Trademark Law Updates | New Settlements and Verdicts
August 9, 2007
Yellow Cab Co. of Sacramento v. Yellow Cab Co. of Elk Grove, Inc.
2:02-cv-00704-FCD-DAD, 2007 WL 8664, E.D.Cal., 1/18/2007
In this case for trademark infringement and unfair competition filed in connection with the trade name “Yellow Cab Co.” instituted before the United States District for the Eastern District of California, the jury rendered a defense verdict on the ground that “Yellow Cab. Co.” is not a valid, “protectable service mark” (i.e. the term is “generic”).
In this case for trademark infringement and unfair competition, it was the assertion of plaintiff that: (1) the name “Yellow Cab Co.” has been used by it since 1917, and customers from all over Sacramento had identified such name with the company; (2) alternatively, that name has assumed a secondary meaning which should afford plaintiff trademark protection for it; (3) injunction should be issued in order to restrain defendant, which was a single-person taxi entity based in a suburb of Sacramento, from further committing the acts of infringement; and (4) damages in the amount of $1,000,000.00 should be awarded, including an unspecified amount for all the profits that defendant earned since the inception of the latter’s operation.
The US District Court for the Eastern District of California earlier granted defendant’s motion for summary judgment for the reason that the term “Yellow Cab Co.” is generic, and thus not entitled to trademark protection, or alternatively, even assuming that “Yellow Cab Co.” is not generic but instead descriptive, that plaintiff failed to provide sufficient evidence of “secondary meaning” so as to provide trademark protection for the term.
Upon appeal, the Court of Appeals, Ninth Circuit, reversed the district court’s judgment and ordered the remand of the case for trial on the ground that plaintiff was able to present “sufficient evidence to raise triable issues of fact as to whether the term ‘Yellow Cab Co.’ was generic or alternatively, descriptive with acquired secondary meaning.”
After six (6) days of jury trial, the verdict was in favor of defendant on the ground that “Yellow Cab. Co.” is not a valid, “protectable service mark” (i.e. the term is “generic”). Defendant thereafter filed motion for the award of attorney’s fees, but the district court denied such motion, on the basis that such award is “rarely justified under the statute.” In this instance, according to the court, the case went to trial after the Ninth Circuit reversed the summary judgment earlier rendered in favor of defendant. Therefore, the court concluded that the filing of the case was not frivolous or done in bad faith, and would not entitle defendant the award of attorney’s fees.
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