336 F. Supp. 3d 1172
S.D. Cal.2018Background
- San Diego Comic Convention (SDCC), a nonprofit that has produced the annual "Comic-Con" event since 1970, owns three incontestable trademarks using "Comic-Con" (including "Comic Con International" and an eye-logo).
- Dan Farr Productions (DFP) began operating "Salt Lake Comic Con" (later renamed "FanX Salt Lake Comic Convention") in 2013. SDCC sued DFP for federal trademark infringement and false designation of origin.
- After an eight-day jury trial, the jury found DFP infringed SDCC's service marks but found for DFP on unfair competition/false designation; awarded SDCC $20,000 for corrective advertising.
- DFP moved under Fed. R. Civ. P. 50 for judgment as a matter of law (JMOL) challenging (1) genericness of SDCC's marks and (2) likelihood of confusion; SDCC opposed.
- The district court reviewed the record under the JMOL standard (viewing evidence in the light most favorable to the nonmoving party and requiring that only one reasonable conclusion be possible to overturn the verdict) and denied DFP's motion in full.
Issues
| Issue | Plaintiff's Argument (SDCC) | Defendant's Argument (DFP) | Held |
|---|---|---|---|
| Are SDCC's "Comic-Con" marks generic? | Marks are not generic; survey and media evidence show primary significance as SDCC's brand. | "Comic Con" is widely used by third parties and the media; SDCC even used the phrase generically; survey is flawed. | Denied. Substantial evidence (Teflon survey, media, usage history) supports jury finding that marks are not generic. |
| Was DFP's use likely to cause consumer confusion (Salt Lake Comic Con vs. Comic‑Con)? | Use created likelihood of confusion: strong marks, near-identical services, actual confusion, defendant's intent. | Lack of confusion survey, limited instances of confusion, and expert testimony undermine likelihood of confusion. | Denied. Sleekcraft factors viewed in plaintiff's favor provide sufficient evidence of likelihood of confusion. |
| Did evidence show DFP's intent to appropriate SDCC's mark? | Evidence (emails, research, cease‑and‑desist awareness) shows DFP knew of SDCC's marks and adopted similar mark. | DFP disputed state of mind evidence as insufficient. | Denied. Trial record supports inference DFP intended to adopt a similar mark. |
| Do same conclusions apply to SDCC's other incontestable marks (Comic Con International and eye logo)? | SDCC argued dominant "Comic Con" element supports infringement of other marks. | DFP reasserted earlier arguments as to genericness and nonconfusion. | Denied. Court found the same record supports likelihood of confusion as to the other two trademarks. |
Key Cases Cited
- Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133 (2000) (JMOL standard: evidence viewed in light most favorable to nonmoving party)
- AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979) (establishes Sleekcraft likelihood‑of‑confusion factors)
- Park 'N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189 (1985) (incontestable registration may still be challenged on genericness grounds)
- Elliott v. Google, Inc., 860 F.3d 1151 (9th Cir. 2017) (test for primary significance of a mark to the public)
- KP Permanent Make‑Up, Inc. v. Lasting Impression I, Inc., 408 F.3d 596 (9th Cir. 2005) (incontestable registration as conclusive evidence of validity subject to genericness challenge)
- Brookfield Commc'ns, Inc. v. W. Coast Entm't Corp., 174 F.3d 1036 (9th Cir. 1999) (Sleekcraft factors are pliant; some factors weigh more heavily)
- Rearden LLC v. Rearden Commerce, Inc., 683 F.3d 1190 (9th Cir. 2012) (discusses analysis of mark similarity and salient features)
- Freecycle Network, Inc. v. Oey, 505 F.3d 898 (9th Cir. 2007) (discussion of genericide and public appropriation of marks)