In May 2020, Volume 97 of the North Carolina Law Review Forum published a recent development. The Executive Forum Editor and Forum Editor positions had not yet been created.
RECENT DEVELOPMENT
Chandler N. Martin | May 2020
“What’s in a name?” When Shakespeare’s Juliet posed the rather forlorn question, she was undoubtedly not contemplating U.S. trademark law, but perhaps she should have been. As it turns out, quite a lot is in a name. While it is possible that “a rose [b]y any other name would smell as sweet,” everyone ought to be able to call the flower by its common, or generic, name. This notion is woven into trademark law, which prohibits trademark ownership and rights in generic terms. Such a mark belongs not to Juliet or Romeo, but to the general public.
Yet, in the case of San Diego Comic Convention v. Dan Farr Productions, the United States District Court for the Southern District of California seemed to lose sight of this basic principle. The court addressed the question of whether an incontestable trademark, the mark “COMIC-CON,” could be challenged as void ab initio on the basis that the alleged mark had always been generic, thus invalidating its registration and incontestability status. The court failed to conclusively answer this question, though it strongly opposed allowing the argument that the “COMIC-CON” mark was generic ab initio to proceed.
This Recent Development will focus on why the Comic-Con court, and courts in general, should accept genericness ab initio as a valid defense. The benefits of allowing such a defense outweigh the negative effects of leaving the defense in legal limbo or denying it entirely. By validating the defense, courts would grant stronger protections to defendants and better align the incontestability doctrine with the goals of trademark law, which seek neither to create monopolies nor unnecessarily restrict speech.