tellingly san diego does not even attempt to defend the district court's primary rationale for denying a palin's motion for summary judgment and that's the supposed non existence of the generic one adopted theory once this court correct conventions present evidence of media usage of comic con to refer to comic cons other than san diego's news media usage is more just you know the new yorker article showing con interchangeably with comic convention they never used comic con to promote their early conventions separate and apart from the geographical limit or san diego the reason why they did that is the need to tell the consumers what comic con they were referring to so that's why comic con can standalone it was always with san diego or with golden state in your response to that evidence san diego presents nothing significant there's no evidence opposing  somewhat below san diego argues that the purportedly incontestable status of their marks makes a difference it doesn't i think it it bears emphasizing that incontestable is a misleading term as recognized in the has any more questions about this i'd be happy to answer than well there's a lot of questions about this this case so so your argument boils down to it was so when move for summary judgment on that theory it was a method of proving her innocence and the court said no there ain't no such thing as generic of an issues of that theory that you're trying to prove is not a valid theory and i believe we presented to the contrary so from the service centers case saying so if we agree with you what should happen in this case given the posture of the case right now we should get summary judgment there is no bar to  it be a turn of davis to say well i think the district court got it wrong in saying that this defense is categorically unavailable and then send it back for the district court to do what it will with with  i don't think that is the best solution i think the summary judgment motions are decided as a matter of law legal issues and here we have the undisputed facts that are clear if the court grants or denie summary judgment it'll still be dyno review for this court to decide whether that was proper and here the summary judgment you know that all the evidence is before the cord we've laid out all the facts in our favor santiago's laid out all the facts that they believe support their case it's this court can determine that there is no tribal issue of fact there specially since san diego didn't present anything it deals with the problem that i'm having is that you're saying where and when the san diego comic convention adopted the mark it was a generic mark but you agree that it became a descriptive mark when it was registered and at the time it became incontest acquired that status and at the time of the jury verdict do you agree with all those three points i do not agree with those points because which point do you disagree with if we were allowed to prove that the mark was generic when it was adopted that would mean as a matter of law that it remains from there today so well but not not really i mean i think mccarthy and trademarks they talk about becoming non generic becoming the the theory that was tried to the jury was basically what does what is the primary significance of comic con today so i don't think it's correct to read into the jury's finding anything about the prime or significance of comic make a difference i think the harley davidson case it's probably the clearest example of that harley davidson had a registered mark and hog and the court said it doesn't matter whether now people associate harley davidson and hogs together what matters at least under the theory of that case was what harley or what hog met at the time harley davidson adopted the case and we say the case in our mis acknowledging harley davidson is the same as what we're trying to do in this case for whatever reason the district court didn't buy it maybe was a nd circuit case so i'm not going to give it any credence but if you look at the another example i think a clear example of this application with there is the miller case and vs fall stuff in the st circuit and the court said that because light for beer had already been determined to be generic ten years ago it doesn't matter that the meaning of light might have changed in the last ten years so the now everyone associates light with miller the court still said because it had that generic meaning at one point it can never achieve trademark significance and i submit the only way to give meaning to this court's rule that a generic car cannot become a trademark under any circumstances even if it acquires secondary meaning that that statement appears over and over in the cases so how do you give that meaning in the district court and the way to give that meaning the district court is to allow us to prove what the term met in one thousand and seventy one san diego adopted the term if you look at the evidence we presented on that i think incontestable there now they just are guessing this report decision and it didn't mention in contestability as relevant so you can take that as an indication that he didn't view it is relevant but he didn't directly engage with the statu contestability but i think the answer is clear there are a couple of angles to take on this one is that the statutory focus and it was relying on this meaning of the word is i it's a week sometimes is means was provisions would somehow give trademark owners more rights than they had a common law to protect america terms and they were people objecting that that would be the effect of this law the response of those objections was to explicit as to when of the listed defenses if that's what it intended i think congress wasn't intending to distinguish between different types of generic in his theories  the word is in that context would be at the time it acquires incontestable status so your honor even under that reading we prevail because a market that is generic when it is adopted is still circumstances so if you look at the the harley davidson case they look at evidence that the market was generic to conclude as a legal conclusion that the market is generic at the time of the decision and you look at the miller case they say the same way so the the according to sources centers or the filipino yellow pages case so and no a generic mark stays generic even if there is some kind of showing secondary meaning that if and we weren't allowed to put on any evidence about what happened before nine hundred and seventy so that the question if the generic when a doctor theory were in the case there would be different evidence and there would be different journey instructions so the question answered by the jury  you know is this march america as measured by saying it's irrelevant if we adopt your theory of at generic at adoption i'm saying that the jury's verdict is irrelevant that's what your are that's what you're saying because if we is that there is removed through the summary judgment procedure all right why don't you reserve the rest of your time let's hear from the other side thank you kevin for representing at police san diego comic convention may have pleased the court let me begin with the issue of generic ness the evidence at trial showed that