YELLOW CAB TRANS. CO. v. LOUISVILLE TAXICAB & TR. CO.

Decision Date08 February 1945
Docket NumberNo. 9853.,9853.
Citation147 F.2d 407
PartiesYELLOW CAB TRANSIT COMPANY v. LOUISVILLE TAXICAB & TRANSFER COMPANY.
CourtU.S. Court of Appeals — Sixth Circuit

Duke Duvall, of Oklahoma City, Okl. (Duke Duvall and Dudley, Duvall & Dudley, all of Oklahoma City, Okl., on the brief), for appellant.

Oldham Clarke, of Louisville, Ky. (Oldham Clarke and Henry E. McElwain, Jr., both of Louisville, Ky., on the brief), for appellee.

Before HAMILTON, MARTIN, and McALLISTER, Circuit Judges.

MARTIN, Circuit Judge.

A quarter century ago an enterprising Chicagoan, John Hertz, imported from European travel the notion of painting taxicabs yellow. From Chicago this yellow-coloring custom spread nationwide until these bright colored taxicabs now flash daily to and fro on the streets of all American cities of significant size. The yellow coloring of motor vehicles has brought about the present litigation.

Yellow cabs appeared in Louisville, Kentucky, and in Oklahoma City. Oklahoma, almost simultaneously about twenty-five years ago. The appellee Louisville Taxicab and Transfer Company, which, through predecessor corporations, had been engaged in business in Louisville since 1861, adopted around 1919 the custom of painting its cabs and vehicles yellow with black trimming and black fenders; and also adopted trade names in which the word "yellow" was featured, namely, "yellow cab," "yellow cab truck rental," "yellow baggage department" and "yellow ambulance service." The distinctive yellow color scheme and trade names have been used by the appellee continuously since adoption and have been extensively advertised in Louisville for many years, coming to be generally recognized by the public in that locality as the color scheme and trade names of the appellee company. The charter of the appellee company authorized the transportation and transfer of passengers, baggage, merchandise, and freight, for hire, by means of automobiles, taxicabs, auto trucks and other vehicles. Some 242 taxicabs are operated by the appellee in Louisville, Kentucky, and its vicinity; and 146 trucks are owned by appellee and leased to other companies which operate them on a rental basis. These rented trucks are not identified as those of appellee, inasmuch as each bears the lessee's name thereon and is painted such color as the individual lessee desires. The appellee transports baggage by truck to and from railroad stations and also operates an ambulance service.

Approximately five hundred and fifty persons are employed; three hundred thousand to four hundred thousand passengers are transported each month; and, while appellee's activities are largely confined to local business, the State of Kentucky in pending litigation is seeking to have it classified as a common carrier of freight by motor. The appellee is one of the largest companies of its type south of Chicago and its reputation and financial standing in the community in which it operates is excellent.

The reputation and financial standing of the appellant in the territory in which it operates is also excellent; so the controversy here is between two corporate concerns of high repute.

In 1920, the Harrell brothers, having obtained authority from John Hertz of Chicago, organized the Yellow Taxicab and Baggage Company in Oklahoma City. In December 1924, the Harrells organized the appellant corporation, Yellow Cab Transit Company, which engaged in an intrastate business operation between Oklahoma City and adjacent Capital Hill. Appellant sold this bus line in 1926 and thereafter operated, until sold to the Greyhound people in 1929, an interurban bus line from Oklahoma City to Tulsa, Oklahoma.

On January 1, 1930, the appellant company inaugurated its present business, continuously pursued, namely, the transportation by motor vehicles of freight in interstate commerce. Appellant operates its business in the states of Oklahoma, Texas, Kansas, Missouri, Illinois, Indiana and Kentucky, and serves approximately 450 towns. These operations were expanded from inception until, in 1939, through the purchase of the Holsapple Truck Line, the appellant began to transact business in Louisville and substituted for Holsapple Truck Line its own trade name "Yellow Transit Company," which it had used for many years before engaging in business in Kentucky. On January 2, 1943, appellant changed its corporate name from Yellow Cab Transit Company to Yellow Transit Company. Appellant has never engaged in the taxicab business but operates exclusively as a common carrier of freight in interstate commerce. Business is solicited in Louisville through personal contacts of its commercial representatives with the traffic managers of Louisville industrial enterprises standing in need of interstate trucking services. Descriptive folders are sent to these traffic managers and the business is solicited for the "Yellow Transit Company." This cognomen was used by appellant in some early newspaper advertising in Louisville; but at the present time appellant does not advertise its business to the general public in Louisville.

