YELLOW CAB is generic, says jury

On January 18 2007 a jury in the US District Court for the Eastern District of California found that YELLOW CAB is not a legally protectable service mark, rather it is a generic mark that may be used by more than one taxi company in Sacramento County, California.

Yellow Cab Company of Sacramento (Yellow Cab) filed suit against Yellow Cab of Elk Grove (Elk Grove) alleging trademark violations under the Lanham Act and related state law claims of unfair competition, false advertising, and intentional interference with prospective business advantage. Yellow Cab first used the YELLOW CAB mark in 1922 in connection with taxi services, and at the time the suit was filed, Yellow Cab operated approximately 90 cabs with 700 business accounts under the mark in the Sacramento area (including the suburb of Elk Grove). On the other hand, Elk Grove was founded in 2001 and had but one cab at the time the suit was filed.

In its defence, Elk Grove submitted:

• an expert linguistics report on the history and use of the mark YELLOW CAB;
  
  
• evidence that thousands of taxi services use the mark YELLOW CAB nationwide;
  
  
• evidence that the media uses the term as a synonym for taxi; and
  
  
• a copy of Roget's Thesaurus of English Words and Phrases which lists 'yellow cab' as a synonym for 'taxicab'.
  

In response, Yellow Cab submitted evidence of Yellow Cab's longstanding use of the mark, an affidavit of an individual attesting to confusion with respect to the two companies' services, and advertising data to establish acquired secondary meaning.

In 2003, the district court granted Elk Grove's motion for summary judgment, holding that the mark YELLOW CAB was either generic, or a descriptive term, in which case Yellow Cab failed to establish secondary meaning. Under either ruling, Yellow Cab was not entitled to trademark protection (see 'Yellow Cab' not entitled to protection).

In 2005, the US Court of Appeals for the Ninth Circuit reversed the trial court's holding and remanded the case for trial. The Ninth Circuit found that Yellow Cab presented sufficient evidence demonstrating the existence of a genuine issue of material fact as to both whether the mark YELLOW CAB was generic, and whether if descriptive, the mark had acquired secondary meaning (see YELLOW CAB decision reversed in Ninth).

On remand, Yellow Cab argued that the YELLOW CAB mark was at least descriptive and had acquired secondary meaning by establishing itself as a peculiarly recognizable source in a defined marketplace. Elk Grove scoffed at the notion that any company has an exclusive legal claim to YELLOW CAB, insisting that the "name is used all over the place" and that "nobody owns the name".

The six-member jury deliberated for less than half a day to determine that the mark YELLOW CAB has become generic through its widespread use in marketplaces across the country and that Yellow Cab Company of Sacramento has no legal right to exclude other taxi service providers from using the name YELLOW CAB.

Howard J Shire and R Scott Roe, Kenyon & Kenyon LLP, New York