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August 16, 2005

Too Much of a Good Thing?

Can a brand become too well known? In the trademark context, the answer may be “yes.” A trademark can become “generic,” and consequently not subject to trademark protection, if it is used in such a way that it comes to identify a product or class of products rather than the product’s source – such as “kleenex” to denote a facial tissue generally rather than a Kleenex brand tissue. In this way, the failure to use care in the dissemination of a brand can lead to the weakening of the trademark.

The Ninth Circuit Court of Appeals had the opportunity to revisit this issue recently in a case involving Yellow Cab, specifically Yellow Cab of Sacramento. Yellow Cab of Sacramento sued a Yellow Cab company in a neighboring city, Elk Grove, for trademark infringement. The defendant asserted that the unregistered trademark of Yellow Cab of Sacramento had become generic and thus was not entitled to trademark protection. The trial court agreed and granted the defendant’s motion for summary judgment.

Because Yellow Cab of Sacramento had not registered its trademark, the Ninth Circuit held that it was not entitled to the presumption of validity that normally attaches to a mark, but had the burden of proving that its mark was not generic. Nevertheless, the Ninth Circuit reversed the summary judgment in favor of the defendant on the ground that material questions of fact existed as to whether “yellow cab” had become generic, making summary judgment improper. Noting that there are a number of other well known taxi companies and that people might not associate cabs only with the term “yellow cab,” the court concluded that a trier of fact could decide that Yellow Cab of Sacramento’s trademark has not become generic. Accordingly, the Ninth Circuit remanded the case to the trial court. What will happen there? Get in line to find out.

Posted in Trademark | Permalink

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