'Yellow Cab' not entitled to protection

In Yellow Cab Co of Sacramento v Yellow Cab Co of Elk Grove Inc (Case 2003 US Dist LEXIS 9458), the US District Court for the Eastern District of California has issued a motion for summary judgment, finding that the defendant's use of the trade name Yellow Cab Co of Elk Grove did not infringe the plaintiff's rights in the unregistered mark 'Yellow Cab' and its trade name Yellow Cab Co, even though the parties are direct competitors.

The Elk Grove company introduced (i) an expert linguistic report, and (ii) evidence that thousands of taxi services use the term 'yellow cab' nationwide while the media use the phrase as a synonym for taxi. In response, the Sacramento company merely submitted (i) declarations from the present and former owners of the company attesting to the longstanding use of the name and mark, and (ii) an attorney's affidavit and the affidavit of one individual attesting to confusion with respect to the two companies' services. The court found this evidence insufficient either to (i) overcome the Elk Grove company's claim that the term 'yellow cab' is generic, or (ii) establish secondary meaning if the mark was found to be merely descriptive.

Lara A Holzman, Coudert Brothers LLP, New York

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