCC also owns the trademark of "Comic Con International" which has no hyphen noted on page 5 of the complain in the link above.

Based on my research, SDCC has not sued any other conventions. SLCC probably was sued because they made public comments about capitalizing on the SDCC brand name and intentionally, misrepresenting themselves to attract more attendees.

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Originally Posted by Mister Ed View Post
Further research makes me suspect that the reason why SDCC is taking this case so far is that SLCC seems to be making the claim that even the trademark on "Comic-Con" should be invalid. If SLCC prevails, not only would they maintain the right to the name they are using, but would possibly void SDCC's trademark on the hyphenated term.

If that DOES happen, I will laugh, since SDCC would then be responsible for causing their own trademark to be voided by pushing this suit in the first place.
Well, "Comic-Con" would still be a registered trademark, which no other convention could use, but ultimately, yes the term "comic con" would be considered a generic term like "aspirin."

You may laugh at SDCC, but I find it unethical for SLCC openly say their were going to cash in on SDCC's brand name. And I hope they're not rewarded for that.
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Old 12-07-2017, 12:19 AM   #27
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So it sounds like SLCC DID do a few things that were questionable. (I think the worst, to my mind, was probably sending a vehicle to SDCC to advertise their event, because that DOES seem calculated to cause at least SOME confusion about an association between the two).

Still, I would hope that any ruling against SLCC would be narrow, and focus on specific actions that they took, because the idea of enforcing trademark on a generic, descriptive term that they were not the first to use, and which is widely used across the nation and has been for years (the fact that they have not sued other conventions, if true, SHOULD actually work AGAINST SDCC), still seems ludicrous to me.

I cannot believe that there is actually a large enough class of people that both know about SDCC at all AND are somehow unaware that there are tons of Comic Cons that are not affiliated with SDCC to make the sort of "confusion" that SDCC is claiming all that likely (at least not based solely on the use of the term Comic Con. It seems like SLCC may have taken actions beyond simply using the term that would make such confusion more likely in that case). I guess I could just be projecting, but you are literally the first person I've ever met that doesn't seem to think that comic con is a generic term.
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Old 12-07-2017, 04:48 PM   #28
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Obviously, we don't inter act with the same group of people. When I tell people that I'm going to Comic Con or some one is telling they're going to Comic Con, both they and I naturally assume it's SDCC. SDCC is the first comic book convention I ever recall recognizing as I remember it being advertised in the comic books I've read. Other than NYCC in relative current history, I don't recall other comic conventions advertising in comic books. And importantly, trying to pass themselves off as being associated with SDCC. Moreover, when media outlets like the LA Times, Entertainment Weekly, Access Hollywood, etc cover the SDCC event they refer to it as "Comic-Con."

Again, it's a fact that SDCC owns the registered trademark of "Comic Con International" (no hyphen) and "Comic-Con." It's a brand name.

Here's an excerpt from this article from BleedingCool that, not only I, but the founders of Rose City Comic Con recognize "Comic Con" as a brand name:
Rose City Comic Con stating that “Rose City Comic Con, Portland, Oregon’s largest comics and pop-culture convention, is proud to announce its association with San Diego Comic Convention for its three-day event taking place September 7-9, 2018 at the Oregon Convention Center. Rose City Comic Con received the license at no additional cost to the show, and acknowledges the trademark owned by San Diego Comic Convention and is excited to affiliate itself with the prestigious event.”

“Comic-Con, the San Diego convention, is without question the biggest and most important event in the comics and popular arts industry every year. To have the respected event recognize the hard work of Rose City Comic Con by providing a license agreement is really remarkable for the city of Portland and the incredible community of creators we’re lucky to have here,” said Rose City Comic Con founder Ron Brister.

And as I posted earlier, the founders of SLCC also recognized "Comic Con" to be a brand name and wanted to capitalize on it. In this article from Bleeding Cool a few days ago, exposes a 2013 email from the founders of SLCC acknowledging "Comic Con" is brand name that carries cache and their intention to exploit that acknowledgement:

2013 e-mail from the organisers of Salt Lake, Dan Farr and Bryan Brandenburg, appearing to trade on the San Diego mark, saying:
I wanted to follow up to discuss our opportunity this week to leverage the
San Diego Comic Con
to help people relate more to our event.


