*1 do bright We not intend to create a line automatically
rule that would make an in-
vestigative detention unreasonable the mo-
ment the initial reason for the traffic
stop ends. Because the officers failed to case, suspicion
show reasonable this unreasonable for them continue de-
taining Appellant after long warning
citation was issued.
Conclusion Appellant’s
Because continued detention unreasonable, based its non-con-
sensual nature and fact that the depu- suspicion
ties lacked reasonable to contin- questioning
ue Appellant once the initial stop ended,
reason for the traffic we affirm judgment of appeals.
KELLER, P.J., dissented.
Yahya HASSAN, Individually and d/b/a
Safe Cab Co. Company, Safe Cab a/k/a Mohammed,
and Kemal Individually Co. d/b/a a/k/a
Company, Appellants,
GREATER HOUSTON TRANSPOR
TATION COMPANY Yel d/b/a Cab, Appellee.
low
No. 01-05-00494-CV. Texas, Appeals
Court of Dist.). (1st
Houston
Feb. 2007.
Dissenting Opinion Judge Keyes
Feb. 2007. En
Rehearing Banc Overruled
Oct.
Mohammed, individually and d/b/a (“Safe Company Co. a/k/a Cab”), title States Code under United 1125(a),2 commonly known as the section *3 Act, Af- Texas common law. Lanham trial, rendered jury a the trial court ter permanent injunction judgment granting prohibiting in of Yellow Cab favor any taxicab with operating Safe Cab from used predominantly that a color scheme Safe Cab yellow. appeal, On (1) lacked sub- the trial court asserts ject-matter jurisdiction over Yellow (2) claim; the trial court Lanham Act for rendering judgment Yellow erred find an ele- did not Cab because com- Texas unfair ment of its common-law (3) claim; trial erred petition court an erroneous definition giving meaning”; the evidence “secondary support legally insufficient secondary meaning; jury’s finding of factually insufficient to Houston, Tyson, Appel- James F. for finding of support jury’s lants. factual- meaning; and the evidence was Plessala, Young, Robert A. Marc A. jury’s finding ly support insufficient Cokinos, Houston, Young, Bosien & of the color on that Safe Cab’s use Appellee. of confusion. its taxis caused likelihood NUCHIA, Panel consists of Justices judgment and remand reverse We KEYES, and HANKS. proceedings. for further case
OPINION BACKGROUND NUCHIA, SAM Justice. 1940s, has been Since the Yellow Cab taxicabs in the yellow-colored operating
Appellees, Greater Trans Houston Today, area. metropolitan Houston portation Company Yellow Cab d/b/a are average day, there between (“Yellow Cab”), dress1 brought servicing greater taxis 800 Yellow Cab Yahya against appellants, cause of action day. each While Yellow Cab Hassan, Houston individually and Safe Cab d/b/a Houston, company taxi Company, and Kemal the dominant Co. Safe Cab a/k/a 43(a) marketing techniques as well. sionally of the Lan- 1. Trade dress under section image prod- ham Act consists of the total of a Lalonde, & Jerome Anne G. Karen Green Gilson. service, including product features § uct or 2A.01[1] Protection & Practice Trademark size, color, design, shape, packaging such as labels, ed.2006). (59th combinations, graphics, or ser- decor, retail vice business features such as (LexisNexis 1125(a) § U.S.C.S. 2. See 15 features, menus, lay- restaurant architectural 2006). service, costumes, outs, styles and occa- trial, companies. taxi Safe Cab’s motion for there are about 120 other new Thirty-six companies of these other taxicab appeal. filed this taxis, predominately yellow-colored use Subject-Matter Jurisdiction but each has a different color scheme. As far as there more than 20 back were error, In its first companies using pre- taxicab Houston contends that the trial lacked sub dominately yellow color scheme. As the ject-matter jurisdiction over Yellow Cab’s implies, paint- are name Yellow Cab’s taxis Lanham Act claim because did They lettering black yellow. ed have prove that Safe Cab’s services were logos crossed-sword on the side. “in commerce.” used Yellow Cab re “in sponds require commerce” Safe Cab received a license to *4 jurisdic ment of the Lanham Act is not operate City of Houston. Its choice tional, simply but instead is an element of yellow paint of a scheme for its taxi3 was action, the cause of and therefore Safe Cab approved by Transportation Section of argument by failing has this waived City year, of Houston. In that same preserve complaint. Transporta- complained Yellow Cab tion Section about the existence of other provides pertinent The Lanham Act taxis, yellow-colored city which part: placed any yel- a moratorium on further who, Any or in connection person However, taxis. there were low-colored services, any or any goods with yellow-colored still taxis on the over in commerce goods, container for uses streets of Houston that were not associat- name, word, term, any symbol, or de- ed with Yellow Cab. vice, thereof, or any or combination
Yellow Cab sent “cease and desist” de- any origin, false designation false companies mand letters to taxi with fact, description of misleading or schemes, demanding they stop which— using yellow-colored offering taxis and (A) confusion, or likely is to cause paint their taxis another color at Yellow mistake, or to deceive as to cause companies, taxi expense. Two with connection, affiliation, or associ- taxis, approximately accepted a total of person ation another of such After Safe re- Yellow Cab’s offer. sponsor- person, origin, or as to the de- comply fused to with Yellow Cab’s his or her ship, approval mand, filed suit under services, goods, or commercial ac- Act, statutory scheme Lanham the federal ... person, tivities another infringe- for trademark and trade dress ment, and a Texas common-law claim of by any shall be liable in a civil action contending yel- that its competition, unfair is that he or she person who believes trade protectable low-colored taxis were by such act. likely damaged or is to be sought permanent dress. Yellow Cab 2006) (LexisNexis 1125(a)(1) § 15 U.S.C.S. injunction enjoining using Safe Cab from added). (emphasis yellow-colored taxis. The returned a appeals circuit courts of Cab, Several federal and the verdict favor of Yellow language held that the “in commerce” judgment permanent- have trial rendered See Starter using yellow- jurisdictional prerequisite. is a ly enjoining Safe Cab from Converse, Inc., F.3d orp. trial court denied C v. colored taxis. After the only taxi. 3. Safe Cab one
(2d Cir.1996) (holding
courts,
that use of marks
Unlike federal
in which
sufficiently
authority
adjudicate
“in commerce”
must be estab
to sustain
case,
lished for each
federal-question jurisdiction
Texas district courts
under Lan-
Act);
Garden,
general jurisdiction,
are courts of
and sub
ham
Ocean
Inc. v. Mark
(9th
ject-matter jurisdiction
Co.,
.1991)
over
cause of ac
953 F.2d
Cir
presumed
contrary
tion is
unless a
show
(stating that act in
triggers
commerce
sub
ing is made. Dubai Petroleum
Co.
