Farr JMOL Motion

Case 3:14-cv-01865-AJB-JMA Document 429-1 Filed 01/16/18 PageID.
39418 Page 1 of 27
1 Michael I. Katz (SBN 181728)

mkatz@mabr.com
2 L. Rex Sears (SBN 294,533)
3 rsears@mabr.com
MASCHOFF BRENNAN LAYCOCK
4 GILMORE ISRAELSEN & WRIGHT, PLLC
5 20 Pacifica, Suite 1130
Irvine, California 92618
6 Telephone: (949) 202-1900
7 Facsimile: (949) 453-1104
Charles J. Veverka (pro hac vice, UT State Bar No. 7,110)
8
cveverka@mabr.com
9 MASCHOFF BRENNAN LAYCOCK
GILMORE ISRAELSEN & WRIGHT, PLLC
10
1389 Center Drive, Suite 300
11 Park City, Utah 84098
12 Telephone: (435) 252-1360
Facsimile: (435) 252-1361
13
Attorneys for Defendants and Counterclaimants DAN FARR PRODUCTIONS, LLC,
14 DANIEL FARR, and BRYAN BRANDENBURG
15 UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF CALIFORNIA
16
17 SAN DIEGO COMIC CONVENTION, a Case No. 14-cv-1865-AJB-JMA
California nonprofit corporation,
18 DEFENDANTS’ MEMORANDUM
19 Plaintiff, OF POINTS AND AUTHORITIES
v. IN SUPPORT OF DEFENDANTS’
20 RENEWED MOTION FOR
21 DAN FARR PRODUCTIONS, a Utah limited JUDGMENT AS A MATTER OF
liability company; and DANIEL FARR and LAW ON GENERICNESS AND
22 BRYAN BRANDENBURG, individuals, NONINFRINGEMENT PURSUANT
23 Defendants. TO FED. R. CIV. P. 50(B)
24 Date: May 3, 2018
25 Time: 2:00 p.m.
Courtroom: 4A (4th Floor Schwartz)
26 AND RELATED COUNTERCLAIMS Judge: Hon. Anthony Battaglia
27
28
Case 3:14-cv-01865-AJB-JMA Document 429-1 Filed 01/16/18 PageID.39419 Page 2 of 27
1 TABLE OF CONTENTS
2 I. INTRODUCTION ................................................................................................... 1
3 II. LEGAL STANDARD ............................................................................................. 1
4
III. THE EVIDENCE OVERWHELMINGLY SHOWS SDCC’S MARKS ARE
5 GENERIC ................................................................................................................ 2
6 A. The Widespread Use of “Comic Con” by SDCC’s Competitors was
7 Strong Evidence of Genericide ..................................................................... 3
8 B. Media Usage of “Comic Con” Strongly Supported a Finding of the
9 Genericness of the Term ............................................................................... 4
10 C. The Generic Use of “Comic Con” by SDCC Itself Favors Genericness ...... 7
11 D. Consumer Surveys Do Not Conclusively Establish Comic Con is Not
12 Generic .......................................................................................................... 7
13 IV. JUDGMENT THAT CONFUSION IS NOT LIKELY SHOULD BE

ENTERED AS A MATTER OF LAW ................................................................... 9
14
15 A. Evidence Disproving Confusion ................................................................. 10
16 B. SDCC Did Not Introduce Sufficient Evidence of a Likelihood of Confusion

with the Word Mark COMIC-CON ............................................................ 11
17
18 1. SDCC Did Not Show that COMIC-CON Is Strong ......................... 12
19 2. Because COMIC-CON Is Weak, Similarity of Services

Matters Less ...................................................................................... 14
20
21 3. SDCC Did Not Show How COMIC-CON Is Used in the
Marketplace ....................................................................................... 14
22
4. The Empirical Evidence Affirmatively Disproves Confusion ......... 15
23
24 5. Shared Reliance on Internet Marketing Is Inconsequential .............. 16
25 6. Price and Sophistication Tell Against Confusion ............................. 16

26 7. SDCC Closed its Evidence Without Presenting Evidence of
27 Defendants’ Intent ............................................................................. 16
28
i Case No. 14-cv-1865-AJB-JMA

1 C. SDCC Did Not Introduce Sufficient Evidence of a Likelihood of

Confusion with its Eye Logo ....................................................................... 17
2
D. SDCC Did Not Introduce Sufficient Evidence of a Likelihood of
3 Confusion with the Word Mark COMIC CON INTERNATIONAL ......... 19
4
V. CONCLUSION...................................................................................................... 19
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
ii Case No. 14-cv-1865-AJB-JMA

1
TABLE OF AUTHORITIES
2
Page(s)
3
Cases
4
5 Alpha Industrial, Inc. v. Alpha Steel Tube & Shapes, Inc.
616 F. 2d 440 (9th Cir. 1980) ....................................................................................... 13
6
AMF Inc. v. Sleekcraft Boats
7
599 F.2d 341 (9th Cir. 1979) ........................................................................ 8, 11, 17, 18
8
Boston Sci. Corp. v. Johnson & Johnson
9 550 F. Supp. 2d 1102 (N.D. Cal. 2008) .......................................................................... 1
10
Brookfield Communications, Inc. v. West Coast Entertainment Corp.
11 174 F.3d 1036 (9th Cir. 1999) ................................................................................ 10, 16
12 Cairns v. Franklin Mint Co.
13 24 F. Supp. 2d 1013 (C.D. Cal. 1998) ............................................................................ 9
14 Classic Foods Intern. Corp. v. Kettle Foods, Inc.,
Civ. No. 4-cv-725, 2006 WL 5187497 (S.D. Cal. March 2, 2006) ................................ 5
15
16 Classic Foods International Corp. v. Kettle Foods, Inc.
468 F. Supp. 2d 1181 (C.D. Cal. 2007) ...................................................................... 3, 4
17
Denver Urban Homesteading, LLC v. Dervaes Institute
18
2015 WL 12552043 (C.D. Cal. Nov. 5, 2015) ............................................................... 7
19
Dreamwerks Product Group, Inc. v. SKG Studio
20 142 F.3d 1127 (9th Cir. 1998) ...................................................................................... 11
21
Elliot v. Google, Inc.
22 860 F.3d 1151 (9th Cir. 2017) ........................................................................................ 2
23 Entrepreneur Media, Inc. v. Smith
24 279 F.3d 1135 (9th Cir. 2002) ................................................................................ 13, 18
25 Essence Communication, Inc. v. Singh Industries, Inc.
26 703 F. Supp. 261 (S.D.N.Y.1988) .................................................................................. 9
27 Filipino Yellow Pages, Inc. v. Asian Journal Publications Inc.

