Yellow Cab of Sacramento v. Yellow Cab of Elk Grove

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.

I

Perhaps the Yellow Cab Company of Sacramento didn’t know what it had until it was gone. 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, Doub-letree Hotel, Radisson Hotel, Holiday Inn Capital Plaza, Marriott Hotel Rancho Cor-dova, and the Amtrak Depot in the Sacramento area. In the fall of 2001, a cloud appeared over the Sacramento yellow cab empire when…