ject-matter jurisdiction); Rickard v. Auto
Kazi,
(Tex.2000).
Publisher,
735 F.2d
453 n. 1
Kazi,
supreme
our
court hеld that
(11th Cir.1984) (“In
involving
actions
un
statutory requirement in that case
not
registered trademarks,
jurisdiction
jurisdictional.4 Id. at 73. The court con
the federal
courts extends
to cases in
plaintiffs
cluded that a
failure to establish
designation
which a false
origin
has
a statutory prerequisite does
deprive
”).
‘transported
been
or used in commerce.’
subject-matter
the trial court of
jurisdic
However, at least one circuit court has
plaintiffs
tion over the
if
claim the statuto
requirement
treated the
nonjurisdic-
as a
ry prerequisite
merely
a condition on
tional element of the cause of action. See
plaintiffs
right
depends.
which
to relief
Carets,
World
Inc. v. Dick Littrell’s New
*5
Thus,
at
statutory
Id.
76-77.
require
(5th
Carpets,
482,
World
438 F.2d
488-89
may
ment
be mandatory
being
without
Cir.1971).
jurisdictional.
Compliance
Id. at 76.
with
nonjurisdictional, mandatory requirements
Decisions of the federal courts of
can be
if
timely
waived
not
asserted.
appeals
courts,
do not bind Texas
although
Univ. Tex. Sw. Med.
v.
Ctr. Loutzenhis
of
they are received
respectful
with
consider
er,
(Tex.2004).
351,
140 S.W.3d
359
How
Pеtroleum,
ation. Hayes
Inc.,
v. Pin Oak
ever, subject-matter
jurisdiction may not
668,
798 S.W.2d
672 n. 5 (Tex.App.-Austin
by
be
parties
waived
the
and may be
denied).
1990, writ
Texas state courts
raised for the
appeal.
first time on
Tex.
“are free to interpret
indepen
federal law
Bd.,
Ass’n Bus. v. Tex. Air Control
of
dently,
though in the first
instance we
(Tex.1993).
440,
S.W.2d
typically
guidance
seek
from among the
decisions of the lower federal courts.”
Appellant has made no showing
Airlines,
v. Continental
882 that the “in commerce” requirement
ju
Kiefer
496,
S.W.2d
502 (Tex.App.-Houston [1st
risdictional, and
do
interpret
we
not so
the
1994),
(Tex.
aff'd,
Dist.]