198 F.3d 1143 (9th Cir. 1999) ........................................................................................ 2
28
iii Case No. 14-cv-1865-AJB-JMA

1 Freecycle Network, Inc. v. Oey

505 F.3d 898 (9th Cir. 2007) .......................................................................................... 3
2
Frito-Lay North America, Inc. v. Princeton Vanguard, LLC
3 124 U.S.P.Q.2d 1184 (T.T.A.B. Sept. 6, 2017) .............................................................. 7
4
Krav Maga Association of America, Inc. v. Yanilov
5 464 F. Supp. 2d 981 (C.D. Cal. 2006) ............................................................................ 4
6 Lindy Pen Co. Inc. v. Bic Pen Corp.
7 725 F.2d 1240 (9th Cir. 1984) ...................................................................................... 14
8 Miller Brewing Co. v. Joseph Schlitz Brewing Co.
9 605 F.2d 990 (7th Cir. 1979) .......................................................................................... 7
10 Mytee Products, Inc. v. Shop Vac Corp.

No. 13-cv-1610, 2013 WL 5945060 (S.D. Cal. Nov. 4, 2013) .................................... 15
11
12 National Nonwovens, Inc. v. Consumer Products Enterprises, Inc.
397 F.Supp.2d 245 (D. Mass. 2005) ............................................................................... 7
13
Official Airline Guides, Inc. v. Goss
14 6 F.3d 1385 (9th Cir. 1993) .......................................................................................... 10
15
One Industries, LLC v. Jim O’Neal Distributing, Inc.
16 578 F.3d 1154 (9th Cir. 2009) ...................................................................................... 12
17
Playboy Enterprises v. Netscape Communications Corp.
18 55 F. Supp. 2d 1070 (C.D. Cal. 1999) ............................................................................ 9
19 Playboy Enters., Inc. v. Netscape Communications Corp.
20 354 F.3d 1020 (9th Cir. 2004) ...................................................................................... 15
21 Plough, Inc. v. Kreis Laboratories

314 F.2d 635 (9th Cir. 1963) ........................................................................................ 18
22
23 Premier Nutrition, Inc. v. Organic Food Bar, Inc.
327 Fed. Appx. 723 (9th Cir. 2009)................................................................................ 2
24
Roxane LLC v. Fiji Water Co. LLC
25
569 F. Supp. 2d 1019 (N.D. Cal. 2008) ...................................................................... 2, 3
26
Schwan’s IP, LLC v. Kraft Pizza Co.
27 460 F.3d 971 (8th Cir. 2006) .......................................................................................... 7
28
iv Case No. 14-cv-1865-AJB-JMA

1 Self-Realization Fellowship Church v. Ananda Church of Self-Realization

59 F.3d 902 (9th Cir. 1995) ............................................................................................ 6
2
Sportvision, Inc. v. Sportsmedia Technology Corp.
3 No. 04-cv-03115, 2005 WL 1869350 (N.D. Cal. Aug. 4, 2005) .............................. 9, 17
4
Stuhlbarg International Sales Co., Inc. v. John D. Brush and Co., Inc.
5 240 F.3d 832 (9th Cir. 2001) .......................................................................................... 7
6 Surfvivor Media, Inc. v. Survivor Productions
7 406 F.3d 625 (9th Cir. 2005) ........................................................................................ 10
8 Yellow Cab Co. of Sacramento v. Yellow Cab of Elk Grove, Inc.
9 419 F.3d 925 (9th Cir. 2005) .......................................................................................... 2
10 Rules
11 Federal Rule of Civil Procedure 50 ..................................................................................... 1
12 Other Authorities
13
McCarthy, Trademarks and Unfair Competition § 12:13 (5th ed.)..................................... 4
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
v Case No. 14-cv-1865-AJB-JMA

1 I. INTRODUCTION
2 At trial, Plaintiff and counterdefendant San Diego Comic Convention (“SDCC”)
3 alleged that defendants and counterclaimants Dan Farr Productions, LLC, Daniel Farr,
4 and Bryan Brandenburg’s (collectively, “DFP”) use of the mark SALT LAKE COMIC
5 CON in connection with a comic and popular arts convention infringed SDCC’s
6 trademark rights in the following three registered trademarks:
7 COMIC-CON
8 COMIC CON INTERNATIONAL
9
10
11
12
13 DFP disputed that the marks as asserted by SDCC are subject to any trademark protection
14 because the term “comic con” is generic. DFP also contended that it did not infringe the
15 asserted marks. On special verdict, the jury found each asserted mark valid and infringed,
16 but also found that infringement was not willful and that SDCC had sustained only
17 $20,000 in damages.1
18 II. LEGAL STANDARD
19 Rule 50(a) authorizes a court to resolve an issue against a party and grant a motion
20 for judgment as a matter of law if the court finds that a reasonable jury would not have a
21 legally sufficient evidentiary basis to find for that party on an issue.2 If the Court denies a
22 party’s Rule 50(a) motion for judgment as a matter of law, the movant may file a
23 renewed motion for judgement as a matter of law under Rule 50(b). A court should grant
24 a Rule 50(b) renewed motion for judgment as a matter of law when “the evidence
25 construed in the light most favorable to the non-moving party permits only one
26
27 1
See ECF Doc. 395.
28 2
FED. R. CIV. P. 50(a).
1 Case No. 14-cv-1865-AJB-JMA

1 reasonable conclusion as to the verdict and that conclusion is contrary to the jury's
2 verdict.” Boston Sci. Corp. v. Johnson & Johnson, 550 F. Supp. 2d 1102, 1109 (N.D. Cal.
3 2008) (citing Air–Sea Forwarders, Inc. v. Air Asia Co., 880 F.2d 176, 181 (9th
4 Cir.1989)). DFP’s Renewed Motion should be granted because, as shown below, a
5 reasonable jury could not have found that SDCC’s “COMIC-CON” mark was not
6 generic, nor did SDCC present sufficient evidence at trial for a reasonable jury to find
7 that DFP engaged in infringement. As such, the Court should, notwithstanding the jury’s
8 special verdict, enter judgement that the asserted marks are generic and not infringed.
9 Alternatively, the Court should enter judgment that, at least, the COMIC CON mark is
10 generic, and the COMIC CON INTERNATIONAL trademark and the eye logo
11 trademark are not infringed by DFP.
12 III. THE EVIDENCE OVERWHELMINGLY SHOWS SDCC’S MARKS ARE
13 GENERIC
14 Generic terms are not valid marks and are not subject to trademark protection under
15 any circumstance.3 A generic term is one that fails to identify the source of a product or
16 service because it refers to the product or service itself.4 A registered trademark is generic
17 when the “primary significance of the registered mark to the relevant public” is as the
18 name for a particular type of good or service irrespective of its source.”5 To find whether
19 the primary significance of a mark is generic, courts consider several factors: how the
20
21
22
23
24 3
Filipino Yellow Pages, Inc. v. Asian Journal Publ’ns Inc., 198 F.3d 1143, 1146 (9th Cir.
25 1999); Elliot v. Google, Inc., 860 F.3d 1151, 1155 (9th Cir. 2017).
4
26 Filipino Yellow Pages, Inc. v. Asian Journal Publ’ns Inc., 198 F.3d 1143, 1147 (9th Cir.
1999) (citing Surgicenters of Am., Inc. v. Medical Dental Surgeries Co., 601 F.2d 1011,
27
1014 (9th Cir. 1979) (affirming summary judgment that “surgicenters” is generic)).
28 5
Id. (citing Ty Inc. v. Softbelly’s Inc., 353 F.3d 528, 531 (7th Cir. 2003).

