Unable to resist quoting songs about yellow taxis, the Ninth Circuit issued a recent opinion on the trademark YELLOW CAB. “Perhaps the Yellow Cab Company of Sacramento didn’t know what it had until it was gone.” (quoting Joni Mitchell’s song “Big Yellow Taxi”) This case arises out of a collision between a small determined one-cab operation and a large Sacramento, California taxi cab “empire”. “Determined ‘to catch that yellow cab’ ” (quoting Chuck Berry’s song “Nadine”) Yellow Cab of Sacramento sued the smaller Yellow Cab of Elk Grove alleging trademark violation under the Lanham Act and related state law claims for unfair competition, false advertising and interference with prospective business advantage. The district court granted the defendant’s motion for summary judgment holding that “yellow cab” was generic, and that even if “yellow cab” was descriptive, the plaintiff failed to show “secondary meaning.” On appeal, the Ninth Circuit reversed the district court concluding that there was a material issue of fact as to whether “yellow cab” has become generic through widespread use in the marketplace and it descriptive whether the mark obtained “secondary meaning.” The Ninth Circuit also held that the burden of proof as to the validity and protectability of an unregistered mark lies solely on the party claiming trademark protection.
This opinion is notable for its succinct summary of the case law governing validity and protectability of trademarks.
There are five categories of trademarks: (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; and (5) fanciful. KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 408 F.3d 596, 602 (9th Cir. 2005). “The latter three categories are deemed inherently distinctive and are automatically entitled to protection because they naturally ‘serve[ ] to identify a particular source of a product . . . .’ ” Id. (quoting Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992)). Descriptive marks “define a particular characteristic of the product in a way that does not require any exercise of the imagination.” Surfvivor Media, Inc. v. Survivor Productions, 406 F.3d 625, 632 (9th Cir. 2005). A descriptive mark can receive trademark protection if it has acquired distinctiveness by establishing “secondary meaning” in the marketplace. Filipino Yellow Pages, Inc. v. Asian Journal Publ’ns, Inc., 198 F.3d 1143, 1147 (9th Cir. 1999). “Generic marks give the general name of the product; they embrace an entire class of products.” Kendall-Jackson Winery, Ltd. v. E. & J. Gallo Winery, 150 F.3d 1042, 1047 n.8 (9th Cir. 1998). “Generic marks are not capable of receiving protection because they identify the product, rather than the product’s source.” KP Permanent Make-Up, 408 F.3d at 602.
When a plaintiff pursues a trademark action involving a properly registered mark, that mark is presumed valid, and the burden of proving that the mark is generic rests upon the defendant. Filipino Yellow Pages, 198 F.3d at 1146. However, if the disputed term has not been federally registered, and the defendant asserts genericness as a defense, the burden shifts to the plaintiff to show that the mark is nongeneric.
The Ninth Circuit also provided a concise statement of the “secondary meaning” test:
To determine whether a descriptive mark has secondary meaning, a finder of fact considers: “(1) whether actual purchasers of the product bearing the claimed trademark associate the trademark with the producer, (2) the degree and manner of advertising under the claimed trademark, (3) the length and manner of use of the claimed trademark, and (4) whether use of the claimed trademark has been exclusive.” Levi Strauss, 778 F.2d at 1358 (quoting Transgo, Inc. v. AJAC Transmission Parts Corp., 768 F.2d 1001, 1015 (9th Cir. 1985)) (alteration omitted).