ÁREA DE PRÁCTICA / ABOGADOS DE DERECHO EMPRESARIAL DE UTAH

July 2019

One procedural issue parties occasionally face in civil litigation is the requirement to make an election of remedies. In its most basic terms, the election of remedies doctrine prevents double redress for a single wrong and avoids legally or factually inconsistent recoveries for the same wrong. There may be a claim alleged in your case that could lead to multiple, inconsistent remedies, and if so the party making that claim will need to make an election of remedies. One Utah case described it this way: “If a defendant wrongfully retains possession of a plaintiff’s cow, for example, the plaintiff may not recover both the cow and the reasonable value of the cow. The plaintiff must elect one of these two remedies.”

This issue often arises in business and commercial litigation where a plaintiff claims there was mutual mistake or some form of misrepresentation when a contract was entered. If so, the plaintiff may pursue the remedy of damages for breach of contract or may seek rescission of the contract. But ultimately, the plaintiff cannot be awarded both of these remedies.

One important question is when the election must be made. Utah’s modern pleading rules permit litigants to plead inconsistent theories of recovery in the alternative. Contrary to the harsh rule in older case law, current Utah law permits a party to pursue inconsistent remedies until the fact-finder and the judge have resolved all factual and legal disputes related to the inconsistent theories of liability. Thus, an election of remedies is not binding until one remedy is pursued to a determinative conclusion.

If your case involves a claim that supports multiple, inconsistent remedies, it is important to identify those potential remedies early on, evaluate the merits of all available remedies, and be mindful of the need, ultimately, to make an election between them.

Matthew Barneck is a shareholder at the Salt Lake City law firm of Richards Brandt Miller Nelson. He can be reached at Matthew-Barneck@rbmn.com, 801-531-2000.

Barry Scholl
February 2018

In our last action-packed blog posting, we discussed the trademark battle between San Diego’s Comic-Con and Salt Lake City’s Comic Con. The two parties had traded (symbolic) powerhouse blows in a California federal court over whether Salt Lake City’s use of the term “Comic Con” (without a hyphen) infringed on San Diego’s registered trademark for “Comic-Con” (with a hyphen). Organizers of the San Diego event argued that Salt Lake City is free-riding on the term in order to confuse the public into thinking the two events are related. The organizers of the Salt Lake City event argued that the term had become genercized over time due to widespread use by other similar conventions and petitioned the United States Patent and Trademark Office to cancel the San Diego group’s trademark.

With that preliminary explanation out of the way (those of you who are interested in reading more about the dispute can go here for our prior blog entry, we now turn to this week’s topic and the question of how to further define genericide and, finally, the important issue of avoiding genericide in your trademarks.

Avoiding Genericide

In the words of the United States Patent and Trademark Office, “Generic terms are terms that the relevant purchasing public understanding as the common or class names for the goods or services.” Generic terms (e.g., “detergent”) can never serve as registered trademarks because they do not identify the source of the product or service, which is a key requirement of trademark registration.

What Aspirin, Escalators and Cellophane Have in Common

A number of common terms started out as registered trademarks but became generic over time. Examples include aspirin, escalator, Hoagie (as in sandwiches), and shredded wheat (as in breakfast cereal). If you do not carefully monitor the use of your mark and allow it to be used to describe a particular type of product (for example, cellophane), rather than to designate you as the origin, you run a very real risk of that term becoming generic and losing your rights.

Protect Your Intellectual Property.

There are a number of actions a trademark owner can and should take to safeguard its trademark. We’ve included a couple below, but there are others that you should adopt to protect your trademark rights.

• If you have a registered mark, always use the ® symbol when using the trademark to give the public notice that this is a registered trademark. If you’re the wordy type, you can also use the phrase “Registered in U.S. Patent and Trademark Office.”
• Always capitalize the trademark to designate its status as a trademark. For example, don’t write “Nine out of ten dishwashers prefer acme detergent.” Instead, write “Nine out of 10 doctors prefer Acme® detergent.”