1 media uses the term, whether the plaintiff uses the term generically, widespread use by
2 competitors, and consumer surveys.6 Whether a mark is generic is a question of fact.7
3 “Comic con” is a generic term for comic conventions because it describes what it is
4 (e.g. a comic convention) rather than who it is (e.g. the comic con producer).
5 A. The Widespread Use of “Comic Con” by SDCC’s Competitors was Strong
Evidence of Genericide
6
Genericness has been found to exist where a trademark owner has failed to police its
7
marks, resulting in widespread use by competitors.8 Federal courts view use of a mark by
8
competitors in the industry as strong and compelling evidence of how the public
9
perceives the term.9 Terms that are more frequently seen in a particular field by members
10
of the public are less likely to be identified with one particular producer, and, as such,
11
support a finding of the genericness of a mark.10
12
The term “comic con” is and has been used generically by many third party comic
13
cons for years, and in some cases, decades.11 DFP introduced into evidence a list of 103
14
15
16 6
Premier Nutrition, Inc. v. Organic Food Bar, Inc., 327 Fed. Appx. 723, 724 (9th Cir.
17 2009) (dictionary definitions, generic media usage of the term, competitors’ usage,
plaintiff’s generic usage, and a consumer survey reinforced genericness conclusion);
18 Roxane LLC v. Fiji Water Co. LLC, 569 F. Supp. 2d 1019, 1027 (N.D. Cal. 2008)
19 (“Courts view a mark's use by competitors as strong evidence of how the public perceives
the term.”).
20 7
Yellow Cab Co. of Sacramento v. Yellow Cab of Elk Grove, Inc., 419 F.3d 925, 929 (9th
21 Cir. 2005).
8
22 Freecycle Network, Inc. v. Oey, 505 F.3d 898, 905 (9th Cir. 2007).
9
23 Classic Foods Int’l Corp. v. Kettle Foods, Inc., 468 F. Supp. 2d 1181, 1190 (C.D. Cal.
2007); CG Roxane LLC v. Fiji Water Co. LLC, 569 F. Supp. 2d 1019, 1027 (N.D. Cal.
24 2008)(holding that a competitors use of a mark is compelling evidence of genericness as
25 it reflects how the public identifies the term).
10
Id.
26 11
Trial Ex. Nos. 728, 1296, 1299, 1302, 1303, 1373; see also November 29, 2017 p.m.
27 transcript 23:23-24:22 (“Q. Are you familiar with Motor City Comic Con? A. Yes. Q.
Are they one of the more well-established comic conventions in the country? A. They’ve
28
been around for years.”); November 29, 2017 p.m. transcript 44:16-19 (“Okay. With

Case 3:14-cv-01865-AJB-JMA Document 429-1 Filed 01/16/18 PageID.39427 Page 10 of
27
1 different comic cons using “comic con”, and similar variations, as part of their
2 convention names between 2011 and 2017.12 These third parties use “comic con” in their
3 names to generically refer to the type of event being hosted—a comic convention.
4 Examples of third party comic cons include, but are in no way limited to: New York
5 Comic Con; Emerald City Comic Con; and Denver Comic Con.13 One of the largest
6 producers of comic cons in the U.S., Wizard World, produces nearly two dozen different
7 comic cons in various U.S. states—each of which use “comic con” in the title of the
8 convention name.14 SDCC’s representative Mr. Glanzer admitted that at least as early as
9 2010, SDCC was aware that there were third parties naming themselves comic con
10 throughout the country.15 SDCC’s Executive Director, Ms. Desmond, testified about
11 Chicago Comic Con operating in the 1970’s.16 Moreover, SDCC allows other third party
12 comic cons to promote their unaffiliated conventions at SDCC’s event.17
13 The extensive use of “comic con” by SDCC’s competitors is overwhelming
14 evidence that the term has become generic.
15 B. Media Usage of “Comic Con” Strongly Supports a Finding of the Genericness
of the Term
16
Generic use of a term by the media is a “strong indication of the general public’s
17
perception.”18 Courts have found that the media usage of a term can show how the public
18
19
respect to New York . . . There’s been the – New York Comic Con has been there for
20 over a decade correct? A. Yes. “); December 4, 2017 p.m. transcript 118:23-120:10.
21 12
Trial Ex. No. 1351.
13
22 Trial Ex. Nos. 728, 1296, 1299, 1302, 1303.
14
23 See Trial Ex. Nos. 728, 1291, 1378; December 4, 2017 a.m. transcript 6:23-7:20,
11:25-12:25.
24 15
November 29, 2017 p.m. transcript 48:19-50:7; Trial Ex. No. 708.
25 16
November 30, 2017 a.m. transcript 82:3-10.
17
26 Trial Ex Nos. 751, 752, 868; November 30, 2017 a.m. transcript 77:10-80:16;
December 4, 2017 a.m. transcript 85:23-86:23.
27 18
McCarthy, Trademarks and Unfair Competition § 12:13 (5th ed.)(citing Murphy Door
28 Bed Co v. Interior Sleep Sys., Inc., 874 F.2d 95, 101 (2d Cir. 1989)).

27
1 perceives the term as the media “is often considered to have its finger on the pulse of the
2 general public. . . ”19 The press can shape public interpretations – if consumers
3 “repeatedly encounter a term used generically in the media, they will be much more
4 likely to use the term generically themselves.”20
5 DFP provided substantial evidence of the media’s use of the term “comic con” to
6 generically describe or refer to comic conventions. For example, DFP presented
7 numerous articles reporting on the various comic cons taking place throughout the United
8 States.21 These articles consistently used “comic con” to refer to the type of event being
9 offered, and not to denote a specific producer. DFP provided evidence of media
10 publications or reports with titles such as: “Comic-Con Arrives in Central Texas,”22
11 “Comic Con brand brings show to Tulsa for first time ever”23 and “Comic Con Comes to
12 Atlanta.”24 Each of these references speak to comic cons generically to mean a comic
13 convention and not to identify SDCC’s convention. SDCC’s representative Ms. Desmond
14 testified that she was aware the press used comic con to refer to unaffiliated third party
15 comic cons; namely, New York Comic Con.25
16 In response to DFP’s evidence of generic use in the media, SDCC provided scant
17 evidence of the media using “comic con” to refer specifically to SDCC’s event.26
18
19
Classic Foods Int’l Corp. v. Kettle Foods, Inc., 468 F. Supp. 2d 1181, 1190 (C.D. Cal.
19 2007).
20 20
Id. at 1189; see also Krav Maga Ass’n of Amer., Inc. v. Yanilov, 464 F. Supp. 2d 981,
21 987 (C.D. Cal. 2006) (noting that defendant’s use of “advertisements, trade journals,
magazine articles and various publications” including a definition from Wikipedia, has
22 been “deemed sufficient to demonstrate the genericness of a term.”)
21
23 Trial Ex. Nos. 722, 1293, 1305, 1364, 1365, 1367, 1368, 1370, 1371, 1372; November
29, 2017 p.m. transcript 89:3-23.
24 22
Trial Ex. No. 1296; see also November 29, 2017 p.m. transcript 22:9-19.
25 23
Trial Ex. No. 1299; see also November 29, 2017 p.m. transcript 26:13-20.
26 24
Trail Ex. No. 1302; see also November 29, 2017 p.m. transcript 27:3-8.
25
27 November 30, 2017 a.m. transcript 87:17-20.
26
Classic Foods Intern. Corp. v. Kettle Foods, Inc., Civ. No. 4-cv-725, 2006 WL
28
5187497, at *12 (S.D. Cal. March 2, 2006) (“Although KFI submits roughly the same