I just feel the more we can leverage San Diego to boost our brand here the
better.

—-

It may be a good time to get us on the news again to discuss the show so they associate us with San Diego.


The article further points out that SDCC presented this statement as some sort of smoking gun that SLCC knowing and intentionally infringe on the Comic-Con brand name:
Defendants (SLCC) further spoke freely and openly of their plan to “hijack” the SDCC brand as they ventured onto the comic convention scene, a brand that was created through SDCC’s decades-long use of and investment in its COMIC-CON marks. Mr. Brandenburg went so far as to admit that “hijacking the Comic Con brand” was part of Defendants’ “magic formula.” According to Mr. Brandenburg, the word hijack means “taking something and using it for your own purposes.”

As you noted above, SLCC intentionally created confusion with their advertising vehicle in 2014 which effected the brand name "Comic-Con" in a negative way to which consumers contacted SDCC demanding a refund, which SDCC's attorneys pointed out:
Further instances of confusion manifested during and after Defendants’ Salt Lake Comic Con convention held in September 2014. SDCC received several phone calls from persons who attended (or attempted to attend) Defendants’ convention complaining about their abysmal experience. (Id.) SDCC also received numerous emails from disenchanted patrons complaining about Defendants’ convention and asking for refunds. One consumer urged SDCC to “do everything you can have to have Salt Lake Comic Con separate themselves and their version of business from yours. I bought tickets believing it was the original, as did many others.” Another chastised SDCC because “I waited in your Salt Lake comic con line for almost 3 hours tonight, and never even got in the door! What the Hell!! I sent messages to your Salt Lake City personnel and it appears as if nobody here cares!” Yet others asked SDCC for a refund due to their poor experience at the Salt Lake Comic Con convention.”
So, again, I'm not the only that recognizes the term "Comic Con" to be a brand name.

And I as posted on the previous page, SLCC's poor product reflected negatively on SDCC. And the paragraph above shows that several paying consumers were upset by this confusion and at least one of the urged SDCC to "do everything you can have to have Salt Lake Comic Con separate themselves and their version of business from yours," as "I bought tickets believing it was the original."

And that's one of the issues that SDCC is trying to clear up with the paying consumers with this lawsuit. Which is why I posted previously that SLCC probably wouldn't haven't been sued if they did not openly/publicly say they wanted to exploit the "Comic Con" term by "hijacking the Comic Con brand" for their own benefit.

Mister Ed, I'm not trying to persuade you to side with SDCC in this litigation, but I do hope this information helps you fathom why SDCC is fighting to protect their brand name and prevent confusion among consumers.
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Old 12-07-2017, 05:16 PM   #29
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As I mentioned previously, the Court has already rejected SLCC's claim that the term "comic con" was a generic term before SDCC owned the trademarks of "Comic Con International" and "Comic-Con;" citing the word "con" (in this context) wasn't entered into a certain respected dictionary until 2002.

So, the crux of the case is whether or not "Comic Con" has evolved into a generic term like "aspirin" (which is noted as "genercide" in the court papers (i.e. pleadings, court orders)) or if it's a recognized brand name by the consumers. Both SLCC and SDCC have presented evidence to support by sides of the argument.

I believe that if the court rules against SDCC, at the very least, that the it will also rule that SLCC and other comic conventions using the term "comic con" in their name must provide a caveat to the general public that they are not affiliated or associated with SDCC.
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Old 12-07-2017, 05:28 PM   #30
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I have a better idea why they are fighting, but I still reject the notion that a generic descriptive term should have any protection as a "brand name".

I think that there IS evidence that SLCC was intentionally trying to misrepresent themselves as associated with SDCC, and that sounds like some kind of fraud to me, but I reject the notion that the mere use of the term "Comic Con" should be problematic legally on its own.