And returning to our original subject, what about the battle between Comic-Con and Comic Con? In early January, Salt Lake’s Comic Con filed a motion for a new trial, arguing that the widespread use of the term “Comic Con,” by almost 100 events across the country had made the “Comic-Con” trademark generic.

And so the epic battle over genericide continues. We’ll keep you apprised of any further developments.

Barry Scholl is a shareholder at the law firm of Richards Brandt Miller Nelson, whose practice specializes in business, including trademark, copyright, trade secret protection, contract negotiation and drafting, nonprofit law, and real property. He can be reached at 801-531-2000.

January 2018

In December 2017, the epic trademark infringement battle pitting San Diego’s long-running “Comic-Con” versus Salt Lake City’s upstart “Comic Con,” reached what appeared to have been at least a temporary lull when a federal jury in California found that contrary to Salt Lake Comic Con’s claims, the San Diego group’s trademark is valid. The jury awarded $20,000 in damages to San Diego Comic-Convention, much less than the $12 million being sought by the San Diego event, because the jury didn’t find Salt Lake City group’s infringement to be willful.

The dispute involved differing interpretations of the term “comic con” (with and without the hyphen). San Diego Comic Convention has a registered trademark for “Comic-Con” and argued that Salt Lake City’s “Comic Con” capitalized on the good will of San Diego’s Comic-Con’s mark in order to confuse attendees into believing the two events are related. It sought an injunction to prevent the Salt Lake City event from using the term “comic con” for any event, logo, trademark or website.

Salt Lake City’s Comic Con countered that more than 100 events across the country have long used the term “comic con” to describe events celebrating popular culture, superheroes, fantasy, science fiction, etc. Consequently, Salt Lake Comic Con argued, the trademark has become genericized, and it petitioned the United States Patent and Trademark Office to cancel the San Diego group’s trademark.

In a pre-trial order, U.S. District Court Judge Anthony Battaglia appeared to agree (at least in part) with both litigants, writing, “After a careful review of the parties’ moving papers, the applicable law, and the evidence on the record, the Court finds that Defendants have satisfied their burden of demonstrating a genuine issue of material fact as to genericide.”

Significantly, however, the Court didn’t close the door entirely on San Diego’s argument, noting that Salt Lake City’s Comic Con might be free-riding on the reputation of the well-established San Diego Comic-Con, because consumers could believe the two events are hosted by the same source:

“Here, both of the services at issue are indeed complementary of each other,” “Battaglia wrote, pointing out that each of the events involved three-day fan conventions celebrating comic books, comic art, science fiction, fantasy films, and similar entertainment.

In early January, several media sources reported (either erroneously or prematurely, as it turns out) that Salt Lake’s Comic Con had agreed to change its name. However, only a few days after these reports appeared, lawyers for Salt Lake’s Comic Con filed a motion for a new trial, arguing, in part, that use of the term “comic con” by other third parties could make the term generic.

What is Genericide?

In his pre-trial ruling, Judge Battaglia explained that “a mark is the victim of genericide when the ‘majority of the relevant public appropriates a trademark term as the name of a product (or service) . . .’”

Citing the formerly trademarked terms “aspirin,” “escalator,” and “cellophane,” Judge Battaglia said that each of these examples “only identified the brand or producer during the period of its initial use, however after the passage of time, they were appropriated by the public and soon became the generic name of the product.”

Avoiding Genericide

Next week, in Part II, we’ll review the elements of genericide and what you can do to protect your valuable trademarks from the fate that befell “aspirin,” “escalator,” and “cellophane” (not to mention “thermos,” “teleprompter,” and “trampoline”).

Barry Scholl is a shareholder at the Salt Lake City law firm of Richards Brandt Miller Nelson. He can be reached at Barry-Scholl@RBMN.com.