27
1 Notably, after the introduction into evidence of each media publication or article,
2 SDCC’s representative, Mr. Glanzer, had to clarify that the evidence at hand referred to
3 SDCC’s comic con, and not other third party comic cons; otherwise, the jury would be
4 left guessing exactly which of the over 100 comic cons was being referenced.27
5 However, even more concerning is that, as opposed to DFP’s evidence of
6 independent media use, the majority of SDCC’s alleged media uses were from sources
7 that have a business relationship with SDCC. For example, SDCC introduced two
8 magazine covers from the TV Guide Magazine and Entertainment Weekly as non-generic
9 media usage of COMIC-CON. Yet, both TV Guide and Entertainment Weekly have
10 business connections with SDCC, where Entertainment Weekly provides SDCC
11 monetary contributions to sponsor events occurring during SDCC’s convention for its
12 own promotion.28 Similarly, SDCC introduced evidence from the TV shows The Big
13 Bang Theory and The Conan O’Brien Show as non-generic use. However, the producers
14 of those television shows also have analogous sponsorship relationships with SDCC. This
15 scant evidence of biased media usage provided by SDCC does nothing to discount DFP’s
16 overwhelming evidence of generic use by the true independent media. Put simply,
17 SDCC’s purported media from sources it has commercial relations with “do not reflect
18 the views of the purchasing public,” and therefore the only actual media usage “reflecting
19 the views of the purchasing public” was submitted by DFP, and supports the conclusion
20 that “COMIC CON” is generic.29
21
22 number of articles referring to “Kettle” as a brand name for its chips, the fact remains that
“Kettle” is widely used in a descriptive sense in the media and the industry.”)
23 27
See November 28, 2017 p.m. transcript 102:8-104:1; November 29, 2017 a.m.
24 transcript at 4:1-13:5.
28
25 Trial Ex. No. 1353; November 30, 2017 p.m. transcript 103:19-106:1, 106:8-107:6,
107:21-108:5.
26 29
See Krav Maga Ass’n of Am., Inc. v. Yanilov, 464 F. Supp. 2d 981, 988 (C.D. Cal.
27 2006) (“declarations are from … former students, a licensee … and an advertising
director of a publication that KMAA advertises in” “are insufficient to raise a genuine
28
issue as to … genericness” because “[a]ttestations from persons in close association and

27
1 C. The Generic Use of “Comic Con” by SDCC Itself Favors Genericness

Evidence that a plaintiff has used a term in a generic manner has been found by
2
courts to be strong evidence that the term is generic.30
3
As presented at trial, SDCC’s executives and employees use “comic con”
4
generically to describe other comic cons around the country.31 Particularly, DFP
5
introduced into evidence an email between SDCC executives stating: “I think it’s really
6
important that we state, as we did at WonderCon, how we are different from other shows
7
… especially other Comic Con’s. Comikaze, Salt Lake and Wizard.”32 Even at trial,
8
SDCC’s representative Mr. Glanzer used “comic con” generically.33
9
SDCC’s own generic usage of “comic con” strongly favors a finding of genericide.
10
D. Consumer Surveys Do Not Conclusively Establish That Comic Con is Not
11
Generic
12 At trial, SDCC offered testimony from its retained expert Matthew Ezell (“Ezell”) to
13 discuss a “Teflon” survey that SDCC commissioned to address the issue of genericness.
14 Based on this survey, Ezell opined that approximately 83% of survey respondents (which
15
16
17
intimate contact with the trademark plaintiffs business do not reflect the views of the
18 purchasing public”); see also Self-Realization Fellowship Church v. Ananda Church of
Self-Realization, 59 F.3d 902, 910 (9th Cir.1995) (“Trademark law is skeptical of the
19
ability of an associate of a trademark holder to transcend personal biases to give an
20 impartial account of the value of the holder’s mark.”).
30
21 Self-Realization Fellowship Church v. Ananda Church of Self-Realization, 59 F.3d
902, 909 (9th Cir. 1995)(citing McCarthy, Trademarks and Unfair Competition §
22 12.02[7][b](2)).
23 31
Trial Ex. Nos. 721, 715, 1320 (“When I moved to San Diego, decided the west coast
24 needed a good comic con”); November 29, 2017 p.m. transcript at 72:24-73:17, 75:23-
76:18, 95: 3-22.
25 32
Trial Ex. No. 724; November 29, 2017 p.m. transcript at 71:5-72:15.
26 33
November 29, 2917 p.m. transcript at 81:15-21. (“Q. Aren’t you a local comic con? A.
27 Excuse me? Q. Are you a regional comic convention? A. We’re a comic con in San
Diego. Q. Aren’t you are an international comic con? A. We are.”) see also Trial Ex. No.
28 205-24, CC 417124.

27
1 totaled only 406 individuals34) believed “Comic Con” was a brand name and not a
2 generic name.35
3 However, many Circuits, and the Trademark Trial and Appeal Board, have held that
4 Teflon surveys are “only appropriate to consider in a case where the question is whether a
5 coined or arbitrary mark has become generic, and is not appropriate to prove recognition
6 of an otherwise not inherently distinctive mark.”36 Thus, because SDCC did not coin the
7 mark in question, nor is the mark arbitrary, SDCC’s Teflon survey is “not appropriate”
8 evidence because such a survey methodology is not capable of proving “recognition of an
9 otherwise not inherently distinctive mark.”37 Further, consumer surveys are not
10 necessarily required to prove genericness of a term and a survey may be given little
11 weight if flawed.38
12 In addition to inability to prove recognition of a non-inherently distinctive mark,
13 SDCC’s Teflon survey shows a number of deficiencies and should be afforded little, if
14 any weight. Specifically, DFP’s expert, Andrew Baker, Ph.D., testified that Mr. Ezell’s
15 survey suffered from critical and invalidating design flaws that rendered Mr. Ezell’s
16
17
18 34
December 1, 2017 a.m. transcript 27:3-5.
35
19 Trial Ex. No. 645; December 1, 2017 a.m. transcript 31:25-32:17.
36
20 Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, 124 U.S.P.Q.2d 1184
(T.T.A.B. Sept. 6, 2017) (citing Hunt Masters, Inc. v. Landry’s Seafood Restaurant, Inc.,
21 240 F.3d 251, 57 (4th Cir. 2001); Miller Brewing Co. v. Jos. Schlitz Brewing Co., 605
22 F.2d 990 (7th Cir. 1979); Schwan’s IP, LLC v. Kraft Pizza Co., 460 F.3d 971 (8th Cir.
2006); National Nonwovens, Inc. v. Consumer Products Enterprises, Inc., 397 F.Supp.2d
23 245 (D. Mass. 2005).
37
24 Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, 124 U.S.P.Q.2d 1184
(T.T.A.B. Sept. 6, 2017).
25 38
Denver Urban Homesteading, LLC v. Dervaes Institute, 2015 WL 12552043 (C.D. Cal.
26 Nov. 5, 2015)(citing Suh v. Yang, 987 F. Supp. 783, 791 n.4 (N.D. Cal. 1997) (noting
27 that, although consumer survey evidence has become de rigueur in litigation over
genericness, such evidence is not required); Stuhlbarg Intern. Sales Co., Inc. v. John D.
28 Brush and Co., Inc., 240 F.3d 832, 840 (9th Cir. 2001).