The situation with Rose City Comic Con is meaningless as evidence of "Comic Con" alone having brand name status, IMHO. Rose City Comic Con has used the term since 2012 without seeking any kind of permission or recognition from SDCC. Their current relationship seems to me to be something that was initiated by SDCC, and accepted by Rose City Comic Con less because they actually feel like SDCC has an exclusive legal right to the term, and more because they feel like being linked to SDCC specifically is good for business. The cynic in me says SDCC made this move solely to try to bolster their ongoing case by using their clout to entice other long-term users of the term to make some kind of acknowledgement after the fact in return for being publicly linked to SDCC. Frankly, it argues the opposite for me. If the mere use of the term "Comic Con" creates an unavoidable link to SDCC in the minds of the public, then there would be no reason for those Cons that have been using it for years to value SDCC offering them such an "official" link. By making this agreement, they are, in effect, saying that merely using the term did NOT link them to SDCC all these years.
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Old 12-07-2017, 05:35 PM   #31
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Originally Posted by Darth_Primus View Post
As I mentioned previously, the Court has already rejected SLCC's claim that the term "comic con" was a generic term before SDCC owned the trademarks of "Comic Con International" and "Comic-Con;" citing the word "con" (in this context) wasn't entered into a certain respected dictionary until 2002.
I think the court was wrong to do so, as there are examples too numerous to count of the term being used generically to refer to all manner of conventions WELL prior to SDCC being granted their trademark.

And is it not true that SDCC attempted to trademark "Comic Con" without the dash and failed?
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Old 12-07-2017, 07:21 PM   #32
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I think the court was wrong to do so, as there are examples too numerous to count of the term being used generically to refer to all manner of conventions WELL prior to SDCC being granted their trademark.
The court had no choice but to rule that way, because of the "letter of the law" in that, the higher court (The 9th Circuit Court of Appeals) does not allow that notion as a legal argument/defense theory as noted in this article that states:
The court observed that the defendant, Salt Lake Comic Con, has introduced evidence that “fluctuates” between two different defense theories, genericness ab initio (that “comic con” was a generic mark before SDCC began using it as a trademark) and genericide (that the term “comic con” has been appropriated by the public, as it has done with aspirin or escalator).

The judge ruled against the Salt Lake Comic Con’s "genericness ab initio" arguments:

Unfortunately for Defendants, the Ninth Circuit [the controlling circuit Court of Appeals to which this case might be appealed] has not recognized a "genericness ab initio" theory of defense.
FYI here's link to the Court Order, the 9th Circuit recognized only five categories of trademarks: (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; and (5) fanciful. (citing the following case as legal precedents: KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 408 F.3d 596, 602.)

The Court went on to further say that, on page 17 of the link to Court Order):
"No case law from this circuit separates genericness into two different types nor have Defendants (SLCC) provided the Court with Ninth Circuit precedent that adopts their arguments. Accordingly, as there is no dispositive basis or Ninth Circuit jurisprudence to accept an argument revolving around a generic ab initio defense..."
In other words, the rule of law (as it pertains to trademarks) is that, just saying that "comic con" was a generic term before it was registered as a trademark is not valid because there are no case law or evidence to support it and SLCC failed for provide any evidence to the contrary.

The Court goes on to further explain its ruling on page 17 of the Court Order:
As a whole, Defendants’ (SLCC's) foregoing evidence is insubstantial in carrying their burden. First, the Court notes that the OED states that the definition of “con” is a “new entry” from the OED’s third edition from September of 2002. Thus, it has no relevance to establishing an understanding of the term Comic-Con pre-1970.

Furthermore, courts (note it's plural) have routinely rejected the breaking down of phrases into their individual and often generic parts. (Citing the following case as a precedent: See Comm. for Idaho’s High Desert, Inc. v. Yost, 92 F.3d 814, 821 (9th Cir. 1996) in that case the court ruled “The district court was clearly correct in evaluating the genericness of the name as a whole, rather than looking to its constituent parts individually . . . The relevant question therefore is whether the entire name [] is generic.”)
So the court is basically saying there is a legal history and legal precedence that goes against SLCC's defense notion of generic ab initio.

Furthermore, for SLCC to make their defense notion of "generic ab initio," the Court said on page 18 the following:
Defendants (SLCC) must demonstrate that the primary significance behind the term “Comic-Con,” before Plaintiff’s (SDCC) first use, was to refer to comic conventions in general, and not to Plaintiff’s (SDCC) comic convention. (citing the case law: Krav Maga Ass’n of Am. v. Yanilov, 464 F. Supp. 2d 981, 988–89 (C.D. Cal. 2006); see also KP Permanent Make-Up, Inc., 408 F.3d at 604 (where that Court said, "holding that to determine whether a term has become generic, a court looks to whether “consumers understand the word to refer only to a particular producer’s goods or whether the consumer understands the word to refer to the goods themselves”). Unfortunately, Defendants’ evidence fails to do so.
In layman's terms, as the rule of law, SLCC needed to prove that the term "comic con" was a generic term understood and recognize by consumers (not that it merely existed). SLCC did not provide any proof that the term "comic con" was considered to be a generic term by consumers as required by legal precedence.