unique association with CONCLUSION company. taxicab There was specific 40 taxicab approximately evidence that sustained Safe Cab’s Because we have predominate- in Houston used a companies challenge jury charge definition of yellow color scheme and that some of ly need not reach its secondary meaning, we operated City companies those had complaining of error second years. for at least 10 This of Houston irreparable harm— finding there no uncontested. The evidеnce evidence was claim.7 competition of an unfair an element was, by established that Yellow Cab also fourth, fifth, Likewise, because Safe Cab’s far, having largest companies, of these challenging the points and sixth of error in excess of 700 cabs on streets sufficiency of the factual evi- legal and Therefore, it daily. possible is Houston need not points, we dence are remand public may that the have come associate reach them. Cab. Howev- with Yellow of the trial judgment We reverse er, public it that the is equally possible for further the case court and remand that not all cabs are Yellow aware proceedings. Cabs. charge per-
The definition in the court’s KEYES, Justice dissents. yel- to find that the color mitted KEYES, Justice, EVELYN V. if acquired secondary meaning low dissenting. use, promotion merely “associated dissenting opin- my previous I withdraw Cab,” op- as advertising with Yellow ” 2007 and issue February ion dated being “uniquely associated with posed I in its stead. following dissenting opinion (the source). It is singlе Yellow Cab important This is respectfully dissent. to tell a it must quite thing a different im- of first infringement case trade dress advertising and through an association find by appellee, pression. brought It was unique opposed finding as promotion Company Transportation source of the Greater Houston specific association with a Cab”) (“Yellow against the source rather product identifying d/b/a charge Hassan, definition product. individually than the Yahya appellants, enough inquiry require rigorous Compa- did not Safe Safe Cab Cab Co. a/k/a d/b/a in line Su- part jury, on the Mohammed, individually ny, and Kemal precedent, and therefore preme Court Co. a/k/a d/b/a *8 a differ- jury probably have reached (“Safe Cab”), 15 under U.S.C. Company the correct given had it been ent result 1125(a) as the (2000), commonly known § definition. (the “Act”), Texas com- and Lanham Act of er- assigns points Appellant mon law. trial court erred in hold that
We incorrectly majority ror under both. The definition of sec- providing an erroneous charge of Yellow Cab’s сompetition requires jury submission Liability for unfair (the infringement inde- cause of action “finding independent substantive tort of some competi- supporting unfair Schoellkopf pendent tort illegal v. other conduct.” or claim), 897, point reach this (Tex.App.-Dallas tion we need not 904 Pledger, 778 S.W.2d 1989, writ). relating competition. Id. in error to unfair there was error no Because
735 277). concludes that appellant preserve failed to P. An appellate Tex.R. Civ. challenge legal sufficiency of the reviews a trial court’s decision to submit or evidence, proceeds directly to analyze the refuse an instruction under an abuse of jury charge, summarily rejects legally Shupe Lingafelter, discretion standard. v. jury charge correct as erroneous without (Tex.2006). 577, S.W.3d When analyzing law, trade dress conducts a cur- trial court requested refuses submit a sory impressionistic and analysis, harm instruction on an issue raised the plead harmful, concludes that the error was and evidence, ings and the on appeal issue remands the сase for a trial under an new request reasonably whether incorrect charge. opinion The invites the necessary to enable the to reach a resources, of judicial waste in Id.; proper verdict. Texas Workers’ jury, and error in the next judgment Mandlbauer, v. Comp. Ins. Fund and future cases. It also creates a (Tex.2000). 909, proper, S.W.3d To be conflict interpretations between an jury; instruction “must assist the Lanham Act Texas state courts and accurately law; sup state the find federal jurisdiction courts with concurrent port in the pleadings and the evidence.” over the same federal claims. I would Mandlbauer, 34 at 912. S.W.3d affirm. The trial court has wide discretion to Jury Charge Error: Standard sufficiency determine the definitions of Review Trading instructions. Plainsman v. Co. error, In its third Crews, (Tex.1995); 898 S.W.2d asserts that the trial court erred sub- Allen, (Tex. Allen 966 S.W.2d mitting an erroneous definition of “second- denied). App.-San pet. Antonio ary meaning” charge. Refer- sufficiency test of the of a definition is its ring only portion to a language from clarity enabling jurors reasonable the challenged jury instruction and a sin- legal phrases understand words or so gle sentence in the language of a seminal they may properly the questions answer Supreme case, Court citing without Allen, and render a verdict in the case. applying the standard of review revers- Harris, 660; 966 S.W.2d at Harris v. ible jury charge error, majority conclu- 798, 801 (Tex.App.-Houston [14th sorily holds that an charge incorrect re- denied). An Dist.] writ instruction is quiring reversal was submitted. Because if it improper only misstates the law as I challenged believe the jury instruction Harris, applied to the facts. 765 S.W.2d was not erroneous applicable under the at 801. that, standard of review and even if it had If the reviewing court determines that erroneous, been the error would not have gave improper definition, the trial court caused the rendition of an improper judg- proceed inquire ment because the must then evidence of trade whether dress infringement Allen, legally factually the error suf- was harmless. ficient support I judgment, 660; Dannenbaum, would S.W.2d аt M.N. Inc. v. affirm. (Tex. Brummerhop, 840 S.W.2d App.-Houston 1992, writ de [14th Dist.] “Rule 277 of the Texas Rules of Civil Tex.R.App. 44.1(a)(1). nied); P. see also Procedure requires a trial court to submit The omission of an instruction is reversible ‘such instructions and definitions as shall *9 if only probably error it caused the rendi be proper jury to enable the to render a ” Nicolau, tion an improper judgment. Shupe, verdict.’ State of Lloyds Farm (Tex.1997) 951 S.W.2d (quoting S.W.3d at 579. Challenged Jury providers