At an investment cost of about $60,000 appellant erected a local terminal in Louisville at Ninth and Madison on a lot purchased in 1940. Previously, two real estate agencies had been employed to find a suitable location; and unsuccessful attempts were made through them to buy two other locations, each much farther from appellee's place of business than was the terminal lot finally acquired. Appellant appears to have been motivated by no deliberate intention of locating its terminal as close as one block from appellee's place of business, which it eventually did. In soliciting business in Louisville, the representatives of the Yellow Transit Company have made no representations whatever that it is in any manner connected with the appellee company; but some slight confusion has resulted between the two companies in the handling of telephone calls and in the delivery of goods and mail to the respective parties. This confusion seems due to no fault of the appellant. All the activities of the appellee are conducted and listed in the telephone book under various names of Yellow Cab, Yellow Cab Ambulance Service, Yellow Cab Baggage Service, Yellow Cab Blue Ribbon Service and Yellow Cab Lunch. In no listing in the telephone book or in the city directory does the appellee use the trade name Yellow Cab Company. The trade name used is Yellow Cab. The word "cab" does not appear in the appellant's trade name under which its business is conducted. It should be observed, moreover, that in the classified section of the telephone directory, the name of appellant appears nowhere in juxtaposition to any of the names used by the appellee. Under both headings "taxicabs" and "transfer companies," appellee is listed and appellant is not; and under the heading "trucking" the appellant is listed as "Yellow Transit Freight Lines" and the appellee is not listed at all. In the main section of the telephone book, commencing with the word "Yellow," the appellee's various trade names are all listed with the same telephone number and the same address; while finally the name "Yellow Transit Company" is listed under a different telephone and a different address.

The operating equipment of the appellant is painted yellow with black fenders and carries in several places in good-sized lettering the name "Yellow Transit Company," with the words "Freight Lines" immediately beneath the name. Included in the equipment are some thirty coupes used by the commercial representatives of the company in different cities. These coupes are trimmed in black and are similar in color and appearance to the taxicabs of the appellee. In Louisville, there are used two of these coupes, bearing the name "Yellow Transit Company," together with the words "Freight Lines"; and, significantly, "No Passengers."

Shortly after the appellant commenced to do business in Louisville, as described, a letter dated October 24, 1939, was received by it from appellee, protesting the use of the word "yellow." Reply was made that the appellant considered that it had the right to operate in Kentucky under the name "Yellow Transit Company" and would do so unless litigation determined otherwise. Expedition of any litigation instituted to dispose of the question was promised. Nearly a year and a half later appellee commenced the instant action in the Jefferson Circuit Court. On petition of appellant the cause was removed to the United States District Court for Western Kentucky on the ground of diversity of citizenship in a controversy involving more than $3,000, exclusive of interest and costs.

The appellee utterly failed to prove the broad allegation of its petition that "the adoption by the defendant of the name Yellow Transit Company, as a name for its business, and the advertisements of its business under the said name was for the purpose and it does deceive prospective customers and the public generally into believing that the services rendered and the business operated by the defendant are the services and business of the plaintiff; that the adoption and use of said name has resulted in the defendant's capitalizing on the name and reputation and good will of the plaintiff and has resulted in the defendant obtaining for its benefit the use of the plaintiff's good name and good will as a commercial asset, and has resulted in the creation of the impression that the plaintiff owned, or operated, or is interested in the business of the defendant."

The foregoing narrative, a large portion of which is based on the findings of the district court and all of which is supported by uncontroverted evidence in the case, demonstrates how far short the appellee fell of proving the broad averments of its petition. No single deceitful action upon the part of the appellant, or any of its representatives, was shown. On the contrary, its entire good faith in entering the Louisville territory in a...

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    • United States Courts of Appeals. United States Court of Appeals (2nd Circuit)
    • September 5, 2012
    ...principles to protect the use of color as a distinguishing product feature. See, e.g., Yellow Cab Transit Co. v. Louisville Taxicab & Transfer Co., 147 F.2d 407, 415 (6th Cir.1945) (holding that the user of a mark was “entitled to protection in its long established use of the color yellow o......
  • Owens-Corning Fiberglas Corp., In re, OWENS-CORNING
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    ...reddish-brown coloring for tents, tarpaulins, and wagon covers; and in Yellow Cab Transit Co. v. Louisville Taxicab & Transfer Co., 147 F.2d 407, 64 USPQ 348 (6th Cir.1945), the color yellow for taxicab services received Page 1119 protection on principles of unfair competition. The principa......
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    ...to appropriate trade territory." 53 F.Supp. 272, 277 (W.D.Ky. 1943), modified on other grounds, Yellow Cab Transit Co. v. Louisville Taxicab & Transfer Co., 147 F.2d 407 (6th Cir.1945). In that case, the "appropriate trade territory" was found to be Louisville, Kentucky. Id. In another fede......
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  • After Louboutin: Responding to Trademark Ownership of Color in Creative Contexts
    • United States
    • Mercer University School of Law Mercer Law Reviews No. 64-4, June 2013
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