And thus, the court said on page 18, that even if the "genericness ab initio" defense theory was accepted, they've failed to provide any evidence to establish that consumers think the term of "comic con" to be generic in the following statement:
Based on the foregoing, even if the Court were to allow Defendants to argue a "genericness ab initio" theory, their (SLCC's) evidence would have failed to establish the absence of a genuine issue of material fact as to whether Plaintiff’s (SDCC"s) trademark was "generic ab initio".

So, to sum all that up, basically SLCC is barred from making the claim that "comic con" was a generic term prior to SDCC registering their trademarks because the higher court, 9th Circuit, finds no validity in it. Moreover, even if the claim that "comic con" was a generic term prior to SDCC trademarking it was allowed to be argued, in the context of trademark law, it must be proven that consumers believe it was a generic term; not merely prove the term existed prior to SDCC owning the trademark but rather proof that the term "comic con" was considered to be generic by consumers.

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And is it not true that SDCC attempted to trademark "Comic Con" without the dash and failed?
That is true, and is part of the reason the case is ongoing. As I posted numerous times, it's the crux of the case whether or not "comic con" is has evolved into a generic term like "aspirin." Which is being referred as "Genercide" in court papers.


To make it clear, SLCC was making two distinct arguments in its defense against the SDCC lawsuit, (1) "Genericness ab initio" where that consumers recognize the term "comic con" to be generic prior to SDCC registering its trademark and (2) "Genercide" where the brand name "Comic-Con" and/or the term "comic con" has evolved to a generic term like "aspirin" in the consumers' mind.


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Originally Posted by Mister Ed View Post
I have a better idea why they are fighting, but I still reject the notion that a generic descriptive term should have any protection as a "brand name".
I'm glad to hear that our conversation help provide a better understanding why SDCC if making a case of this as it was my only goal.

I totally understand the perspective that "comic con" is a generic term and I don't necessarily argue that it's not. That's why I'm so interested in this case now because it will answer the question of "In the eyes of the law and more importantly, in the eyes of the consumers, is "comic con" a generic term?"

The trial is about whether or not consumers believe "comic con" is a generic term; not what you or I believe as individuals or what SLCC believes respectively, but rather what the consumers believe.
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Old 12-07-2017, 07:31 PM   #33
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I think that there IS evidence that SLCC was intentionally trying to misrepresent themselves as associated with SDCC, and that sounds like some kind of fraud to me, ...
Which is why SDCC before filing a lawsuit sent a formal business letter to SLCC to stop misrepresenting themselves, to which SLCC refuse to comply with and thus the lawsuit.
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Old 12-07-2017, 09:58 PM   #34
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Furthermore, courts (note it's plural) have routinely rejected the breaking down of phrases into their individual and often generic parts. (Citing the following case as a precedent: See Comm. for Idaho’s High Desert, Inc. v. Yost, 92 F.3d 814, 821 (9th Cir. 1996) in that case the court ruled “The district court was clearly correct in evaluating the genericness of the name as a whole, rather than looking to its constituent parts individually . . . The relevant question therefore is whether the entire name [] is generic.”)
See, this is the part I find most absurd about the court’s rulings.

I can understand saying you can’t break a term down into individual pieces and call them generic when the terms aren’t all literally descriptive.

So you can’t make the argument that since “Apple” and “Computer” are both generic terms by themselves, out of context, that the two together must also be generic. That would be absurd, because the term “Apple” is not a literal description of the item in question.

But if somebody were to try to trademark the term “personal computer”, even if they were the first to create one or created the most well known one, in my opinion they should not be allowed because both parts of that term are both generic AND literally descriptive of the item in question.

When the law makes it illegal to describe something using terms that are individually generic AND all literally descriptive of that item, then in my opinion the law has overstepped the boundaries of common sense. Just being the first or best at something should not allow you to constrain others from using the language in literally descriptive ways. The fact that this is even a question contributes to the perception that lawyers create problems just to make work for themselves.

