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Quote of the Day - After all, what is your hosts' purpose in having a party? Surely not for you to enjoy yourself; if that were their sole purpose, they'd have simply sent champagne and women over to your place by taxi. - P.J. O'Rourke

Pave Paradise, Put Up A Parking Lot And Catch A Yellow Cab

Try to combine Joni Mitchell's Big Yellow Taxi song with Chuck Berry's Nadine and see if you can come up with a Ninth Circuit opinion on trademark protection.  Well, Judge Sidney Thomas figured out how in his opinion, Yellow Cab v. Yellow Cab.  The case almost sounds like it could be an auto accident, but it has to do with the name the two companies chose.  Judge Tomas creatively cited these two songs in his opinion in the first two footnotes. 
 
They both want to use the same name, and prevent each other from using it.  One company's in Sacramento and the other cab company is in Elk Grove, not that far from the state capital, just in case you were wondering.
 
The point is, however, that the Yellow Cab of Oak Grove (the second-in-time user of the phrase 'Yellow Cab') defeated Yellow Cab Company of Sacramento's bid to prevent others from using its name.  At least initially.  The Ninth Circuit reversed that decision, saying that two questions remain: "(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."
 
In other words, when you say "Yellow Cab" do you think of either of these companies or just a taxi?  Kind of like the analysis of the terms xerox, kleenex and jello.  The Ninth Circuit thinks that maybe the term 'yellow cab" is as generic and instead deserves protection.  The case is headed back to the lower court for further proceedings, and meanwhile, I can't get those two tunes out of my head.

Podcast 

Posted by J. Craig Williams on Thursday, August 11, 2005


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