For=20
The
YAHYA =
HASSAN,=20
INDIVIDUALLY AND D/B/A SAFE CAB CO. A/K/A SAFE CAB COMPANY, AND =
KEMAL=20
MOHAMMED, INDIVIDUALLY AND D/B/A SAFE CAB CO. A/K/A SAFE CAB =
COMPANY,=20
Appellants GREATER =
HOUSTON=20
TRANSPORTATION COMPANY D/B/A YELLOW CAB, =
Appellee
On =
Appeal from the=20
281st District Court Harris =
County,=20
Texas Trial =
Court Cause=20
No. 2004-21000
DISSENTING=20
OPINION I withdraw my =
previous=20
dissenting opinion dated February 15, 2007 and issue the following =
dissenting opinion in its stead. I respectfully dissent. This is =
an=20
important trade dress infringement case of first impression. It =
was=20
brought by appellee, Greater Houston Transportation Company d/b/a =
Yellow=20
Cab ("Yellow Cab") against appellants, Yahya Hassan, individually =
and=20
d/b/a Safe Cab Co. a/k/a Safe Cab Company, and Kemal Mohammed,=20
individually and d/b/a Safe Cab Co. a/k/a Safe Cab Company ("Safe =
Cab"),=20
under 15 U.S.C. =A7 1125(a) (2000), commonly known as the Lanham =
Act (the=20
"Act"), and Texas common law. Appellant assigns points of error =
under=20
both. The majority incorrectly concludes that appellant failed to =
preserve=20
its challenge to the legal sufficiency of the evidence, proceeds =
directly=20
to analyze the jury charge, summarily rejects a legally correct =
jury=20
charge as erroneous without analyzing trade dress law, conducts a =
cursory=20
and impressionistic harm analysis, concludes that the error was =
harmful,=20
and remands the case for a new trial under an incorrect charge. =
The=20
opinion invites the waste of judicial resources, confusion in the =
jury,=20
and error in the next judgment and in future cases. It also =
creates a=20
conflict between interpretations of the Lanham Act by Texas state =
courts=20
and federal courts with concurrent jurisdiction over the same =
federal=20
claims. I would affirm. Jury =
Charge Error:=20
Standard of Review In its third point of error, =
Safe Cab=20
asserts that the trial court erred in submitting an erroneous =
definition=20
of "secondary meaning" in the jury charge. Referring only to a =
portion of=20
the language from the challenged jury instruction and a single =
sentence in=20
the language of a seminal Supreme Court case, and without citing =
or=20
applying the standard of review for reversible jury charge error, =
the=20
majority conclusorily holds that an incorrect charge requiring =
reversal=20
was submitted. Because I believe the challenged jury instruction =
was not=20
erroneous under the applicable standard of review and that, even =
if it had=20
been erroneous, the error would not have caused the rendition of =
an=20
improper judgment because the evidence of trade dress infringement =
was=20
legally and factually sufficient to support the judgment, I would=20
affirm. "Rule 277 of the Texas Rules of =
Civil=20
Procedure requires a trial court to submit 'such instructions and=20
definitions as shall be proper to enable the jury to render a =
verdict.'"=20
State Farm Lloyds v. Nicolau, 951 S.W.2d 444, 451 (Tex. =
1997)=20
(quoting Tex. R. Civ. P. 277)). An appellate court reviews a trial =
court's=20
decision to submit or refuse an instruction under an abuse of =
discretion=20
standard. Shupe v. Lingafelter, 192 S.W.3d 577, 579 (Tex. =
2006).=20
When the trial court refuses to submit a requested instruction on =
an issue=20
raised by the pleadings and the evidence, the issue on appeal is =
whether=20
the request was reasonably necessary to enable the jury to reach a =
proper=20
verdict. Id.; Texas Workers' Comp. Ins. Fund v.=20
Mandlbauer, 34 S.W.3d 909, 912 (Tex. 2000). To be proper, an=20
instruction "must (1) assist the jury; (2) accurately state the =
law; and=20
(3) find support in the pleadings and the evidence." =
Mandlbauer,=20
34 S.W.3d at 912. The trial court has wide =
discretion to=20
determine the sufficiency of definitions and instructions. =
Plainsman=20
Trading Co. v. Crews, 898 S.W.2d 786, 791 (Tex. 1995); =
Allen v.=20
Allen, 966 S.W.2d 658, 659 (Tex. App.--San Antonio 1998, pet. =
denied). The test of the sufficiency of a definition is its =
reasonable=20
clarity in enabling jurors to understand legal words or phrases so =
that=20
they may properly answer the questions and render a verdict in the =
case.=20
Allen, 966 S.W.2d at 660; Harris v. Harris, 765 =
S.W.2d=20
798, 801 (Tex. App.--Houston [14th Dist.] 1989, writ denied). An=20
instruction is improper only if it misstates the law as applied to =
the=20
facts. Harris, 765 S.W.2d at 801. If the reviewing court =
determines that=20
the trial court gave an improper definition, it must then proceed =
to=20
inquire whether the error was harmless. Allen, 966 S.W.2d =
at 660;=20
M.N. Dannenbaum, Inc. v. Brummerhop, 840 S.W.2d 624, 631 =
(Tex.=20