27
1 findings both unreliable and inflated.39 The Court itself expressed its own fears regarding
2 the accuracy of the survey’s conclusions.40
3 IV. JUDGMENT THAT CONFUSION IS NOT LIKELY SHOULD BE
4 ENTERED AS A MATTER OF LAW
At trial SDCC asserted three marks: (1) the word mark COMIC-CON,
5
(2) the word mark COMIC CON INTERNATIONAL, and (3) the eye logo
6
shown at right. SDCC’s infringement case comes down to this: SDCC has a
7
strong brand; and because SALT LAKE COMIC CON includes “comic
8
con,” the marks are confusingly similar. But SDCC’s evidence of brand strength is tied to
9
the eye logo, while its similarity argument attaches to COMIC-CON—and neither, alone,
10
could sustain a jury finding in SDCC’s favor, especially in the face of the overwhelming
11
empirical evidence of no confusion. Below, DFP first summarizes evidence disproving
12
confusion that is applicable to all three asserted marks, and then separately applies the
13
Sleekcraft factors to each mark.
14
Here, SDCC rode two horses at once. When it comes to establishing strength of
15
mark and the like, SDCC lumped COMIC-CON together with COMIC CON
16
INTERNATIONAL and the eye logo because those other marks have some market
17
strength and the logo even has conceptual strength; but then, when assessing similarity,
18
SDCC endeavored to disregard the graphic elements of the logo and the
19
INTERNATIONAL in COMIC CON INTERNATIONAL, which are bound up with their
20
strength. But SDCC cannot have it both ways.
21
Considered in isolation from the eye logo and COMIC CON INTERNATIONAL,
22
COMIC-CON is weak and SDCC entirely failed to present evidence of marketplace use.
23
If, on the other hand, actual marketplace use is taken into account, COMIC-CON must be
24
evaluated as it appears within the logo or the longer word mark COMIC CON
25
INTERNATIONAL—and the dissimilarity with SALT LAKE COMIC CON is too great
26
27 39
December 6, 2017 Transcript at 32:20-33:6.
28 40
December 7, 2017 transcript at 106:19-20.

27
1 to sustain a finding of infringement. Either way, judgment should be rendered as a matter

2 of law.41
3 A. Evidence Disproving Confusion
4 Although DFP has no burden to disprove confusion, the record is filled with
5 evidence strongly disproving confusion. First, SDCC offered no confusion survey and
6 “failure to offer a survey showing the existence of confusion is evidence that the
7 likelihood of confusion cannot be shown.”42
8 Second, SDCC offered only six instances of actual confusion.43 Attendance at the
9 first Salt Lake Comic Con (“SLCC”) topped 70,000 and attendance at Comic Con
10 International: San Diego (“CCI”) has topped 125,000 every year since 2008.44 In
11 addition, DFP holds another event (Salt Lake Comic Con FanXperience) and SLCC itself
12 grew to more than 100,000 attendees in later years. Over the five years of SLCC’s
13 existence, the two conventions may have had over a million attendees between them; at a
14 minimum, there were 195,000 attendees. Six out of 195,000 is a confusion rate of about
15 three thousandths of one percent (0.003%)—far too small even to be considered de
16
41
17 Cf. Sportvision, Inc. v. Sportsmedia Technology Corp., No. 04-cv-03115, 2005 WL
1869350 at *9-11 (N.D. Cal. Aug. 4, 2005) (finding no likelihood of confusion and
18 granting partial summary judgment where the marks were found to be similar, but it was
19 also found that the plaintiff’s mark was not strong, there was no actual evidence of
confusion, and there was not enough evidence to show that defendant intended to confuse
20 consumers.)
21 42
Essence Comm., Inc. v. Singh Ind., Inc., 703 F. Supp. 261, 269 (S.D.N.Y.1988); see
22 also Playboy Enterprises v. Netscape Comms. Corp., 55 F. Supp. 2d 1070, 1084 (C.D.
Cal. 1999) (failure to conduct a confusion survey “warrants a presumption that the results
23 would have been unfavorable”); Cairns v. Franklin Mint Co., 24 F. Supp. 2d 1013, 1041–
24 42 (C.D. Cal. 1998) (because survey evidence “is often the most persuasive evidence,” “a
plaintiff's failure to conduct a consumer survey, assuming it has the financial resources to
25 do so, may lead to an inference that the results of such a survey would be unfavorable”).
43
26 See Exhibits 0003, 0064, 0065, 0073A, 0073B, 0073C. Cited transcript portions and
exhibits are attached hereto, for the Court’s convenient reference.
27 44
See Nov. 28, 2017 p.m. transcript at 90:11–12 (CCI attendance); Exhibit 714 (CCI
28 attendance).

27
1 minimis.45 So little evidence of actual confusion, with so many opportunities for

2 confusion over such a long period of time, is compelling evidence that confusion is not
3 likely.46
4 Third, SDCC’s own damages expert, Dr. Patrick Kennedy, in his attempt to show
5 that SDCC’s brand has value, testified to “a series of indicators,” including:
6 [SDCC’s] tickets do sell at a premium price when you compare them to, for
example, the DFP shows in Salt Lake City.
7
[I]n Salt Lake, they pay celebrities and give them travel and a share in photo
8 ops and autographs. A very different circumstance at San Diego Comic-Con.
9 There’s a broad range of sponsors, vendors, celebrities that come to Comic-
Con … without receiving any sort of compensation. … [T]hey’re here for
10 Comic-Con.
11 Another thing that is different with San Diego Comic-Con versus DFP’s
12 production is San Diego does not have to rely upon advertising in order
generate ticket sales, to drive vendors over here to lease booths.47
13
SDCC’s effort to establish value affirmatively disproves confusion because if people
14
were confusing DFP’s show with SDCC’s then DFP, like SDCC, would also be able to
15
charge premium ticket prices, not pay celebrities, and spend much less on advertising.
16
More powerful disproof of confusion than Kennedy’s juxtapositions is hard to imagine.
17
B. SDCC Did Not Introduce Sufficient Evidence of a Likelihood of Confusion
18 with the Word Mark COMIC-CON
19 The eight Sleekcraft factors are:
20 45
See Surfvivor Media, Inc. v. Survivor Productions, 406 F.3d 625, 629, 633 (9th Cir.
21 2005) (a survey showing less than two percent confusion is “scant evidence of
22 confusion”); Official Airline Guides, Inc. v. Goss, 6 F.3d 1385, 1393 (9th Cir. 1993)
(seven misdirected forms out of 80,000 sent was properly disregarded as de minimis).
23 46
See Brookfield Comm’s, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1050
24 (9th Cir. 1999) (“We cannot think of more persuasive evidence that there is no likelihood
of confusion between these two marks than the fact that they have been simultaneously
25
used for five years without causing any consumers to be confused.”).
26 47
Dec. 1, 2017 p.m. transcript at 29:22, 30:11–13, 31:3–11, 31:14–17. Regarding
27 advertising, Kennedy testified that SDCC’s advertising expenses were $3.65 million, or
about 13% of DFP’s $27.97 million in revenues—while SDCC’s advertising expense has
28 fallen to “[l]ess than 1 percent of revenue.” See id. at 22:21–22, 50:8–11, 75:8–21.