The vice the exclusion all other Instruction of the as service causes of Jury Question asked, No. 1 “Does YEL- added.) origin.” (Emphasis The trial the predominant LOW CAB’s use of it your objection that “notes stated dress in constitute valid trade terminology to the lack of inclusion of the City of Houston?” overrules regarding color. Court said ob- The appellants instruction which ob- jection.” ject stated: “Secondary meaning”: You Definition Propriety of the Instruction purposes are instructed that for of this Act the Lanham Under question, “secondary meaning” means To whether the instruction on determine acquired that the сolor at issue has jury submitted meaning beyond primary meaning, proper, we must determine whether use, having become associated thus accurately the law and assisted stated promotion public or in the advertising, making finding supported by in mind with the business YELLOW of pleadings the evidence. See CAB. Mandlbauer, at 912. make 34 S.W.3d To You may following consider the fac- determination, necessary to deter- this it is tors you when determine whether YEL- of proof mine constitutes trade dress what predominant LOW use of col- CAB’s Act. under the Lanham infringement acquired or a secondary has meaning: relevant provides Lanham Act (1) length and manner of use of the part: dress;
trade (1) who, or in connection Any person on (2) sales; of volume services, any or any goods or with advertising amount and manner commerce goods, for uses in container name, of the word, term, symbol, nature use or de- any thereof, dress vice, or any or combination designation origin, false any false SAFE intent in copying CAB[’s] fact, misleading description or trade dress. or representation misleading false or necessarily these No one of factors is fact, which— conclusive, but the consideration each weighed light should (A) confusion, be total or to likely is cause presented evidence at trial. You are mistake, as to or to deceive cause instructed that YELLOW CAB need not connection, affiliation, or associ- produce a major- all even person of such with another ation ity of factors. You’re are further these ... person no disposi- instructed that one is factor
tive. added.) (Emphasis by any civil action shall be liable that he or she is or person believes who informed the trial court at the by such act. likely damaged to be charge a proper conference it believed instruct the statement the law required “secondary meaning the court to [*] * * (3) In a action for trade dress civil requires consuming ... minds of under this Act infringement public color has become uniquely registered on provider linked one trade dress not the ser-
737 Pesos, 769, at 505 at 112 S.Ct. principal register, person who Two U.S. protection asserts trade has dress proving the burden of that the mat- Second, protec- to in order to be entitled sought ter to be protected is trademark, dress, tion, including trade functional. Pesos, Two 505 U.S. must be distinctive. 1125(a) (2000) § (emphasis 15 add U.S.C. 768, are at 112 at 2757. Trademarks S.Ct.
ed). The Act establishes a cause of action
(1)
(2)
generally
generic;
classified as
de-
for trade
infringement.
dress
15 U.S.C.
(4)
suggestive;
arbitrary;
scriptive;
1125(a)(3)(2000
2006)
§
&
I
Supp.
(specifi
Id. Generic trademarks are
fanciful.
cally
to
referring
“civil
for trade
action[s]
to
that
protection;
not entitled
trademarks
infringement
chapter
dress
under this
for
suggestive, arbitrary,
are
or fanciful are
registered
principal
trade dress not
on the
intrinsically
Descrip-
distinctive. See id.
Stores,
register”);
Inc. v.
Wal-Mart
Sa
distinctive,
inherently
tive marks are not
Bros., Inc.,
205, 209,
mara
529 U.S.
120
they may acquire
but
the distinctiveness
1339, 1343,
(2000);
S.Ct.
matter
is
undisputed);
which
the
but their effective
acquired
a
secondary
Id.;
has
also
ness.
see
Bank
Texas v. Com
of
cabs, i.e.,
pri-
(5th
for Houston
it has become
Sw.,
merce
741 F.2d
788
marily
pub-
associated
the minds of the
Cir.1984). Accordingly, the most direct
signifying
lic as
“Yellow Cab”
brand
persuasive way
establishing
and
of
second
(3)
a cab
yellow;
rather than
that is
ary meaning
survey
is through
evidence.
by
there is a likelihood of confusion
con-
Prods.,
253-54;
123
Za
Sunbeam
F.3d at
sumers between
Yellow Cab.
tarains,
at
698 F.2d
795.
a
secondary meaning,
“To establish
Here, the instruction
submitted
that,
manufacturer must
in the minds
show
“
‘secondary meaning’
stated that
public,
primary significance
of the
of a
that the color
acquired
means
at issue has
identify
feature or term is to
product
meaning beyond
meaning,
a
the primary
the product
source of
rather
than the
use,
by
pro-
become
by having
associated
Pesos,
Two
at
product
itself.”
505 U.S.
advertising,
mind
public
motion or
in the
4;
n.
at
S.Ct.
2756 n.
see also
with the business
YELLOW CAB.”
of
Bros.,
Samara
at
120 S.Ct.
U.S.
added.)
Pesos, 505
(Emphasis
Two
Cf.
no
at 1343. While
color can
be inher-
ever
4, 112
n. 4
at 766 n.
at 2756
U.S.
S.Ct.
distinctive,
ently
may
protected
a
be
color
secondary
(holding that “[t]o establish
upon showing
as a trademark
a
of second-
that,
meaning, a manufacturer must show
Bros.,
at
ary meaning. Samara
529 U.S.
of
public,
primary
in the minds
211-12,
the trade dress.
juiy
impression
left the
the incorrect
*12
No
of
necessarily
one
these factors is
they
proof
that all
had to
consider was
conclusive, but the consideration of each
“uniquely
linked”
was
with
weighed
light
should be
of the total Yellow
“to the exclusion of all other
presented
evidence
at trial. You are
providers,” which is not the standard of
instructed that
CAB need not
YELLOW
of a Lanham Act claim.
proof
produce evidence on all or
a major-
even
secondary meaning
The instruction on
ity of these factors. You’re are further
jury aсcurately
the
submitted
stated
instructed that
disposi-
no one factor is
law,
jury,
comported
assisted the
and
with
tive.
pleadings
the
proof
and
of a Lanham Act
The instruction thus includes an accurate
was, therefore,
claim.