App.--Houston [14th Dist.] 1992, writ denied); see also =
Tex. R.=20
App. P. 44.1(a)(1). The omission of an instruction is reversible =
error=20
only if it probably caused the rendition of an improper judgment.=20
Shupe, 192 S.W.3d at 579. The =
Challenged Jury=20
Instruction Jury Question No. 1 asked, =
"Does YELLOW=20
CAB's predominant use of the color yellow constitute a valid trade =
dress=20
in the City of Houston?" The instruction to which =
appellants=20
object stated: You may consider the =
following=20
factors when you determine whether YELLOW CAB's predominant =
use of=20
the color yellow has acquired a secondary meaning: (1) length and manner of use of =
the trade=20
dress; (2) volume of sales; =
(3) amount and manner of =
advertising=20
(4) nature of the use of the =
trade=20
dress (5) SAFE CAB['s] intent in =
copying the=20
trade dress. No one of these factors is =
necessarily=20
conclusive, but the consideration of each should be weighed in =
light of=20
the total evidence presented at trial. You are instructed that =
YELLOW CAB=20
need not produce evidence on all or even a majority of these =
factors.=20
You're are further instructed that no one factor is=20
dispositive. (Emphasis added.) Safe Cab informed the trial =
court at the=20
charge conference that it believed a proper statement of the law =
required=20
the court to instruct the jury that "secondary meaning . . . =
requires in=20
the minds of the consuming public the color has become =
uniquely linked=20
with only one provider of the service to the exclusion of all =
other=20
providers of the service as causes confusion to its origin."=20
(Emphasis added.) The trial court stated that it "notes your =
objection to=20
the lack of inclusion of the terminology regarding color. Court =
overrules=20
said objection." Propriety of the=20
Instruction Under the Lanham Act To determine whether the =
instruction on=20
secondary meaning submitted to the jury was proper, we must =
determine=20
whether it accurately stated the law and thus assisted the jury in =
making=20
a finding supported by the pleadings and the evidence. See=20
Mandlbauer, 34 S.W.3d at 912. To make this determination, it =
is=20
necessary to determine what constitutes proof of trade dress =
infringement=20
under the Lanham Act. The Lanham Act provides in =
relevant=20
part: (1) Any person who, on or in =
connection=20
with any goods or services, or any container for goods, uses =
in=20
commerce any word, term, name, symbol, or device, or any =
combination=20
thereof, or any false designation of origin, false or misleading=20
description of fact, or false or misleading representation of =
fact,=20
which-- (A) is likely to cause =
confusion, or to=20
cause mistake, or to deceive as to the affiliation, connection, or =
association of such person with another person . . . =
*** shall be liable in a civil =
action by any=20
person who believes that he or she is or is likely to be damaged =
by such=20
act. *** (3) In a civil action for trade =
dress=20
infringement under this Act for trade dress not registered on the=20
principal register, the person who asserts trade dress protection =
has the=20
burden of proving that the matter sought to be protected is not=20
functional. 15 U.S.C. =A7 1125(a) (2000) =
(emphasis=20
added). The Act establishes a cause of action for trade dress=20
infringement. 15 U.S.C. =A7 1125(a)(3) (2000 & Supp. I 2006)=20
(specifically referring to "civil action[s] for trade dress =
infringement=20
under this chapter for trade dress not registered on the principal =
register"); Wal-Mart Stores, Inc. v. Samara Bros., Inc., =
529 U.S.=20
205, 209, 120 S. Ct. 1339, 1343 (2000); =
Eppendorf-Netheler-Hinz GMBH=20
v. Ritter GMBH, 289 F.3d 351, 354 (5th Cir. 2002). Trade =
dress, for=20
which the Lanham Act provides protection, refers to the design or=20
packaging of a product that serves to identify the product's =
source.=20
TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 =
U.S. 23,=20
28, 121 S. Ct. 1255, 1259 (2001); Samara Bros., 529 U.S. =
at 209,=20
120 S. Ct. at 1342; Eppendorf-Netheler-Hinz, 289 F.3d at =
355. The=20
purpose of trade dress protection under the Lanham Act is "to =
'secure to=20
the owner of the [trade dress] the goodwill of his business and to =
protect=20
the ability of consumers to distinguish among competing =
[producers].'"=20
Eppendorf-Netheler-Hinz, 289 F.3d at 355 (quoting Two =
Pesos,=20
Inc. v. Taco Cabana, Inc., 505 U.S. 763, 774, 112 S. Ct. =
2753, 2760=20
(1992)). The Supreme Court and the =
federal courts=20
have identified three essential elements of a Lanham Act claim.=20
First, to prevent trademark law =
from=20
inhibiting legitimate competition by allowing a producer to =
control a=20
useful product feature, "the person who asserts trade dress =
