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In yet another decision calling into question a well-known trademark, the 9th U.S. Circuit Court of Appeals recently held that there was a genuine issue as to whether “Yellow Cab” was generic, and therefore an unprotectable mark. The case, which was sent back to the trial court, is part of a trend in which companies make large marketing investments, only to run into trademark trouble. Among the trademarks federal courts have ruled generic this year are “brick oven” pizzas, Schwan’s IP LLC v. Kraft Pizza Co., No. 04-125 (D. Minn. July 28, 2005); and “community bank,” Community First Bank v. Community Banks, No. 04-1359 (D. Md. March 14, 2005). Earlier this year, a federal district court considered distinctiveness and geography, and held that an Italian restaurant’s use of the name “Positano,” an Italian city, was merely descriptive. In addition, the court ruled that even if it had acquired secondary meaning, it had not penetrated the Philadelphia market where the dispute took place. Lamberti v. Positano Ristorante Inc., No. 04-4485 (E.D. Pa. March 16, 2005). Even Microsoft Corp. has found itself in a trademark tangle. Early last year, Microsoft paid Lindows.com Inc., a provider of Linux-based desktop software, $20 million to settle a trademark action in which Lindows challenged Microsoft’s Windows mark as generic. Microsoft Corp. v. Lindows.com Inc., No. 01-2115 C (W.D. Wash. 2004). The settlement came after a federal court rejected Microsoft’s argument that the court should consider the current secondary meaning of Windows. Instead, the court held that the analysis should be based on the generic nature of Windows when the product was introduced in 1985. Rather than face a possible jury determination that Windows was generic, Microsoft settled. The hack attack Microsoft isn’t the only one facing generic problems. Yellow Cab Co. of Sacramento, established in California in 1922, had a fleet of about 90 cabs, approximately 700 business accounts and exclusive agreements to provide taxi service to the city’s train station and many of its finest hotels. Then, in 2001, an interloper appeared. When Michael Steiner opened a local one-car cab company he called “Yellow Cab of Elk Grove,” Yellow Cab of Sacramento sued in federal district court, alleging, among other things, trademark violations under the Lanham Act. The district court granted summary judgment to Yellow Cab of Elk Grove, holding that “yellow cab” was generic. Yellow Cab of Sacramento appealed. Yellow Cab Co. of Sacramento v. Yellow Cab of Elk Grove Inc., No. 03-16218. Reversing, the 9th Circuit held that there were genuine issues of material fact as to whether “yellow cab” had become generic and whether Yellow Cab of Sacramento had established a secondary meaning, or that the name is firmly established in the public mind. In arguing that the mark was unprotectable, Elk Grove presented evidence that the term “yellow cab” was not distinctive in New York City. The 9th Circuit declined to reach the geographic-scope argument, and instructed the district court to consider it on remand. But the court rejected Elk Grove’s New York cab argument, holding that the situation in New York was not dispositive “in determining the distinctiveness of a mark used by a small business claiming territorial rights in Sacramento, California.” Elk Grove’s lawyer disagreed with the 9th Circuit’s analysis. On the geographic-scope issue, attorney Jeffrey Kravitz of Sacramento’s Kravitz Law Office noted the train station and many hotels served by the cabs, and said, “Even if you believe the geographic argument, you’ve got to consider that a large part of the customer base is from outside of Sacramento.” Benjamin Kinne of Sacramento’s Sweeney, Davidian & Greene, who, along with Andrea Miller of Sacramento’s Nageley, Meredith & Miller, represented Yellow Cab of Sacramento, said the geographically generic issue could have far-reaching implications. “The case could have an impact on the use of marks in local areas,” Kinne said, adding, “A lot of people will be watching the case-and not just cab companies.”

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