It
well within the
summary of the factors the federal courts
judge’s broad discretion to submit. See
have held are to be
considered
deter-
Mandlbauer,
912;
at
S.W.3d
Plains
mining
a product
acquired
whether
has
a
Co.,
Trading
791;
man
898 S.W.2d at
Al
secondary meaning
pur-
for Lanham Act
len,
contrast,
By
By the instruction Safe Cab a cursory analysis harm and orders a new sought would have incorrectly informed instruction, improper trial under an there the that “for color acquire second- by inviting jury, confusion in the error ary meaning requires in the minds of the court, the trial and the litigation waste of consuming public the color has become resources. uniquely provider linked with one the service to the exclusion all other Analysis: Sufficiency Harm providers of the (Emphasis service.” add- Support the Evidence to ed.) implies higher This proof burden of Judgment any legal than authority interpreting аppellate When an finds error requires. addition, Lanham Act instruction, of a jury submission proffered by itself—would instruction — Allen, analysis harm mandatory. entirely have failed jurors to advise the 660; Dannenbaum, at S.W.2d M.N. they either that specific were consider Thus, at if I agree were to factors in determining whether majority’s in- with conclusion that the acquired secondary meaning struction submitted on they or that weigh all factors in were erroneous, I light of the total than would determine whether evidence rather con- sidering any dispositive. one of them by asking the error was harmful whether Therefore, public. im- the minds of the I probably caused the rendition of an of error proper Shupe, points address these judgment. See 192 S.W.3d would judgment im- I determine 579. Because would find that whether legally factually proper. both evidence was judgment support
sufficient to under Legal Standard Review of Factu- factors, agree I proper do Sufficiency the Evidence al majority’s implied conclusion that its sub- legal an attacks the appellant suf When mission caused the probably rendition of finding ficiency an adverse issue and, therefore, judgment an improper re- *13 the on it not have burden of which did required. versal and remand See id. no it that proof, must demonstrate evi at 579. I affirm the be- judgment would supports finding. Croucher v. dence the low.1 (Tex.1983). Croucher, 55, 58 660 S.W.2d Evidentiary Issues in deciding sup In the evidence whether to “no infringement port finding
To un- amounts evi prove trade dress dence,” considers Act, reviewing only der the court the Lanham Yellow Cab had to (1) tending to prove yellow the color non- the and inferences that is evidence (2) in disputed; finding, the viewed the functional, support jury’s is not that which finding, the and yellow acquired light a most favorable and infer disregards contrary in all evidence marketplace; the Houston and (3) Pharm., Inc. v. Hav Dow that there was a likelihood of confusion ences. Merrell (Tex.1997); ner, in Hav public the mind of the between 711 S.W.2d Stores, Pesos, E-Z See Two ner v. S.W.2d Yellow Cab. 505 U.S. Mart 768-69, (Tex.1992); City at at Keller v. 112 S.Ct. 2757-58. its see of (Tex.2005) Wilson, 802, 822 fourth, fifth, error, of points and sixth Safe S.W.3d rеviewing court (holding the that argues legally that evidence was whether record, of it factually only part insufficient to the starts or support with all light in the most jury’s finding “secondary of mean- “must consider evidence implicit verdict, indulge every ing” factually the and that the evidence was favorable finding support the reasonable inference that would support jury’s insufficient to only it,” “if one that but allows use of evidence inference, reviewing nor the jurors neither its taxis caused a likelihood (1) for appellant’s legal peal I if a motion instructed have addressed "raised would verdict, arguments (2) sufficiency judgment and factual first and notwith for a motion judgment addressing ap than verdict, (3) rendered rather objection standing an to the pellant’s jury instruction issue and re first jury, a to the submission of the issue manding majority trial. The con for a new jury's answer to a disregard motion cannot do this "Safe cludes that it because issue, for new tri fact a motion vital or verdict, Cab did not move for a directed file a al."). appropri judgment is Rendition of judgment notwithstanding for the ver motion burden of remedy party with the ate if the dict, preserve its or otherwise no-evidence evidence, legally or proof allegedly no offers complaint except in motion tri for new evidence, support a claim. insufficient Therefore, al.... because Safe Cab asked Garza, Tel. Co. Southwestern Bell trial, only only new we can remand for a for a (Tex.2004); Horrocks v. S.W.3d 626 n. 58 Therefore, new it trial.” addressed Dept. Transp., 852 S.W.2d Texas However, majority charge first. does not (Tex.1993) curiam) ("Ordinarily, ap (per dispute preserve Safe Cab did its no- judgment after pellate render court should Smith, point of error. See Cecil v. evidence legal sustaining complaint suffi a as (Tex. 1991) ("A ‘no S.W.2d 510-11 evidence.”). ciency of the preserved ap point of error is evidence' it”). Thus, as- that it had worked may disregard produced no- evidence “[a] (a) point will be sustained when evidence trade dress with siduously to associate its complete there is a absence of evidеnce and su- training personnel of its superior (b) fact, a the court barred rules vital perior service. giving weight of law or of evidence from advertising and extent Nature prove offered to a vital evidence the mark promotion (c) fact, prove the evidence offered to produced also evidence (d) scintilla,
vital fact is no more than a
rolling
its taxicabs as
advertise-
used
conclusively
establishes the
engaged
and that it
ments for Yellow Cab
Keller,
opposite
City
vital fact.”