protection=20
[under the Lanham Act] has the burden of proving that the matter =
sought to=20
be protected is not functional." Eppendorf-Netheler-Hinz, =
289=20
F.3d at 355 (quoting 15 U.S.C. =A7 1125(a)(3)); see also Two =
Pesos,=20
505 U.S. at 769, 112 S. Ct. at 2758. Second, in order to be entitled =
to=20
protection, a trademark, including trade dress, must be =
distinctive.=20
Two Pesos, 505 U.S. at 768, 112 S. Ct. at 2757. =
Trademarks are=20
generally classified as (1) generic; (2) descriptive; (3) =
suggestive; (4)=20
arbitrary; or (5) fanciful. Id. Generic trademarks are =
not=20
entitled to protection; trademarks that are suggestive, arbitrary, =
or=20
fanciful are intrinsically distinctive. See id. =
Descriptive marks=20
are not inherently distinctive, but they may acquire the =
distinctiveness=20
that allows them to be protected by the Lanham Act by acquiring =
"secondary=20
meaning." Two Pesos, 505 U.S. at 769, 112 S. Ct. at 2757; =
Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d =
786,=20
793-94 (5th Cir. 1983). "Secondary meaning is used generally to =
indicate=20
that a mark or dress 'has come through use to be uniquely =
associated with=20
a specific source.'" Two Pesos, 505 U.S. at 766 n. 4, 112 =
S. Ct.=20
at 2756 n.4. Thus, "[t]o establish secondary meaning, a =
manufacturer must=20
show that, in the minds of the public, the primary significance of =
a=20
product feature or term is to identify the source of the product =
rather=20
than the product itself." Id. (quoting Inwood Labs., =
Inc. v.=20
Ives Labs., Inc., 456 U.S. 844, 851 n.11, 102 S. Ct. 2182, =
2187 n.11=20
(1982)). Third, liability for trade =
dress=20
infringement requires proof of the likelihood of confusion between =
the=20
product of the plaintiff and that of the defendant. Two =
Pesos,=20
505 US. at 769, 112 S. Ct. at 2758; Sunbeam Prods., Inc. v. =
West Bend=20
Co., 123 F.3d 246, 257 (5th Cir. 1997); Blue Bell =
Bio-Med. v.=20
Cin-Bad, Inc., 864 F.2d 1253, 1256 (5th Cir. 1989). =
Thus, to prove that Safe Cab =
infringed=20
its protected trade dress, Yellow Cab had to prove that (1) the =
color=20
yellow on its cabs is a non-functional trade dress (a matter which =
is=20
undisputed); (2) the color yellow has acquired a secondary meaning =
for=20
Houston cabs, i.e., it has become primarily associated in =
the=20
minds of the public as signifying the brand "Yellow Cab" rather =
than a cab=20
that is yellow; and (3) there is a likelihood of confusion by =
consumers=20
between Safe Cab and Yellow Cab. "To establish secondary =
meaning, a=20
manufacturer must show that, in the minds of the public, the =
primary=20
significance of a product feature or term is to identify the =
source of the=20
product rather than the product itself." Two Pesos, 505 =
U.S. at=20
766 n.4, 112 S. Ct. at 2756 n.4; see also Samara Bros., =
529 U.S.=20
at 211, 120 S. Ct. at 1343. While no color can ever be inherently=20
distinctive, a color may be protected as a trademark upon a =
showing of=20
secondary meaning. Samara Bros., 529 U.S. at 211-12, 120 =
S. Ct.=20
at 1343-44. This occurs when, "over time, customers . . . come to =
treat a=20
particular color on a product or its packaging . . . as signifying =
a=20
brand." Id. at 212, 120 S. Ct. at 1344. The existence of=20
secondary meaning is a question for the trier of fact, and a =
district=20
court's finding on this issue will not be disturbed unless clearly =
erroneous. Sunbeam Prods., 123 F.3d at 253; =
Zatarains,=20
698 F.2d at 794. "[T]he major inquiry is the consumer's attitude =
towards=20
the mark." Zatarains, 698 F.2d at 795. Evidence relevant to the =
determination of=20
secondary meaning includes (1) the length and manner of the use of =
the=20
mark, (2) the nature and extent of advertising and promotion of =
the mark,=20
(3) the volume of sales of the product, and (4) instances of =
actual=20
confusion. Sunbeam Prods., 123 F.3d at 254;=20
Zatarains, 698 F.2d at 795. While none of these factors =
is=20
sufficient by itself to establish the necessary link in the minds =
of=20
consumers between a product and its source, they may in =
combination do so.=20
Zatarains, 698 F.2d at 795. The ultimate inquiry, =
however, is not=20
the extent of the promotional efforts, but their effectiveness.=20
Id.; see also Bank of Texas v. Commerce Sw., =
Inc., 741=20
F.2d 785, 788 (5th Cir. 1984). Accordingly, the most direct and =
persuasive=20
way of establishing secondary meaning is through survey evidence.=20
Sunbeam Prods., 123 F.3d at 253-54; Zatarains, =
698 F.2d=20
at 795. Here, the instruction submitted =
to the=20
jury stated that "'secondary meaning' means that the color at =
issue=20
has acquired a meaning beyond the primary meaning, by having =
become=20