For the most part “genericide” cases deal with terms whose meanings are actually derived from the product they were coined for. Xerox, Kleenex, Coke, Band-Aid, these are all terms that can be defended against genericide because they derive their meaning from their use as names for specific products, not literal descriptions of those products. To my mind it would be absurd to allow trademark protection for “copying machine” “paper handkerchief” “carbonated beverage” or “adhesive bandage” for any of those products even if you invented them or made the best known ones.

Those hypotheticals are, to my mind, exactly equivalent to SDCC trying to restrict the use of the term “Comic Con”. It shouldn’t matter if they invented the comic convention (they didn’t, and don’t claim to have so far as I can tell), or if theirs is the best known one. That doesn’t change the fact that the term is simply a combination of two terms that are literally descriptive of the event. If they wanted trademark protection of the term the used to describe their event, they SHOULD have been required to coin a term that was not simply a literal description of it.
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Old 12-07-2017, 11:13 PM   #35
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See, this is the part I find most absurd about the court’s rulings.

I can understand saying you can’t break a term down into individual pieces and call them generic when the terms aren’t all literally descriptive.

...

When the law makes it illegal to describe something using terms that are individually generic AND all literally descriptive of that item, then in my opinion the law has overstepped the boundaries of common sense. Just being the first or best at something should not allow you to constrain others from using the language in literally descriptive ways. The fact that this is even a question contributes to the perception that lawyers create problems just to make work for themselves.
Ok, now I see a disconnect between us.

So, let's clear some things up.

First of all, nothing in the court's ruling makes anything illegal.

The court is merely stating the "ground rules" or "legal requirements" for proving a term is considered as being generic. Nothing more, nothing less.

Secondly, this is not an argument about "comic con" being a descriptive term. I have not seen any court papers stating that either SLCC or SDCC are making the argument that "comic con" is being used in the manner to describe the event. Only that "comic con" is a generic term. Saying "comic con" is a descriptive term is distinctly different than saying it's a "generic term.

Keep in mind, SLCC based their defenses on (1) "Genericness ab initio" where that consumers recognize the term "comic con" to be generic prior to SDCC registering its trademark and (2) "Genercide" where the brand name "Comic-Con" and/or the term "comic con" has evolved to a generic term like "aspirin" in the consumers' mind.


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So you can’t make the argument that since “Apple” and “Computer” are both generic terms by themselves, out of context, that the two together must also be generic. That would be absurd, because the term “Apple” is not a literal description of the item in question.

...

Those hypotheticals are, to my mind, exactly equivalent to SDCC trying to restrict the use of the term “Comic Con”. It shouldn’t matter if they invented the comic convention (they didn’t, and don’t claim to have so far as I can tell), or if theirs is the best known one. That doesn’t change the fact that the term is simply a combination of two terms that are literally descriptive of the event. If they wanted trademark protection of the term the used to describe their event, they SHOULD have been required to coin a term that was not simply a literal description of it.
You're making an inaccurate comparison with the actual arguments of the case.

Here, you're stating that "comic con" is literally descriptive and therefore the use should not be restrict. However, that's not the case with SLCC v. SDCC; it is truly about "Genercide;" whether or not "comic con" is considered a generic term by consumers and NOT whether "comic con" is a descriptive term.

Again, a generic term is different from a descriptive term. As you point out, "apple" is a generic term, but "apple" is not descriptive term.
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Old 12-07-2017, 11:48 PM   #36
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Though I admit that I've been drawn into referencing some of the specific arguments made in this case, and therefore have probably muddied my initial point, my main gripe with this whole thing is based on what seems common sense about the use of generic English terms to describe an item in literal fashion.

I really don't care how SLCC or SDCC are specifically trying to argue this exact case, I care more that it seems manifestly unfair for SDCC to even claim any kind of protection on a term that is literally descriptive, and it seems like the courts, through their rejection of any arguments based on the genericness of the individual terms making up the description, have tossed out common sense in favor of legal shenanigans.