eighty two percent of those surveyed understood to be a brand name the jury was instructed on the issue of generic ness and determined that all three more are valid and protectable and the district court upheld that determination but defendants asked for one more chance this time to show that comic con was generic when san diego comic convention for shoes the mark in  seventy there is no statutory basis or such a challenge to incontestable mark if we disagree with you and find that they could have asserted a generic apne show were they precluded from presenting such evidence based on the summary judgment ruling they did in fact introduce a lot of that evidence anyway even though it wasn't relevant in light of the summary judgment so young your argument is that even if we find that the district court erred in illegally finding that such a defense was not available that evidence sort of came in the jury got to consider it anyway not exactly this summary judgment evidence it's was insufficient to force a trial on the generic in this at the time of adoption even if there is such a theory and as  explaining there really isn't that statutorily barred by can so that there's no trial issue correct then i'll ask you the same question i ask counsel we determine that that's wrong we normally don't in the appellate court engage in the facts to figure out whether that's a travel issue there so should we send it back for the district court to engage in that analysis in the st instance in other words if we in that i'm not suggesting that that's how it's going to turn out but if we decide that that defense should have been available then isn't that the district court to grapple with that and determine whether there's still a travel issue there is and to decide whether it's necessary to unravel this trial if you determine that the  fence should be available and that the summary judgment evidence presented by defendants was sufficient to create a time for a fact then you're right then it's to trial on the issue way to give quiet title to mark holders and the supremes court's decision in park and fly addresses this specifically it says that as a backdrop trademark should receive the greatest protection possible but more specifically on page one hundred and ninety eight of park and why quote the in contestability provisions provide a means for the registran title in the ownership of his marks so in other words he had sixty five encourages producers to cultivate you know good will is associated with a particular market it does so by providing this title mechanism here defendants generic at the time of adoption theory would blow up that might it title feature in the statute because defendants essentially argue that the primary significance exceptions congress the statement and analysis of the language that's in our opening british fair to say though that it's a narrow mousehole exception you may remember that some supreme court justices and some  circuit judges are fond of using the phrase congress doesn't hide elephants in mouse holes well that applies exactly here there's no provision in ten sixty five dollars for challenging a mark as generic at the time of adoption that would be an extremely broad elephant that would open the door to turning every trial into every examination of the issue is it going eric in this from the perspective of th the snippets of legislative history that the fenton's rely upon are from two years prior to that where there are a few statements by individual senators which by my reading are  turning to the issue of unclean hands the district court found there was no intent to deceive and that was not an abuse of discretion fundamentally defendants are wrong in assuming there is a duty to th of the federal circuit makes clear that there is no duty to this close used by others that is in consequential or infringing and that specifically in the context of what the trademark affidavit which is what we have at issue here here there is no clear and convincing evidence that mr de that ms desmond or mr hahn knew there was a duty to disclose of any other conventions in two used wizard world chicago so if you're imagine you're in the shoes of music as man or mr hahn in two thousand and six and you know perhaps that there's a chicago convention cold wizard world chicago that in consequential use it's more than irrelevant it's off the map new york the new use in new york was in consequential and it was infringing well could play sitting here in two thousand and twenty it may be one of the largest conventions the st new york comic convention six but there's no clear and convincing evidence that any of those conventions were still operating at the time of the affidavit in two thousand and six or even that they were actually held in  paragraph four it does not make any distinction between types of generic miss that just might not have been on congress's mine and congress wanted to allow one type of generic use defense would preclude other types of generic missed offenses there could have been a lot clearer way to do it you said that congress just said knowingly testable right shall be acquired in generic terms and what we have shown through the generic my adopted theory is that there is a way to prove that a mark i generic based on the understanding of that term when the mark was adopted you know that method of proof would not follow up a long standing issues and here we have an issue of yes we are looking back many  but what do you do with the district court alternative holding that even if such a theory existed you did not introduce enough evidence to do with stand summary judgment a and sixty four convention people were talking about we need a comic con talking about some kind of international comic i'm a traveling comic con and the district court i think was colored by its view that the generic one theory didn't exist and didn't really give a fair shake to the evidence that we did present i realize i'm out of time but if the court wants to talk about the fees aspect if there's any and i was about half is because san diego was using the term let's say for thirty six years st they waited twenty five years before applying for the mark comic space comic space car they abandoned that application instead registered comic con international ten years later in two thousand and five you know thirty five years after their purported perseus only vented they register comic i think on and you can look into that and show what they actually believed was a valid trademark at that point so to the extent we're looking back far in time that's the unique facts of this case where san diego has allowed hundreds of comic cons to spring up waiting thirty five years before registering the term so you know we want to run into these issues in other cases where you're looking backwards so far and and to the extent that there is an issue looking back as well as the defendants that would bear the burden of proof so that would give the proponent of america some protection so to the extent there is any difficulty in getting evidence about what the term meant back when a term was adopted a long time ago well that's just that's the defense's problem so there's no issue with with recognizing this one adopted they're here won't you know