associated by use, promotion or advertising, in the public =
mind=20
with the business of YELLOW CAB." (Emphasis added.) =
Cf. Two=20
Pesos, 505 U.S. at 766 n.4, 112 S. Ct. at 2756 n.4 (holding =
that=20
"[t]o establish secondary meaning, a manufacturer must show that, =
in the=20
minds of the public, the primary significance of a product =
feature or=20
term is to identify the source of the product rather than the =
product=20
itself.") (emphasis added) (quoting Inwood Labs., 456 =
U.S. at 851=20
n.11, 102 S. Ct. at 2187 n.11). The instruction does not state =
that the=20
primary significance of the color yellow when used on a cab must =
shift=20
from the color itself to the business. However, any suggestion of =
a=20
deficiency in the definition was cured by the instruction's =
accurate=20
recital of the factors for the jury to consider in proving =
secondary=20
meaning. The instruction went on to state: You may consider the following =
factors=20
when you determine whether YELLOW CAB's predominant use of the =
color=20
yellow has acquired a secondary meaning: (1) length and manner of use of =
the trade=20
dress; (2) volume of sales; =
(3) amount and manner of =
advertising=20
(4) nature of the use of the =
trade=20
dress (5) SAFE CAB['s] intent in =
copying the=20
trade dress. No one of these factors is =
necessarily=20
conclusive, but the consideration of each should be weighed in =
light of=20
the total evidence presented at trial. You are instructed that =
YELLOW CAB=20
need not produce evidence on all or even a majority of these =
factors.=20
You're are further instructed that no one factor is=20
dispositive. The instruction thus =
includes an=20
accurate summary of the factors the federal courts have held are =
to be=20
considered in determining whether a product has acquired a =
secondary=20
meaning for Lanham Act purposes. See Sunbeam Prods., =
123=20
F.3d at 254; Zatarains, 698 F.2d at 795 (evidence =
relevant to=20
determination of secondary meaning includes (1) length and manner =
of the=20
use of the mark, (2) nature and extent of advertising and =
promotion of=20
mark, (3) volume of sales, and (4) instances of actual confusion). =
Moreover, the instruction accurately and helpfully informed the =
jury that=20
"[n]o one of these factors is necessarily conclusive, but the=20
consideration of each should be weighed in light of the total =
evidence=20
presented at trial." By contrast, the instruction =
Safe Cab=20
sought would have incorrectly informed the jury that "for =
color=20
to acquire secondary meaning requires in the minds of the =
consuming public=20
the color has become uniquely linked with only one =
provider of=20
the service to the exclusion of all other providers of =
the=20
service." (Emphasis added.) This implies a higher burden of proof =
than any=20
of the legal authority interpreting the Lanham Act requires. In =
addition,=20
the proffered instruction--by itself--would have entirely failed =
to advise=20
the jurors either that they were to consider specific factors in=20
determining whether the color yellow had acquired a secondary =
meaning or=20
that they were to weigh all factors in light of the total evidence =
rather=20
than considering any one of them dispositive. Thus, the rejected=20
instruction would have left the jury with the incorrect impression =
that=20
all they had to consider was proof that the color yellow was =
"uniquely=20
linked" with Yellow Cab "to the exclusion of all other providers," =
which=20
is not the standard of proof of a Lanham Act claim. The instruction on secondary =
meaning=20
submitted to the jury accurately stated the law, assisted the =
jury, and=20
comported with the pleadings and proof of a Lanham Act claim. It =
was,=20
therefore, well within the judge's broad discretion to submit. =
See=20
Mandlbauer, 34 S.W.3d at 912; Plainsman Trading Co., =
898=20
S.W.2d at 791; Allen, 966 S.W.2d at 660. By contrast, the =
instruction proffered by appellant in its place was unhelpful and=20
misleading. Therefore, I would overrule Safe Cab's third point of =
error.=20
The majority, however, recites only a few words of the submitted=20
instruction without acknowledging the rest, ignores the federal =
courts'=20
determination of factors to consider in determining whether a =
product has=20
established a secondary meaning, determines conclusorily that the=20
instruction is erroneous, and sustains the point of error. It then =
conducts a cursory harm analysis and orders a new trial under an=20
improper instruction, thereby inviting confusion in the =
jury,=20
error by the trial court, and the waste of litigation=20
resources. Harm =
Analysis:=20
Sufficiency of the Evidence to Support the =
Judgment When an appellate court finds =
error in=20
the submission of a jury instruction, a harm analysis is =
