A little legalese to show just how far Mr. Berry's influence has spread. Here, he and Ms. Mitchell are quoted gleefully by a rockin' panel of Ninth Circuit judges in a decision that calls the name "Yellow Cab" "generic!" Go, Judges, Go!
YELLOW CAB COMPANY OF SACRAMENTO, a California corporation, Plaintiff-Appellant, v. YELLOW CAB OF ELK GROVE, INC., a California corporation; Michael P. Steiner, an individual, Defendants-Appellees.
United States Court of Appeals for the Ninth Circuit
August 9, 2005
419 F.3d 925
"In this Lanham Act case, plaintiff-appellant Yellow Cab of Sacramento appeals from the district court's grant of summary judgment in favor of defendant-appellee Yellow Cab of Elk Grove. We conclude that there are issues of material fact as to (1) whether the mark "Yellow Cab" has become generic through widespread use in the marketplace, and (2) if descriptive, whether the mark has acquired secondary meaning. We therefore reverse the judgment of the district court. We also determine that the burden of proof as to validity and protectability of an unregistered mark lies with the party claiming trademark protection.
"* Perhaps the Yellow Cab Company of Sacramento didn't know what it had until it was gone.1 It had operated in the Sacramento area, including the suburb of Elk Grove, since 1922. At the time this suit was filed, it operated approximately 90 cabs, had approximately 700 business accounts, and was the only authorized taxicab provider to the Red Lion Hotel, Doubletree Hotel, Radisson Hotel, Holiday Inn Capital Plaza, Marriott Hotel Rancho Cordova, and the Amtrak Depot in the Sacramento area. In the fall of 2001, a cloud appeared over the Sacramento yellow cab empire when Michael Steiner started a one-cab taxi operation in Elk Grove and operated it under the name of "Yellow Cab of Elk Grove." Determined to "catch that yellow cab,"2 Yellow Cab of Sacramento filed this action against Yellow Cab of Elk Grove, alleging trademark violation under the Lanham Act and related state law claims for unfair competition, false advertising, and intentional interference with prospective business advantage. The district court granted Yellow Cab of Elk Grove's motion for summary judgment, holding that "yellow cab" is a generic term, and, alternatively, that even if "yellow cab" is a descriptive term, Yellow Cab of Sacramento failed to show secondary meaning and is therefore not entitled to trademark protection. Yellow Cab of Sacramento timely appealed. We review a district court's grant of summary judgment in a trademark infringement claim de novo, with all reasonable inferences drawn in favor of the non-moving party. Dreamwerks Prod. Group, Inc. v. SKG Studio, 142 F.3d 1127, 1129 (9th Cir.1998)."
(The footnotes are 1) "Big Yellow Taxi" by Joni Mitchell, and 2) "Nadine" by Chuck Berry.)