27
1 (1) strength of the mark; (2) proximity of the goods; (3) similarity of the
marks; (4) evidence of actual confusion; (5) marketing channels used; (6) type
2 of goods and the degree of care likely to be exercised by the purchaser;
3 (7) defendant’s intent in selecting the mark; and (8) likelihood of expansion
of the product lines.48
4
In the context of jury instructions, the parties have agreed that the eighth factor is not
5
in play here. As for the rest: “The factors should not be rigidly weighed; we do not count
6
beans.”49
7
1. SDCC Did Not Show that COMIC-CON Is Strong
8 SDCC’s evidence on the strength of its mark was not tailored to any particular mark;
9 instead, SDCC’s evidentiary presentation went indiscriminately to its undifferentiated
10 “brand.” There was no evidence showing that COMIC-CON, in particular, is a strong
11 brand.
12 As explained by the strength-of-mark instruction,50 strength has two aspects:
13 conceptual strength and commercial strength. Conceptually, COMIC-CON is weak
14 because it is descriptive.
15 Nor did SDCC put in any evidence that COMIC-CON, in particular, is commercially
16 strong. SDCC’s paid sponsorship uses are tied more closely to SDCC’s eye logo, not the
17 bare words “comic con”; thus, e.g., Lionsgate’s ComicConHQ logo mimics SDCC’s eye
18 logo51 and SDCC “require[s] Warner Brothers to place the San Diego Comic-Con
19 International eye design trademark on the front of the bag” that Warner Brothers
20 sponsors.52 Moreover the evidence of record showed more than a hundred other shows
21 using “comic con” in their names,53 and “[w]hen similar marks permeate the marketplace,
22
23
48
24 AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348–49 (9th Cir. 1979).
49
25 Dreamwerks Prod. Group, Inc. v. SKG Studio, 142 F.3d 1127, 1129 (9th Cir. 1998).
50
See ECF Doc. 350 at 42–45.
26 51
See Exhibit 1374.
27 52
See Nov. 30, 2017 p.m. transcript at 64:17–20.
28 53
See Exhibit 1351.

27
1 the strength of the mark decreases.”54 SDCC attempted to downplay the extent of similar
2 marks in the marketplace by claiming that because other events use names that do not use
3 the mark.55 However, SDCC simply cannot deny that similar marks, i.e. over 140 other
4 comic cons across the country, “permeate the marketplace,” and whether other
5 conventions name their event in dissimilar ways is of no consequence to that reality.56
6 In oral argument, SDCC additionally claimed their Teflon style survey constituted a
7 “brand recognition survey” and that the results were “compelling evidence” that the mark
8 is strong. However, many circuits and the Trademark Trial and Appeal Board have
9 clarified that a Teflon style survey is incapable of proving recognition of an otherwise not
10 inherently distinctive mark.57 Even if such a survey format was capable of proving
11 strength of mark, which it is not, SDCC’s survey utterly failed, almost purposefully, to
12 gauge whether the survey respondents understood the term as being associated with
13 SDCC, as opposed to any one of the other 140 other comic cons around the country. The
14 Court appeared to agree, stating that the survey was “devoted to the genericness issue at
15 pertinent times” where likelihood of confusion was “a different issue.”58
16 Furthermore, in its dogged attempt to mask the sheer weakness of the COMIC-CON
17 mark, SDCC improperly comingled the mark with its other asserted marks. SDCC
18 avoided a mark by mark comparison, claiming that “it’s not a logo-versus-logo
19 analysis.”59 The Court recognized this, stating that up to the time SDCC rested, SDCC’s
20 three marks appeared “part and parcel of this brand notion that we’re talking about.”60
21
54
22 One Industries, LLC v. Jim O’Neal Distributing, Inc., 578 F.3d 1154, 1164 (9th Cir.
2009).
23 55
24 56
One Industries, LLC v. Jim O’Neal Distributing, Inc., 578 F.3d 1154, 1164 (9th Cir.
25 2009).
57
See supra note 36.
26 58
27 59
December 7, 2017 transcript at 87:9.
28 60

27
1 Such a comingling is improper, and in actuality, SDCC simply failed to establish that
2 COMIC-CON itself, as opposed to some undifferentiated SDCC “brand,” is strong.
3 2. Because COMIC-CON Is Weak, Similarity of Services Matters Less
4 When a mark is descriptive, it will more naturally be used by competitors on similar
5 services. To encourage the use of descriptive marks, which “are often the most useful
6 identifiers,” while at the same time “preserving common, useful words for the public
7 domain,” similarity of services is afforded little weight when a mark is descriptive.61
8 3. SDCC Did Not Show How COMIC-CON Is Used in the Marketplace
9 Similarity of marks is not determined in a vacuum, or in bits and pieces; instead,
10 “the marks and names in their entirety and as they appear in the marketplace”62 must be
11 compared. Here, SDCC presented little or no evidence of how COMIC-CON, as opposed
12 to the other two asserted marks, is used in the marketplace. Such evidence as there is
13 establishes that “if you are in San Diego during comic-con, there is a big banner that says
14 Comic-Con International”—and “Comic Con International” is “in [SDCC’s]
15 publications. It’s in emails. It’s on our website.”63 Similarly, “[i]f you go to a panel room
16 [i.e., a room in which a panel is being held during the convention], almost all the panel
17 rooms have the logo behind them. It’s used in publications and in our advertising. It’s
18 everywhere.”64 The use of the eye logo is demonstrated in photographic evidence. But
19 evidence of how COMIC-CON is used in the marketplace without “International” or
20 without the logo is non-existent (to the extent COMIC-CON is used in the marketplace
21 with “International” or the eye logo, DFP’s use of SALT LAKE COMIC CON is not
22 likely to cause confusion for reasons explained below).
23
24
61
25 See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147–48 (9th Cir. 2002).
62
26 Alpha Indus., Inc. v. Alpha Steel Tube & Shapes, Inc., 616 F. 2d 440, 444 (9th Cir.
1980).
27 63
Nov. 29, 2017 a.m. transcript at 20:16–19.
28 64
Nov. 29, 2017 a.m. transcript at 23:7–10.