mandatory.=20
Allen, 966 S.W.2d at 660; M.N. Dannenbaum, 840 =
S.W.2d at=20
631. Thus, if I were to agree with the majority's conclusion that =
the=20
instruction submitted on secondary meaning was erroneous, I would=20
determine whether the error was harmful by asking whether it =
probably=20
caused the rendition of an improper judgment. See Shupe, =
192=20
S.W.3d at 579. Because I would find that the evidence was both =
legally and=20
factually sufficient to support the judgment under the proper =
factors, I=20
do not agree with the majority's implied conclusion that its =
submission=20
probably caused the rendition of an improper judgment and, =
therefore,=20
reversal and remand was required. See id. at 579. I would =
affirm=20
the judgment below. To prove=20
trade dress infringement under the Lanham Act, Yellow Cab had to =
prove (1)=20
that the color yellow is non-functional, which is not disputed; =
(2) that=20
the color yellow had acquired a secondary meaning in the Houston=20
marketplace; and (3) that there was a likelihood of confusion in =
the mind=20
of the public between Safe Cab and Yellow Cab. See Two =
Pesos, 505=20
U.S. at 768-69, 112 S. Ct. at 2757-58. In its fourth, fifth, and =
sixth=20
points of error, Safe Cab argues that the evidence was legally and =
factually insufficient to support the jury's implicit finding of=20
"secondary meaning" and that the evidence was factually =
insufficient to=20
support the jury's finding that Safe Cab's use of the color yellow =
on its=20
taxis caused a likelihood of confusion in the minds of the public. =
Therefore, I would address these points of error to determine =
whether the=20
judgment was improper. When an=20
appellant attacks the legal sufficiency of an adverse finding on =
an issue=20
on which it did not have the burden of proof, it must demonstrate =
that no=20
evidence supports the finding. Croucher v. Croucher, 660 =
S.W.2d=20
55, 58 (Tex. 1983). In deciding whether the evidence in support of =
the=20
finding amounts to "no evidence," the reviewing court considers =
only the=20
evidence and inferences tending to support the jury's finding, =
viewed in=20
the light most favorable to the finding, and disregards all =
contrary=20
evidence and inferences. MerrellDow Pharm., Inc. v. =
Havner, 953=20
S.W.2d 706, 711 (Tex. 1997); Havner v. E-Z Mart Stores, =
Inc., 825=20
S.W.2d 456, 458 (Tex. 1992); see City of Keller v. =
Wilson, 168=20
S.W.3d 802, 822 (Tex. 2005) (holding that whether reviewing court =
starts=20
with all or only part of record, it "must consider evidence in the =
light=20
most favorable to the verdict, and indulge every reasonable =
inference that=20
would support it," but "if the evidence allows of only one =
inference,=20
neither jurors nor the reviewing court may disregard it"). Thus, =
"[a]=20
no-evidence point will be sustained when (a) there is a complete =
absence=20
of evidence of a vital fact, (b) the court is barred by rules of =
law or of=20
evidence from giving weight to the only evidence offered to prove =
a vital=20
fact, (c) the evidence offered to prove a vital fact is no more =
than a=20
scintilla, or (d) the evidence conclusively establishes the =
opposite of=20
the vital fact." City of Keller, 168 S.W.3d at 810 & =
n.16=20
(quoting Havner, 953 S.W.2d at 711). "More than a =
scintilla" of=20
evidence exists to support a jury finding when the evidence =
supporting the=20
finding, taken as a whole, would enable reasonable and fair-minded =
people=20
to draw different conclusions. Havner, 953 S.W.2d at=20
711. In=20
reviewing the factual sufficiency of the evidence to support a =
jury=20
finding, the court conducts a neutral review of all the evidence =
and sets=20
aside the verdict only "if it is so contrary to the overwhelming =
weight of=20
the evidence as to be clearly wrong and unjust." Cain v. =
Bain,=20
709 S.W.2d 175, 176 (Tex. 1986); see also Minucci v. =
Sogevalor,=20
S.A., 14 S.W.3d 790, 794 (Tex. App.--Houston [1st Dist.] =
2000, no=20
pet.). Here, I=20
would hold that the evidence taken as a whole and considered under =
the=20
Zatarains factors in the light most favorable to the =
verdict is=20
legally sufficient to support the jury's implicit finding that =
Yellow Cab=20
established a secondary meaning for the color yellow. See=20
Zatarains, 698 F.2d at 795. (1)=20
Length and manner of use of the mark Yellow Cab=20
produced evidence that it had operated only predominantly yellow =
taxicabs=20
in the Houston area since the 1940's, was the senior user of =
yellow=20
colored taxis in Houston, and promoted the color yellow as its =
trade=20
dress. It also produced evidence that it had worked assiduously to =
associate its trade dress with superior training of its personnel =
and=20
superior service. (2)=20
