## Facts

- Yellow Cab Company of Sacramento operated taxi services in the Sacramento area, including Elk Grove, since 1922, using the name “Yellow Cab” and a yellow vehicle color scheme.
- The company claimed common-law trademark rights in the unregistered term “Yellow Cab” for local taxi services.
- Yellow Cab of Elk Grove began operating taxi services in Elk Grove using “Yellow Cab” and allegedly similar trade dress, prompting claims of consumer confusion.
- Sacramento Cab sued under the Lanham Act and related state-law theories for trademark infringement and unfair competition.
- The district court granted summary judgment to Elk Grove Cab on the ground that “Yellow Cab” was generic for taxi services and thus not protectable.

## Issues

1. In a Lanham Act infringement action based on an unregistered mark, which party bears the burden to prove the mark is not generic and is protectable?
2. On the summary judgment record, did Sacramento Cab produce sufficient evidence for a reasonable jury to find “Yellow Cab” was non-generic in the relevant market?

## Decision

- The Ninth Circuit affirmed summary judgment for Elk Grove Cab.
- The court held that a plaintiff asserting rights in an unregistered mark bears the burden of proving the mark is valid and protectable, including proving it is not generic.
- Applying that burden, the court concluded Sacramento Cab failed to produce sufficient evidence that “Yellow Cab” functioned as a source identifier rather than the common name for taxi services.

## Legal Principles

- Unregistered marks carry no presumption of validity; the plaintiff must prove protectability as part of its affirmative case.
- For an unregistered word mark, the plaintiff must prove the term is not generic to obtain Lanham Act protection.
- A defendant’s evidence of widespread third-party use can support genericness; if the plaintiff cannot raise a triable issue on non-genericness under its burden, summary judgment is proper.

## Conclusion

The Ninth Circuit required the party claiming common-law trademark rights to prove the unregistered term was non-generic and protectable, and it affirmed judgment for the defendant because the plaintiff’s evidence did not create a genuine dispute that “Yellow Cab” identified a single source in the relevant taxi market.


Yellow Cab Co. of Sacramento v. Yellow Cab of Elk Grove, Inc., 419 F.3d 925 (9th Cir. 2005)