The intial question asked by this thread was "Should San Diego Be Allowed To Trademark The Name Comic Con?" My answer to that is a definite no, in my opinion, due to my own reasoning, which may or may not bear any resemblance to the reasoning being used by either side of this case.
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Old 12-08-2017, 12:41 AM   #37
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Again, a generic term is different from a descriptive term. As you point out, "apple" is a generic term, but "apple" is not descriptive term.
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.
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Old 12-08-2017, 01:30 AM   #38
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I can see that I'm doing that thing again where I just keep arguing a point even though I have no good reason to. I apologize. I'm going to leave it at that.

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.)
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Old 12-08-2017, 07:53 PM   #39
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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.

Quote:
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.
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Old 12-08-2017, 09:14 PM   #40
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As to the question posed by the titled of this thread, "Should San Digeo be allowed to trademark the name Comic Con?" the answer is they already have in the sense they own the trademarks for "Comic Con International" and in their logo which is a registered trademark and has the word "Comic Con."




On another note, the SLCC v. SDCC case is now in the hands of the jury on whether or not "comic con" is a brand name or a generic term. I would expect the verdict to come early next week.
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Old 12-11-2017, 08:20 PM   #41
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Jury Decides For San Diego Comic-Con In Trademark Suit


In a ruling with wide-ranging implications for the multi-billion dollar fan events industry, a jury in San Diego today decided in favor of Comic-Con International (CCI), the nonprofit that has run the iconic San Diego Comic-Con for nearly 50 years, in its long-running battle with Dan Farr Productions and Bryan Brandenburg, organizers of Salt Lake City Comic Con, over the use of the term "comic con" (or comic convention) as a descriptor for a pop culture fan event.

The jury decided that the Comic Con mark is valid and that Salt Lake City used it in a way likely to cause confusion to customers.

The case was heard in Federal District Court in San Diego over the past two weeks. The jury had been deliberating since Thursday morning, when both sides concluded their final arguments. SDCC was asking for $12 million in damages, but the jury only awarded $20,000 for corrective advertising because they found the infringement not to be intentional.

In upholding the trademark, the Court ruling allows SDCC to seek licensing agreements with over 140 events in the US that call themselves comic conventions, or else require those events to rebrand.

Comic-Con vs. Comic Con. The case of Comic-Con vs. Comic Con has been seething in the background since 2014, when promotional actions taken by the Salt Lake City convention, including driving a SLCC-branded vehicle through the streets of San Diego during Comic-Con, prompted CCI to issue a stern “cease-and-desist” letter to Dan Farr Productions, claiming they were seeking to deliberately create confusion between the two events.

Farr and Brandenburg protested that the term “comic con” was generic, and that CCI’s trademark applied only to “Comic-Con” (with a hyphen). They pointed to numerous examples of fan events calling themselves comic conventions as evidence that CCI either did not own the mark as they claimed or was so inattentive to enforcement and licensing that they could not legally single out SLCC in this case.

As evidence, they cited examples of use of the term “comic con” to describe events that took place prior to the first San Diego event in 1970, and a case where CCI had withdrawn its application for a trademark on the term “Comic Con” (no hyphen) in the early 2000s.

Opinion in the event industry was frankly divided on the subject, with some organizers such as Informa (which runs Boston Comic Con in addition to other shows like FanExpo) and Left Field Media (Rose City Comic Con) opting to enter into license agreements with CCI, and others having no formal relationship. Most fan festivals avoid the issue entirely by using different branding, as in Atlanta’s DragonCon or Charlotte’s Heroes Con. At the trial, CCI’s attorney Callie Bjurstrom observed that SLCC could have avoided legal action by taking this course.
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Old 12-11-2017, 09:11 PM   #42
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Well that's very disappointing and, IMHO, illogical. Especially if this quote is literally true:

"In upholding the trademark, the Court ruling allows SDCC to seek licensing agreements with over 140 events in the US that call themselves comic conventions, or else require those events to rebrand."

Because that seems to be stating that it goes beyond "Comic Con" (which is bad enough, IMHO) to include even calling themselves a "comic convention" at all, which is beyond ludicrous.

Giving a single company veto power over whether you can legally call your event what it literally is is indefensible, IMHO. And granting them that power after many YEARS of well known examples of other events thus described, with CCI apparently making no attempt until now to take action against them goes against everything I have ever heard about under what circumstances one is able to maintain a trademark.