Nature and extent of advertising and promotion of the =
mark Yellow Cab=20
also produced evidence that it used its taxicabs as rolling =
advertisements=20
for Yellow Cab and that it engaged in extensive marketing efforts =
in the=20
media. In the year prior to trial it had spent several hundred =
thousand=20
dollars marketing and advertising. It also purchased a dominant=20
advertisement displaying its cab and the color yellow in the =
Yellow Pages.=20
In addition, it belonged to trade and business associations, =
sponsored=20
charitable events, and used a vintage cab and a Hummer painted =
with Yellow=20
Cab's predominantly yellow color in parades and promotions. =
(3)=20
Volume of sales Yellow Cab=20
also produced evidence that it had grown its operations from 67 =
cabs in=20
1967 to 894 cabs at the time of trial and that 700 to 800 of its =
yellow=20
taxis operated daily on Houston streets, each with identical =
yellow=20
coloring. In 2003, the year prior to trial, Yellow Cab taxis =
amounted to=20
40% of the entire taxicab fleet in Houston. That year, 1.6 million =
Yellow=20
Cab trips were dispatched in Houston. Yellow Cab had contracted =
with three=20
agencies serving the disabled and dispatched 650,000 calls to them =
in the=20
12 months preceding trial. In addition, Yellow Cab had solicited =
and=20
obtained contracts with 600 companies to use voucher accounts, =
resulting=20
in 645,000 calls. Each of Yellow Cab's taxis logs 60,000 to 65,000 =
miles a=20
year servicing the Houston area. (4)=20
Instances of actual confusion While there=20
was no direct survey evidence of the effect of Yellow Cab's yellow =
trade=20
dress on consumers, there was indirect evidence of consumer =
confusion. The=20
City of Houston official with responsibility for taxi operations, =
Blanton=20
Daniels, testified that customers associated yellow cabs with =
Yellow Cab=20
and that, if that same cab color scheme were to come before him =
again for=20
approval it would not be approved because of the potential for =
confusion=20
in the public. Because of the likelihood of confusion to the =
consuming=20
public he had "gone to the length of putting a moratorium on the =
color=20
yellow." Daniels further testified, "I think a person walking out =
to get a=20
cab might be fooled. It could happen." Finally, he testified that, =
stepping out of his own role, "I can see where a person would look =
at a=20
yellow car and if it's a cab, they were automatically going to =
assume it's=20
Yellow Cab." Although=20
none of the factors cited above is sufficient by itself to =
establish the=20
necessary link in the minds of consumers between a product and its =
source,=20
viewing the foregoing evidence in the light most favorable to =
Yellow Cab,=20
I would hold that the evidence of secondary meaning, taken as a =
whole, is=20
legally sufficient to support the jury's implied finding with =
respect to=20
Jury Question No. 1 that Yellow Cab established a secondary =
meaning for=20
the use of the color yellow as its trade dress. Safe Cab=20
also contends, however, that, viewed neutrally, the evidence was =
factually=20
insufficient to support the jury's finding that Yellow Cab =
established a=20
secondary meaning for its predominantly yellow trade dress, =
i.e.,=20
"it is so contrary to the overwhelming weight of the evidence as =
to be=20
clearly wrong and unjust." Cain, 709 S.W.2d at 176. =
Safe Cab=20
reminds us that the absence of an objective consumer survey is a=20
significant hindrance to satisfying the high standard of proof of=20
secondary meaning. See Vision Ctr. v. Optiks, Inc., 596 =
F.2d 111,=20
119 (5th Cir. 1979). It points to evidence that Yellow Cab did not =
conduct=20
any consumer interviews or perform any consumer surveys to =
determine the=20
effectiveness. Nor was there any direct evidence that consumers =
were=20
confused between Yellow Cab and Safe Cab. Moreover, it points out =
that=20
many other cab companies in the Houston area had used the color =
yellow.=20
Yellow Cab=20
responds that it did produce some evidence of actual customer =
confusion=20
through Daniels, the person in charge of taxi operations for the =
City of=20
Houston. It also responds that there was evidence that the use of=20
predominantly yellow cabs by other taxi operators was a recent =
phenomenon,=20
that the City of Houston did not monitor the use of color by its =
licensees=20
after the license was issued, and that the City of Houston had =
placed a=20
moratorium on issuing further licenses for the operation of yellow =
cabs.=20
I =
cannot=20
say that the evidence was so weak or the jury's implied finding on =
secondary meaning in support of its answer to Jury Question No. 1 =
was so=20
against the great weight and preponderance of the evidence as to =
