(CN) – Considering whether to travel back in time 50 years to resolve a trademark question not considered by a jury when it found San Diego Comic-Con’s mark is enforceable, a Ninth Circuit panel on Wednesday questioned whether the term “Comic Con” was generic when first used by the decades-old comic convention.
In 2017, a six-person jury found San Diego Comic-Con’s trademark was enforceable, awarding the comic convention $20,000 in damages caused by Salt Lake Comic Con’s use of the trademark.
The San Diego convention had asked for $12 million in damages.
U.S. District Judge Anthony Battaglia awarded the owners and operators of the San Diego convention nearly $4 million in attorney’s fees the following year and blocked others from using the term “Comic Con” to describe or advertise their comic and pop arts events.
But Salt Lake Comic Con – which changed its name to FanX Salt Lake Comic Convention following the jury verdict in the Southern District of California – asked the Ninth Circuit to find Battaglia erred when he wouldn’t allow the convention to argue during trial that San Diego’s trademark was generic at the time of adoption and therefore unenforceable.
Horvitz & Levy attorney Eric Boorstin, representing the owners and operators of the Salt Lake convention – Daniel Farr, Bryan Brandenburg and Dan Farr Productions – told a Ninth Circuit panel “’Comic Con’ is a generic term for comic convention; that was true before San Diego ran its first convention, so it remains true today.”
Boorstin said based on a “generic when adopted theory,” Comic Con was a generic term when the first San Diego convention was held in 1970 and could not be trademarked, an argument San Diego jurors never got to consider because it was tossed on summary judgment by Battaglia prior to trial.
“The undisputed facts show that attendees at early Comic Cons would understand ‘Comic Con’ to refer to a type of event rather than a source,” Boorstin said.
“To the extent we’re looking far back in time, that’s the unique facts of this case where San Diego has allowed hundreds of Comic Cons to spring up, waiting 35 years before registering the term,” Boorstin added.
U.S. Circuit Judge Jacqueline Nguyen asked what should happen to the case given the jury verdict and Battaglia’s attorney’s fees award, bolstered by the judge’s finding the case was “exceptional” and warranted the hefty award.
Boorstin responded the Ninth Circuit should award the Salt Lake convention summary judgment.
“The alternative is saying the district court got it wrong in saying this defense is categorically unavailable and then send it back to the district court to do what it will with it,” Nguyen, a Barack Obama appointee, responded.
When Nguyen posed the same question to Pillsbury Winthrop Shaw Pittman attorney Kevin Fong, representing San Diego Comic-Con, he said if the Ninth Circuit found the generic issue should have been tried in court, it’d be a difficult task to go back and get direct testimony about what comic convention attendees thought the trademark meant in 1970.
“I don’t know how you try an issue like that, it’s obviously very difficult to do a survey based on what people thought in 1970,” Fong said.
U.S. Circuit Judge Kim McLane Wardlaw, a Bill Clinton appointee, questioned the line between a trademark being descriptive or being generic, pointing out when San Diego Comic-Con sought a trademark it was originally denied by the U.S. Patent and Trademark Office for not being distinctive enough until the San Diego convention submitted an affidavit showing the mark had acquired a secondary meaning.
Boorstin suggested the affidavit wasn’t filed according to the patent office’s understanding of “exclusive use” to mean no one else was using a mark, as there were dozens of other comic conventions that used the term “Comic Con” at the time the trademark was sought.
“The PTO isn’t performing a search and inquiry to determine the truthfulness of the affidavit,” Boorstin said.
He also pointed out Ninth Circuit precedent that a generic mark cannot become a trademark under any circumstances.
“The way to give that meaning in the district court is to allow us to prove what that term meant in 1970 when San Diego adopted the term,” Boorstin said.
“All reasonable fact finders would adopt one conclusion: the term Comic Con in 1970 meant a comic convention. San Diego presents no evidence to the contrary,” he added.
Chief U.S. Circuit Judge Sidney Thomas, also a Clinton appointee, noted the panel was being asked to make a novel ruling regarding whether the generic argument could supersede an incontestable trademark – that is, a trademark immune from being challenged because among other criteria, it had been in consistent use for five consecutive years.
The matter was taken under submission.