27
1 Moreover SDCC did not even attempt to compare COMIC-CON, as used in the
2 marketplace, with SALT LAKE COMIC CON, as used in the marketplace. As the Ninth
3 Circuit has held, even if “two marks viewed in isolation are indeed identical … their
4 similarity must be considered in light of the way the marks are encountered in the
5 marketplace and the circumstances surrounding the purchase of the [services]” in order to
6 determine similarity.65 Instead of looking to actual marketplace usage, SDCC relied
7 entirely on the fact that the elements COMIC and CON are shared by both marks—which
8 improperly (1) dissects DFP’s mark by ignoring the SALT LAKE element that
9 distinguishes DFP’s mark from SDCC’s and (2) disregards actual marketplace usage.
10 SDCC explicitly acknowledged this intention, stating “the only variance is that the
11 defendants use the geographical descriptor “SALT LAKE” in front of the name of their
12 event” and that “under the relevant law, geographical descriptors are irrelevant.”66 Such
13 is, in fact, not 9th Circuit law.
14 When assessed in the manner required by the Ninth Circuit, similarity of the marks
15 weighs against confusion because (1) SDCC presented no substantial evidence of actual
16 marketplace usage of COMIC-CON, separate and apart from the eye logo and COMIC
17 CON INTERNATIONAL (such evidence as there is shows use with the eye logo and
18 COMIC CON INTERNATIONAL67), and (2) as more fully shown below, DFP’s mark is
19 entirely dissimilar to SDCC’s eye logo and COMIC CON INTERNATIONAL mark as
20 they are encountered in the marketplace.
21 4. The Empirical Evidence Affirmatively Disproves Confusion
22 As laid out above, the paucity of alleged actual confusion instances, the absence of a
23 survey, and Kennedy’s juxtaposition of SDCC’s ticket pricing, celebrity appearances
24 arrangements, and advertising requirements with DFP’s tell strongly against a likelihood
25 of confusion.
26 65
Lindy Pen Co. Inc. v. Bic Pen Corp., 725 F.2d 1240, 1245 (9th Cir. 1984).
27 66
28 67
See, e.g., Exhibits 552, 582.

27
1 5. Shared Reliance on Internet Marketing Is Inconsequential

Coming now to marketing channels, SDCC and DFP both sell tickets over the
2
internet. But “[g]iven the broad use of the Internet today, the same could be said for
3
countless companies. Thus, this factor merits little weight.”68
4
6. Price and Sophistication Tell Against Confusion
5
At $276,69 comic con tickets cost enough that the degree of consumer care counts
6
against a likelihood of confusion.70 The type of goods, too, suggests greater consumer
7
care: because a convention is something a buyer has to attend—it’s not delivered to the
8
buyer by the mailman—the buyer can be expected to pay attention to its location.
9
Furthermore, consumers would exhibit a high degree of care based on the necessity of
10
associated expensive purchases related to attending a comic con, such as obtaining hotel
11
rooms, plane tickets, and other travel expenses. SDCC also downplays the fact that in
12
order to even have a chance of attending their event, consumers must enter, and win, a
13
lottery months in advance.
14
7. SDCC Closed its Evidence Without Presenting Evidence of Defendants’
15 Intent
16 The only evidence relating to defendants’ state of mind are some snippets from a
17 newspaper article and an email indicating that DFP thought (and thinks) “comic con” was
18 another way to say “comic convention,” and therefore free for the taking.71 That is not
19 evidence of intent.72 Moreover, someone hoping to cause confusion would not have
20
68
21 Playboy Enters., Inc. v. Netscape Comms. Corp., 354 F.3d 1020, 1028 (9th Cir. 2004).
69
See Dec. 1, 2017 a.m. transcript at 83:12.
22 70
See Mytee Products, Inc. v. Shop Vac Corp., No. 13-cv-1610, 2013 WL 5945060, at *5
23 (S.D. Cal. Nov. 4, 2013) (“Plaintiffs air movers appear to be priced at $199—$299 and
24 Defendant's air movers have a suggested retail price of $69.99—$79.99. At these prices,
the Court believes that the reasonably prudent consumer would exercise a high degree of
25 care before making a purchase.”).
71
26 See Exhibits 138, 1375.
72
27 See Brookfield, 174 F.3d at 1059–60 (“[T]his factor is only relevant to the extent that it
bears upon the likelihood that consumers will be confused by the alleged infringer’s mark
28 (or to the extent that a court wishes to consider it as an equitable consideration).

27
1 stopped at the widely used term “comic con”: he would have adopted some version of
2 SDCC’s eye logo, by which SDCC had promoted and branded itself and its convention
3 since 1995.73
4 SDCC is, again, trying to ride two horses at once. When it comes to establishing
5 strength of mark and the like, SDCC wants COMIC-CON to be lumped in together with
6 COMIC CON INTERNATIONAL and the eye logo because those other marks have
7 some market strength and the logo even has conceptual strength; but then, when assessing
8 similarity, SDCC wants to disregard the graphic elements of the logo and the
9 INTERNATIONAL in COMIC CON INTERNATIONAL. SDCC cannot have it both
10 ways.
11 Considered in isolation from the eye logo and COMIC CON INTERNATIONAL,
12 COMIC-CON is weak and SDCC entirely failed to present evidence of marketplace use.
13 If, on the other hand, actual marketplace use is taken into account, COMIC-CON will be
14 evaluated as it appears within the logo or the longer word mark COMIC CON
15 INTERNATIONAL—and the dissimilarity with SALT LAKE COMIC CON is too great
16 to sustain a finding of infringement (as shown below). Either way, judgment should be
17 rendered as a matter of law.74
18 C. SDCC Did Not Introduce Sufficient Evidence of a Likelihood of Confusion
with its Eye Logo
19
The differences between SDCC’s eye logo and DFP’s own logo are stark:
20
21
22
23 73
See Nov. 30, 2017 a.m. transcript at 73:20-74:9; page 27 of Exhibit 205, Bates no.
24 CC417127.
74
25 Cf. Sportvision, Inc. v. Sportsmedia Technology Corp., No. 04-cv-03115, 2005 WL
1869350 at *9-11 (N.D. Cal. Aug. 4, 2005) (finding no likelihood of confusion and
26 granting partial summary judgment where the marks were found to be similar, but it was
27 also found that the plaintiff’s mark was not strong, there was no actual evidence of
confusion, and there was not enough evidence to show that defendant intended to confuse
28 consumers.)

27
1
2
3
4
5 One has a border, the other does not; the graphics are wholly dissimilar—indeed they are
6 not even of the same type: SDCC’s logo is a cartooned closeup of an eye while DFP’s is
7 Salt Lake City’s skyline against the backdrop of the Wasatch Mountains at whose feet the
8 city sits; each includes words the other does not, which have different meanings; one has
9 a border the other lacks.
10 Parts of the Sleekcraft analysis are the same for the logo as for COMIC-CON: there
11 is no evidence of actual confusion (and an overwhelming body of empirical evidence
12 disproving confusion), shared use of the internet as a marketing channel is
13 inconsequential, and consumers are likely to exercise a high degree of care. Other parts
14 are different: the graphic elements make the logo a strong mark, conceptually at least, and
15 to the extent SDCC presented evidence of commercial strength, it is bound up with the
16 eye logo. But strength alone cannot translate into infringement: PEPSI COLA does not
17 infringe COCA-COLA, even though COCA-COLA is one of the world’s strongest
18 marks. As compared with the word mark COMIC-CON, the most radically different
19 Sleekcraft consideration is the thoroughly dissimilar character of the parties’ logos.
20 “Though likelihood of confusion depends upon many factors, the ‘one essential feature,
21 without which the others have no probative value,’ is the similarity between the
22 registered marks and the alleged infringing mark or phrase.”75 Here, similarity is absent.
23 “To constitute trademark infringement, use of a mark must be likely to confuse an
24 appreciable number of people as to the source of the product.”76 A prudent consumer,
25 exercising a high degree of care (as dictated by the nature and price of the goods), could
26 not possibly confuse those pervasively dissimilar logos. SDCC argued that the shared
27 75
Plough, Inc. v. Kreis Labs., 314 F.2d 635, 638 (9th Cir. 1963).
28 76
Entrepreneur Media v. Smith, 279 F.3d 1135, 1151 (9th Cir. 2002).