be=20
manifestly wrong and unjust. See Cain, 709 S.W.2d at 176. =
I would=20
hold, therefore, that the evidence was factually sufficient to =
support the=20
jury's implied finding in response to Question No. 1 that Yellow =
Cab had=20
established a secondary meaning for the use of the color yellow.=20
I =
would=20
overrule Safe Cab's fourth and fifth points of error. In response=20
to Question No. 3, the jury responded that Safe Cab's use of the =
color=20
yellow on its taxi caused a likelihood of confusion. In its sixth =
issue,=20
Safe Cab contends that the evidence was factually insufficient to =
support=20
the jury's finding. Likelihood=20
of confusion is a question of fact that is reviewed for clear =
error.=20
Sunbeam Prods., 123 F.3d at 257. The likelihood of =
confusion is=20
determined with respect to the product's typical buyer. =
Kentucky Fried=20
Chicken Corp. v. Diversified Packing Corp., 549 F.2d 368, 389 =
n.26=20
(5th Cir. 1977); see also Pro Hardware, Inc. v. Home =
Ctrs. of=20
Am., Inc., 607 F. Supp. 146, 152 (S.D. Tex. 1984). The =
likelihood of=20
confusion is determined by application of the "digits of =
confusion" test.=20
Sunbeam Prods., 123 F.3d at 257. The factors weighed =
include "(1)=20
similarity of the two products; (2) identity of retail outlets and =
purchasers; (3) identity of advertising media; (4) strength of the =
trademark or trade dress; (5) intent of the defendant; (6) =
similarity of=20
design; (7) actual confusion; and (8) degree of care employed by=20
consumers." Id. (1), (6) =
Similarity of=20
the two products and of design Like Yellow Cab, =
Safe Cab=20
operated taxis that serve customers in the Houston area in transit =
between=20
city airports and hotels. Yellow Cab presented evidence that Safe =
Cab=20
painted its taxi with a yellow color nearly identical to Yellow =
Cab's.=20
Indeed, the two cabs could be distinguished only if they were =
side-by-side=20
in broad daylight. Moreover, the front views were very similar, =
and both=20
Yellow Cab's and Safe Cab's taxis were rolling advertisements, =
although=20
Safe Cab's taxi had its own name and telephone number printed on =
the side.=20
(2) Identity =
of retail=20
outlets and purchasers Because it had =
only one=20
taxi, Safe Cab serviced only airports and hotels. All Houston cabs =
are=20
required by City ordinance to charge the same fare, and, at =
airports and=20
hotels, most patrons take the next cab in line. There was =
evidence,=20
however, while these services were the same, Yellow Cab was much =
larger,=20
used a dispatcher, and was able to offer more services. =
(3) Identity =
of=20
advertising media Both Yellow Cab's =
and Safe=20
Cab's taxis were rolling advertisements. However, in addition, =
Yellow Cab=20
promoted yellow in its marketing, purchased large advertisements =
in the=20
Yellow Pages, was active in charities, and used a promotional =
vintage car=20
and Hummer. There is no evidence that Safe Cab did any advertising =
other=20
than using its taxi as a rolling advertisement. However, Safe Cab =
also=20
used a receipt form almost identical to Yellow Cab's. =
(4) Strength =
of trade=20
dress Blanton Daniels, =
the person=20
charged with taxi regulation for the City of Houston, testified =
that=20
Yellow Cab had greater name recognition than any other cab =
business in=20
Houston. Moreover, Yellow Cab established that it was the senior =
user of=20
the color yellow for cabs in Houston, an area it had serviced =
since the=20
1940's, that it provided over 1,200,000 rides a year to customers, =
that it=20
promoted the color yellow in substantial advertising in a variety =
of=20
media, and that it was the dominant provider of taxi services in =
the=20
Houston area. Nevertheless, approximately 20 cab companies other =
than=20
Yellow Cab were operating yellow-colored taxis in Houston in 1993, =
the=20
year Daniels began working at the agency. However, the City had =
placed a=20
moratorium on the issuance of new permits to yellow-colored =
taxicabs a=20
year prior to trial, and Daniels testified that he would not issue =
any=20
more permits for yellow cabs because of the likelihood of=20
confusion. (5) Intent of =
the=20
defendant There was no =
evidence of=20
direct intent on the part of Safe Cab to infringe Yellow Cab's =
trade=20
dress. However, both owners of Safe Cab had previously worked at =
Yellow=20
Cab, chose a virtually identical color for their cab, used the cab =
as a=20
rolling advertisement, and used nearly identical receipt=20
forms. (7), (8) =
Actual=20
confusion and degree of care employed by consumers =
There was no =
direct evidence=20
that any consumer had actually confused Safe Cab with Yellow Cab. =
However,=20
there was indirect evidence of confusion between yellow-colored =