me-
marketing
efforts
extensive
(quoting
In reviewing sufficiency the factual support jury finding, predomi- the evidence to painted the mer with Yellow Cab’s court conducts a neutral review all the nantly yellow parades pro- color in evidence and sets aside the verdict “if motions. contrary it is so overwhelming (3) Volume sales weight of the clearly evidence as to be produced that Yellow Cab also evidence Bain, wrong unjust.” Cain in operations it from 67 cabs grown had (Tex.1986); see also Mi to 894 at the time of trial and cabs S.A., Sogevalor, nucci v. 14 S.W.3d yellow operated that to 800 of its taxis (Tex.App.-Houston no [1st Dist.] streets, identi- daily on Houston each with pet.). year In yellow coloring. cal
Legal Sufficiency of Evidence of Second- trial, prior to Yellow taxis amounted Cab ary Meaning in Hous- to 40% of the entire taxicab fleet Here, I hold that evidence 1.6 million Cab year, ton. That Yellow taken as a whole and considered under dispatched in Houston. Yellow trips were Zatarains fаctors in light most favor- agencies had contracted with three Cab legally able to the verdict is sufficient to 650,- serving dispatched the disabled and support jury’s implicit finding that Yel- preced- them in the 12 months 000 calls to low established a Cab addition, had ing trial. Yellow Cab Zatarains, yellow. for the color See contracts solicited and obtained F.2d at 795. accounts, result- companies to use voucher (1)Length and manner use 645,000 ing in calls. Each of Yellow Cab’s mark 60,000 65,000 year miles a logs taxis produced that Yellow Cab evidence servicing the Houston area. operated only predominantly yellow (If) actual Instances of taxicabs the Houston area since the survey no direct evi- While there was 1940’s, yellow the senior col- was user yellow the effect of Houston, dence of Yellow promoted ored taxis consumers, there indi- It trade dress on was yellow as its trade dress. also (5th Cir.1979). points It to evidence rect of consumer confusion. evidence responsibility City of Houston official with any did not conduct con- that Yellow Cab Daniels, operations, for taxi Blanton testi- any perform interviews or consum- sumer that cabs fied customers associated surveys er to determine the effectiveness. that, if that same cab with Yellow Cab and that any Nor was there direct evidence him color scheme were to come before Yellow consumers were confused between ap- again approval it would not be Moreover, it points and Safe out Cab. for confu- proved potential because of the many companies other cab public. sion in the Because of the likeli- yellow. Houston area had used the color consuming public of confusion to the hood produce that it did responds length putting “gone he had actual customer confu- some evidence of yellow.” moratorium on the color Daniels Daniels, person charge through sion testified, person walking “I think a further operations City of taxi for the of Houston. It get might out to a cab be fooled. could responds It that there also that, Finally, step- happen.” he testified yellow cabs predominantly that the use of role, “I can see ping out of his own where phe- a recent by operators other taxi at a car and if person would look nomenon, City of Houston did not cab, automatically they going it’s a were the use of color its licensees monitor assume it’s Yellow Cab.” issued, and that the after the license was Although none of the factors cited above placed a moratorium City of Houston had to establish the neces- is sufficient itself opera- licenses for the issuing further sary link in the of consumers be- minds *15 yellow tion of cabs. source, viewing product a and its tween foregoing light most the evidence so say I that the evidence was cannot Cab, I hold that to Yellow would favorable finding on sec- jury’s implied or the weak secondary meaning, taken the of evidence its to ondary meaning support of answer whole, support to legally as a is sufficient Jury Question against No. 1 so was rеspect to jury’s implied finding preponderance and great weight 1 es- Jury Question No. that Yellow Cab manifestly wrong to and evidence as be secondary meaning a for the use tablished Cain, at I 176. unjust. See 709 S.W.2d its trade dress. of the color as hold, therefore, the evidence Sufficiency of Evidence of Factual factually support to was sufficient Secondary Meaning Ques- to jury’s implied finding response contends, however, that, had established Safe Cab also tion No. 1 that Cab Yellow neutrally, the evidence was factual- viewed use of the secondary meaning for the support jury’s finding ly insufficient yellow. color secondary that Yellow Cab established and fourth I Safe Cab’s would overrule predominantly yellow points fifth of error. ie., dress, contrary “it is so of Like- Sufficiency Evidence of Factual overwhelming weight of the evidence as lihood of Confusion Cain, clearly wrong unjust.” and be at 176. 3, No. response Question use of responded that Safe Cab’s that the absence of reminds us Safe Cab of a likelihood yеllow on its taxi caused survey signifi- consumer is objective issue, con- Cab confusion. In its sixth Safe high stan- satisfying cant hindrance to factually insuf- that the evidence was tends meaning. proof of of See dard finding. 111, jury’s support ficient to Opticks, 596 F.2d Vision Ctr. v. (1), (6) Similarity products the two question Likelihood of confusion is design fact is for clear and reviewed error. Prods., Sunbeam F.3d at 257. The Cab, operated Cab tax- Like Yellow likelihood of is confusion determined with is that in the Houston serve customers respect product’s typical buyer. city airports area in transit and between Kentucky Corp. Fried Chicken Diversi presented hotels. Yellow Cab Packaging Corp., F.2d 389 n.