I'd boycott SDCC over this, but quite honestly there was never any chance I'd be going there in the first place (couldn't afford it, or spare the time), so such a gesture would be meaningless. I suppose I could boycott Rose City Comic Con, for going along with CCI's presumption, but if I haven't attended THAT by this point, I was never realistically going to do that either.
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Old 12-11-2017, 10:09 PM   #43
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Ya know, I do feel that "comic con" was a shared term by all the conventions and thus why SDCC really didn't file law suits against the other conventions. It's just that the founders of SLCC misrepresented themselves to be associated with SDCC and where pretty open about it that it triggered the lawsuit and a verdict that could potentially effect everyone else.

I don't think SLCC will actually appeal, unless they open a "Go Fund Me" page, because I read they owe about $1 million on this trial. An appeal would be another hundreds of thousands of dollars and then more for a retrial. It would be easier to change their name as they already created their own fanbase. I remember there was a comic book convention San Jose, CA called "SuperCon" but the threat of litigation from a Florida convention calling itself "SuperCon" before San Jose did caused them to change their name to BigWow ComicFest, which was bought out by Steve Wozniak, which is now called "Silicon Valley Comic Con." Would be interesting to see if Woz's would change his name on a threat of litigation, as Woz's net worth is about $100 million.
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Old 12-11-2017, 10:22 PM   #44
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I will be watching to see whether SDCC goes power mad over this verdict. I tend to agree that they had cause to be upset over some of the things that SLCC was doing, even though I disagree that the mere use of the term was one those things.

If they take this (IMHO, far too broad) decision as a cue to actually go out of their way to legally hassle the myriad other comic conventions in the country, when they apparently have not done so before, that will tell me that they ARE exactly the kind of company that SLCC tried to paint them as (even if SLCC wasn't the innocent underdog that they tried to portray THEMSELVES as in this case).
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Old 12-11-2017, 10:33 PM   #45
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Well, I do think other conventions like "New York Comic Con" and "Emerald City Comic Con" made it clear to distinguish themselves from SDCC, so much so, it could be argued that NYCC and ECCC are brand names onto themselves. As such, those conventions should file (at the very least) a Supplemental Registration as "New York Comic Con" and "Emerald City Comic Con" to prevent any potential lawsuits by SDCC.
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Old 12-11-2017, 10:37 PM   #46
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I'm more worried at this point about the clear implication of the decision (at least from your first post on it) that SDCC has the right now to object even to events calling themselves "comic conventions", even if they do not use the specific term "comic con".
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Old 12-11-2017, 11:03 PM   #47
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I don't recall saying that SDCC would have the right to prevent other conventions from using the term "Comic Convention." I may have missed typed my thoughts. At any rate, I'd doubt that the SDCC would prevent other conventions from using "Comic Convention" in their name because of this excerpt from this article where:

Callie Bjurstrom, attorney for San Diego Comic-Con told jurors that Salt Lake Comic Con hijacked the Comic-Con trademark. ... saying “You don’t need to use ‘Comic-Con’ in your name to identify your comic and popular-arts convention… Convention is a generic term. Comic-Con is a brand."
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Old 12-11-2017, 11:13 PM   #48
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I don't recall saying that SDCC would have the right to prevent other conventions from using the term "Comic Convention." I may have missed typed my thoughts. At any rate, I'd doubt that the SDCC would prevent other conventions from using "Comic Convention" in their name because of this excerpt from this article where:

Callie Bjurstrom, attorney for San Diego Comic-Con told jurors that Salt Lake Comic Con hijacked the Comic-Con trademark. ... saying “You don’t need to use ‘Comic-Con’ in your name to identify your comic and popular-arts convention… Convention is a generic term. Comic-Con is a brand."
That's good to hear. And even better to hear from one of SDCC's lawyers, since that would give people something to point to if they tried.

I was referring to where you posted:

"In upholding the trademark, the Court ruling allows SDCC to seek licensing agreements with over 140 events in the US that call themselves comic conventions, or else require those events to rebrand."

I thought that was you quoting something official, and so I thought the court was granting them the right to force even events that called themselves "comic conventions" to stop doing so, unless they licensed it from SDCC. I would hope that you would agree THAT seems a bit too broad of a power to grant them.
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Old 12-12-2017, 03:32 PM   #49
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Oh, I totally agree. I do believe "comic convention" is generic term.
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