cabs and=20
Yellow Cabs. Daniels testified that customers had associated the =
concept=20
of a yellow cab with Yellow Cab and that, if the cab color scheme =
were to=20
come before him again for approval it would not be approved =
because of the=20
potential for confusion in the public. He also testified, "I think =
a=20
person walking out to get a cab might be fooled. It could happen." =
Because=20
of the likelihood of confusion to the consuming public he had put =
a=20
moratorium on the color yellow. Finally, he testified that he =
would not=20
confuse the two because of his long experience, but "I can see =
where a=20
person would look at a yellow car and if it's a cab, they were=20
automatically going to assume it's Yellow Cab." In sum, Yellow Cab =
produced=20
evidence of likelihood of confusion with respect to each of the =
relevant=20
factors with the exception of direct evidence of actual confusion, =
including evidence of virtually identical color, design, =
geographic area,=20
and services to the extent Safe Cab offered services, as well as =
indirect=20
evidence of confusion of other yellow cabs with Yellow Cab. The =
fact that=20
Yellow Cab had a much larger fleet, provided more services, or =
used=20
additional types of media to advertise its services does not =
lessen the=20
impact of the nearly identical color, design, use of advertising, =
and=20
services offered by Safe Cab to the extent Safe Cab advertised or =
offered=20
taxi services at all. Countervailing evidence, however, showed =
that a=20
number of other yellow cabs had been operating in Houston for a =
period of=20
time before a moratorium was placed on the issuance of new =
licenses for=20
taxi services using yellow cabs. I would hold that =
the jury's=20
finding of actual confusion in response to Jury Question No. 3 was =
not so=20
against the overwhelming weight of the evidence as to be =
manifestly wrong=20
and unjust. Moreover, even had the evidence not supported the =
jury's=20
finding of actual confusion, proof of actual confusion is not a=20
prerequisite for a finding of likelihood of confusion; nor is any =
single=20
factor dispositive of the likelihood of confusion. Sunbeam=20
Prods., 123 F.3d at 257. I would overrule =
Safe Cab's=20
sixth point of error.
Evelyn V.=20
Keyes Panel=20
consists of Justices Nuchia, Keyes, and Hanks. Justice=20
Keyes, dissenting.=20
I =
would have=20
addressed appellant's legal and factual sufficiency arguments =
first and=20
rendered judgment rather than addressing appellant's jury =
instruction=20
issue first and remanding for a new trial. The majority concludes =
that it=20
cannot do this because "Safe Cab did not move for a directed =
verdict, file=20
a motion for judgment notwithstanding the verdict, or otherwise =
preserve=20
its no-evidence complaint except in its motion for new trial. . . =
.=20
Therefore, because Safe Cab asked only for a new trial, we can =
only remand=20
for a new trial." Therefore, it addressed the jury charge first. =
However,=20
the majority does not dispute that Safe Cab did preserve its =
no-evidence=20
point of error. See Cecil v. Smith, 804 S.W.2d =
509,=20
510-11 (Tex. 1991) ("A 'no evidence' point of error is preserved =
for=20
appeal if "raised by (1) a motion for instructed verdict, (2) a =
motion for=20
judgment notwithstanding the verdict, (3) an objection to the =
submission=20
of the issue to the jury, (4) a motion to disregard the jury's =
answer to a=20
vital fact issue, or (5) a motion for new trial."). Rendition of =
judgment=20
is the appropriate remedy if the party with the burden of proof =
allegedly=20
offers no evidence, or legally insufficient evidence, to support a =
claim.=20
Southwestern Bell Tel. Co. v. Garza, 164 S.W.3d 607, 626 =
n.58=20
(Tex. 2004); Horrocks v. Texas Dept. of Transp., 852 =
S.W.2d 498,=20
499 (Tex. 1993) (per curiam) ("Ordinarily, an appellate court =
should=20
render judgment after sustaining a complaint as to the legal =
sufficiency=20
of the evidence.").=20
The jury=20
instruction was not challenged by Safe Cab. No one of=20
these factors is necessarily conclusive, but the consideration of =
each=20
should be weighed in light of the total evidence produced at =
trial. You=20
are instructed that YELLOW CAB need not produce evidence on all or =
even a=20
majority of these factors. You are further instructed that no one =
factor=20
is dispositive.=20
In =
its second=20
point of error, Safe Cab argues that the trial court erred in =
entering=20
judgment for Yellow Cab because the jury did not find an element =
of its=20
Texas common-law unfair competition claim, namely irreparable =
harm.=20
Because I would hold that Yellow Cab established trade dress =
infringement=20
under the Lanham Act, I would not reach this=20
issue.