27
1 presence of the dissimilarly presented elements “comic” and “con” could support a
2 finding of infringement, but that is belied by all the empirical evidence of no confusion.
3 D. SDCC Did Not Introduce Sufficient Evidence of a Likelihood of Confusion
with the Word Mark COMIC CON INTERNATIONAL
4
COMIC CON INTERNATIONAL occupies a middle ground between the word
5
mark COMIC-CON and the eye logo. COMIC CON INTERNATIONAL is stronger
6
commercially and conceptually than COMIC-CON, in isolation; and it is weaker in both
7
regards than the eye logo. Considered in isolation, COMIC CON INTERNATIONAL is
8
more similar to SALT LAKE COMIC CON than the eye logo but less similar than
9
COMIC-CON. But as with COMIC-CON, SDCC’s evidence establishes that COMIC
10
CON INTERNATIONAL is generally used in the marketplace with the eye logo:
11
SDCC’s swag bags have the eye logo, not the unadorned words COMIC CON
12
INTERNATIONAL; SDCC’s panels are held in rooms wallpapered with the full eye
13
logo, not the bare words COMIC CON INTERNATIONAL; etc. As with the eye logo
14
and the word mark COMIC-CON, the evidence touching on actual confusion tells
15
decisively against a likelihood of confusion, shared use of the internet as a marketing
16
channel is inconsequential, and consumers are likely to exercise a high degree of care. As
17
for similarity, SDCC had a choice: if it relies on use of the logo as use of COMIC CON
18
INTERNATIONAL then its claim fails because the dissimilarities between SDCC’s and
19
DFP’s logos are too great; if it does not then it has failed to present meaningful evidence
20
of use in the marketplace, and therefore its claim fails on that ground. Either way,
21
judgment should be entered as a matter of law that there is no likelihood of confusion.
22
V. CONCLUSION
23
The evidence presented at trial—even when viewed in the light most favorable to
24
SDCC—leads to the unavoidable conclusion that “comic con” is generic. DFP
25
respectfully request this Court enter judgment as a matter of law in favor of DFP and find
26
that “comic con” is generic. Alternatively, and in addition, regardless of whether “comic
27
28

27
1 con” is generic, judgment should be entered as a matter of law that there is no likelihood
2 of confusion between the asserted trademarks, and defendants use of “comic con”.
3
4 DATED: January 16, 2018 Michael I. Katz
5 Charles J. Veverka
L. Rex Sears
6 MASCHOFF BRENNAN LAYCOCK
7 GILMORE ISRAELSEN & WRIGHT, PLLC
8 By: /s/ C.J. Veverka

9 Attorneys for Defendants and
10 Counterclaimants DAN FARR PRODUCTIONS,
DANIEL FARR, AND BRYAN BRANDENBURG
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

27
1 CERTIFICATE OF SERVICE
2 The undersigned hereby certifies that a true and correct copy of the above and
3 foregoing document has been served on January 16, 2018 to all counsel of record who are
4 deemed to have consented to electronic service via the Court’s CM/ECF system per Civil
5 Local Rule 5.4. Any other counsel of record will be served by electronic mail, facsimile
6 and/or overnight delivery.
7
By: /s/ C.J. Veverka
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

Farr JMOL Motion

Enviado por

Dados do documento

Direitos autorais

Formatos disponíveis

Compartilhar este documento

Compartilhar ou incorporar documento

Opções de compartilhamento

Você considera este documento útil?

Este conteúdo é inapropriado?

Direitos autorais:

Formatos disponíveis

Farr JMOL Motion

Enviado por

Direitos autorais:

Formatos disponíveis

Case 3:14-cv-01865-AJB-JMA Document 429-1 Filed 01/16/18 PageID.

1 Michael I. Katz (SBN 181728)

13 IV. JUDGMENT THAT CONFUSION IS NOT LIKELY SHOULD BE

16 B. SDCC Did Not Introduce Sufficient Evidence of a Likelihood of Confusion

19 2. Because COMIC-CON Is Weak, Similarity of Services

25 6. Price and Sophistication Tell Against Confusion ............................. 16

i Case No. 14-cv-1865-AJB-JMA

1 C. SDCC Did Not Introduce Sufficient Evidence of a Likelihood of

ii Case No. 14-cv-1865-AJB-JMA

27 Filipino Yellow Pages, Inc. v. Asian Journal Publications Inc.

iii Case No. 14-cv-1865-AJB-JMA

1 Freecycle Network, Inc. v. Oey

10 Mytee Products, Inc. v. Shop Vac Corp.

21 Plough, Inc. v. Kreis Laboratories

iv Case No. 14-cv-1865-AJB-JMA

1 Self-Realization Fellowship Church v. Ananda Church of Self-Realization

v Case No. 14-cv-1865-AJB-JMA

1 Case No. 14-cv-1865-AJB-JMA

2 Case No. 14-cv-1865-AJB-JMA

3 Case No. 14-cv-1865-AJB-JMA

4 Case No. 14-cv-1865-AJB-JMA

5 Case No. 14-cv-1865-AJB-JMA

6 Case No. 14-cv-1865-AJB-JMA

1 C. The Generic Use of “Comic Con” by SDCC Itself Favors Genericness

7 Case No. 14-cv-1865-AJB-JMA

8 Case No. 14-cv-1865-AJB-JMA

9 Case No. 14-cv-1865-AJB-JMA

1 to sustain a finding of infringement. Either way, judgment should be rendered as a matter

10 Case No. 14-cv-1865-AJB-JMA

1 minimis.45 So little evidence of actual confusion, with so many opportunities for

11 Case No. 14-cv-1865-AJB-JMA

12 Case No. 14-cv-1865-AJB-JMA

13 Case No. 14-cv-1865-AJB-JMA

14 Case No. 14-cv-1865-AJB-JMA

15 Case No. 14-cv-1865-AJB-JMA

1 5. Shared Reliance on Internet Marketing Is Inconsequential

16 Case No. 14-cv-1865-AJB-JMA

17 Case No. 14-cv-1865-AJB-JMA

18 Case No. 14-cv-1865-AJB-JMA

19 Case No. 14-cv-1865-AJB-JMA

8 By: /s/ C.J. Veverka

20 Case No. 14-cv-1865-AJB-JMA

21 Case No. 14-cv-1865-AJB-JMA

Você também pode gostar