fied painted that Safe its taxi with a (5th Hardware, Cir.1977); also Pro see nearly identical Yellow Cab’s. In- Am., Inc., Inc. v. Home Ctrs. deed, distinguished cabs could be two (S.D.Tex.1984). F.Supp. only they side-by-side if were broad likelihood of determined Moreover, daylight. the front views were application “digits of confusion” similar, very and both Yellow Cab’s and Prods., test. Sunbeam at F.3d rolling Safe Cab’s taxis were advertise- “(1) weighеd The factors include similarity ments, taxi although Safe Cab’s had its (2) products; identity the two of retail printed own name and number telephone (3) outlets purchasers; identity of ad on the side. (4) media;
vertising strength of the trade (2) Identity pur- retail outlets and (5) dress; mark or trade intent of the chasers defendant; similarity design; taxi, Because it one confusion; actual degree of care only airports serviced and hotels. All employed by consumers.” Id'2 “Proof of required by Houston City cabs are ordi- actual prerequisite, confusion is anot fare, charge and, nance to same no single dispositive factor is of the likeli airports hotels, patrons most take the Id.; hood of confusion.” see also Taco evidence, next cab in line. There was Pesos, Cabana Two Inc. v. Inc. 932 Int'l however, while these services were (5th Cir.1991), F.2d 1118-19 aff'd, same, much larger, used a 505 U.S. 112 S.Ct. 120 L.Ed.2d dispatcher, and able to offer more (1992). However, a showing of actual *16 sendees. highly confusion is persuasive as to the (3) Identity advertising media of likelihood of confusion. Sun Banks of Fla., Inc. v. Sun Fed. Savs. & Loan Both Yellow Cab’s and Safe Cab’s taxis Ass’n, (5th Cir.1981); However, 651 F.2d rolling were in advertisements. Hardware, addition, Pro F.Supp. promoted yellow at 152. Yellow Cab in challenged degree 2.The by typical instruction was not 8. The care of exercised service'; Safe Cab. The instructed to product consider purchasers 10 factors: relationship Any previous 9. between the similarity parties' The between the parties; and services; products or notoriety of 10. The YELLOW CAB’S strength 2. The the YELLOW of CAB’S trade dress. dress; trade necessarily No one of these factors con- parties’ similarity 3. The between the clusive, but the consideration of each dress; trade weighed light in should be of the total evi- advertising identity 4. The of media produced dence trial. You are at instructed used; produce need that YELLOW CAB evi- intent; 5. SAFE CAB’S majority dence all of these or even identity 6. The of customers and retail out- instructed factors. You are further that no lets; dispositive. one factor is confusion; 7. Evidence of actual However, indi- marketing, Yellow Cab. there was purchased large advertise- with Pages, in the in ments Yellow was active yellow- evidence of confusion rect between charities, vintage promotional used a tes- cabs and Yellow Cabs. Daniels colored car and Hummer. There is no evidence had tified customers associated any advertising that Safe Cab did other yellow of a cab concept with Yellow Cab using its a rolling than taxi as advertise- that, if the cab color scheme to were However, ment. Safe Cab also used a again for it approval come before him receipt form to Yellow almost identical po- approved not be because of the would Cab’s. public. for He also tential testified, person walking “I out to think a Strength dress of ft) might hap- cab be fooled. It could get a Daniels, person charged Blanton of confu- pen.” Because of likelihood regulation taxi for the of Hous- City with public consuming put sion to the he had ton, greater tеstified had that Yellow Cab yellow. Finally, moratorium on the color recognition any cab name than other busi- he testified that he would not confuse Moreover, in ness Houston. Yellow Cab “I long experience, because of his but two established that it the senior user of look at a person can see where a Houston, in yellow the color for cabs cab, they car if it’s a were yellow 1940’s, it had area serviced since the it’s Yellow automatically going to assume 1,200,000 provided year over rides customers, yel- promoted that it Cab.” variety advertising low substantial in a sum, produced evidence media, and that it was the dominant respect of likelihood of confusion provider of taxi services the Houston excep- factors with the each of relevant Nevertheless, approximately area. 20 cab confusion, of direct actual tion companies other than Cab were Yellow col- virtually identical including evidence of yellow-colored in Houston operating taxis area, or, and services design, geographic year began working Daniels services, as the extent Safe Cab offered However, agency. the City placed of confusion as indirect evidence well per- moratorium on the issuance of new Cab. other cabs with Yellow yellow-colored year prior mits to taxicabs a larger had a much fact that Yellow Cab trial, and testified he Daniels that would services, addi- fleet, or used provided more any permits not issue more cabs its ser- types of media to advertise tional because likelihood confusion. impact does not lessen vices (5) Intent defendant color, design, of adver- nearly identical use intent tising,
There was no evidence direct offered services *17 part infringe on the Yellow or offered advertised the extent Safe Cab However, Countervailing dress. both owners evi- at all. taxi services of Safe Cab worked at Yel- previously number dence, however, showed Cab, virtually low chose a identical been operating cabs had other cab, rolling for their the cab аs a used of time before period Houston for a advertisement, identical nearly and used on the issuance placed moratorium was receipt forms. using yellow licenses for taxi services new cabs.
(7), degree Actual employed by care consumers finding of jury’s I hold that Jury Ques- response actual confusion any There was no direct evidence against the over- No. 3 was not so actually consumer had confused Safe Cab tion whelming weight of the as to be Moreover,
manifestly wrong unjust. supported
even had the evidence not confusion,
jury’s finding of actual proof of prerequisite
actual confusion is not a for a
finding confusion; likelihood nor is
any single factor dispositive of the likeli- Prods.,
hood of confusion. Sunbeam
F.3d at 257.
I would overrule Safe Cab’s sixth
of error.3
CONCLUSION reasons, foregoing
For the I would af- judgment
firm the of the trial court. HAMM
W. DOW III CORPORATION III,
& W. Dow Hamm
Appellants, FUND,
MILLENNIUM INCOME Brinsden,
L.L.C. & Jonathan
Appellees.
In re Corporation W. Dow Hamm III III,
& W. Dow Hamm Relators. 01-06-00499-CV,
Nos. 01-06-00470-CV. Texas, of Appeals
Court (1st Dist.).
Houston
July
*18
error,
claim,
argues
namely
competition
irreparable
its second
harm.
entering judgment
that the trial
erred in
Because I would hold that Yellow Cab estab-
infringement
for Yellow Cab because the
did not find
under
lished trade dress
Act,
an element of its Texas common-law unfair
Lanham
I would not reach this issue.
obtained
notes
then
“Court
The trial court
Therefore,
objection
a
in
defective
to the lack of inclusion
your objection
error,
preserve
struction is sufficient to
Court
regarding
the
color.
terminology
substantially
request using
and a
correct
trial
objection.” The
overrules said
language
required. Spencer
is
v. Ea
complaint
clearly
Safe Cab’s
understood
Am.,
gle
154,
Star Ins. Co.
876 S.W.2d
Therefore,
conclude
on it.
we
ruled
(Tex.1994).
157
complaint.
that
preserved
argues,
support
in
case,
proposed
Yellow
jury
this
the
“
case, that the definition
jury charge in this
‘secondary meaning’
charge stated that
faithful
more
provided by
the
has
the trial court is
acquired
means that
color at issue
complaint ex-
preserve
Generally,
reviewing
a
wise
its no-evidence
court must consider
points
considering
rendition
remand
Horrocks
cept
before
in
for new trial. See
its motion
43.3;
498,
Republic
Pruitt v.
points.
P.
Tex.R.App.
Transp.,
Dep’t
Tex.
852 S.W.2d
v.
Co.,
109,
Ins.
491 S.W.2d
Bankers
(Tex.1993)
can
(holding
appeals court
that
Life
1973). Therefore,
(Tex.
usually
con-
we
only
only
that is
remand for new trial when
sufficiency point
legal
of er-
sider Safe
Therefore,
below).
by parties
relief asked for
However,
ror
Cab did not move
first.
trial,
only
a new
asked
for
because Safе Cab
verdict,
judg-
directed
file a motion
for a
only
for a
trial.
remand
new
we can
verdict,
notwithstanding
ment
the
or other-
(5th ed.2001).
§
The
Supreme
opinion
to the
Court
in Two Pe
159.63
Instructions
sos,
Cabana, Inc.,
Inc. v. Taco
505 U.S.
states that trade dress
same treatise also
763,
4,
2753,
4,
766 n.
2756 n.
S.Ct.
secondary meaning “when
has
acquires
(1992),
L.Ed.2d 615
and “accepted
way
primary
in
a
that its
been used
such
than
practice”
pro
submission
Safe Cab’s
significance
prospective
in the minds of the
posed language.
itself,
purchasers is not the
but
[dress]
single
identification
with
[dress]
Pesos,
In Two
the Supreme Court noted
Clearly,
source.” Id.
the latter definition
secondary
generally
“is used
relying
Supreme
precedent.
Court
to indicate that a mark or dress ‘has come
Pesos,
through
Two
at 766 n.
uniquely
use to be
associated
U.S.
S.Ct.
with
Stores,
specific
4;
source.’”
(citing
n.
at 2756
see also Wal-Mart
Restate-
Id.
Competition
Bros.,
§
(Third)
Inc.,
13 Inc. v.
Samara
U.S.
ment
Unfair
(1990)).6
Court,
cmt. e
The
relying its
1339, 1343,
own 210,
120 S.Ct.
146 L.Ed.2d
stated,
precedent, then
“To establish sec-
(2000) (defining secondary meaning as oc
ondary meаning, a manufacturer must
“when,
curring
public,
in the minds of the
that, in
public,
show
the minds of the
primary significance
of a
is to
[mark]
primary significance
product
of a
feature
rather
identify
product
the source of the
identify
or term is to
the source
itself.”).
product
than the
product
rather
than the product
itself.”
given
The instruction
Labs.,
(citing
Labs.,
Id.
Inwood
Inc.
Ives
in
track
the in
this case did not
either
844, 851,
456 U.S.
n.
102 S.Ct.
in
charge
struction
the federal model
or
(1982))
2187 n.