First Circuit: District court's determination that "duck tour" is nongeneric doesn't hold water

In a lengthy decision last week, the First Circuit held a district court erred in finding the term "duck tour" nongeneric in the context of sightseeing tours on amphibious vehicles.  The district court, based largely on the nongenericness of this aspect of the parties' marks, found the plaintiff was likely to succeed in its infringement claims, and entered a preliminary injunction.  The defendant appealed.

The First Circuit vacated the injunction.  The district court's erroneous holding regarding the generic nature of "duck tour" caused the district court to give too much weight to those terms in the composite marks in its likelihood of confusion analysis.  As a result, the district court also erred in finding both a likelihood of confusion and a likelihood of success on the merits for both the word marks and design marks at issue.  Therefore, the court vacated the district court's preliminary injunction.

More concerning Boston Duck Tours, LP v. Super Duck Tours, LLC after the jump.



Boston Duck and Super Duck are in the business of offering sightseeing tours via land and water in the Boston area using amphibious vehicles commonly referred to as "ducks."   Boston Duck started offering its services in 1994, and offers sightseeing tours of the Boston area and Charles River, using renovated DUKWs (pronounced "ducks") from World War II.  Boston Duck owns a federal trademark registration for the composite word mark BOSTON DUCK TOURS and a composite design mark consisting of the name in combination with a logo of a cartoon duck.  The logo is depicted below:

Boston Duck logo

Both of the marks are subject to disclaimers for the terms "duck" and "tours."  Boston Duck also has registrations for BOSTON DUCK TOURS and its logo for various goods.

Super Duck began using custom-made amphibious vehicles (Hydra-Terras) in 2001 to provide sightseeing tours by land and water in Portland, Maine. Because the Hydra-Terras are larger and more modern than DUKWs, the company decided to use the name SUPER DUCK TOURS, and adopted generally a "super" theme.  Super Duck began operating its business in Boston in May 2007.  Super Duck owns one federal registration for the word mark SUPER DUCK TOURS on the Supplemental Register, with "duck tours" disclaimed.  Super Duck also uses a logo with a cartoon duck, depicted below:

Super Duck logo

On July 2, 2007, Boston Duck filed a complaint against Super Duck, alleging federal trademark infringement, unfair competition, "and a flock of other state and federal claims" (always good to see a court with a sense of humor).  Boston Duck also sought a temporary restraining order and preliminary injunction to prevent Super Duck from using its trademark or logo.  In granting the preliminary injunction, the district court held the term "duck tours" was nongeneric for amphibious sightseeing tours.  The district court then used the First Circuit's likelihood of confusion analysis, the eight "Pignons factors," and held Boston Duck had established a likelihood of success on the merits of its trademark claims.  The district court enjoined Super Duck from using "duck tours" or a cartoon duck in its trademark, and from using the term "duck" in a two-word or three-word trademark in conjunction with either "Boston" or "tours."  Super Duck appealed.

The First Circuit vacated the injunction and remanded.  A key aspect of the likelihood of confusion analysis is the similarity of the marks, which was directly affected by the conclusion that "duck tours" was nongeneric.  As this was a key aspect of the district court's conclusion, this was the key issue on appeal.

A phrase is generic if its "primary significance . . . to the relevant public is as an identifier of the nature of a good, rather than its source."  One convenient analytical framework mentioned by the court is that a trademark answers the question "where do you come from?" whereas a generic term answers the question "what are you?"  When answering these questions, there are several factors courts consider:

  1. Consumer surveys
  2. Use of the term by the media
  3. Use of the term by others in the industry
  4. Purchaser testimony regarding use of the term
  5. Plaintiff's use of the term
Here, there was evidence relevant to factors 2, 3, and 5.  Specifically, news articles described the types of tours offered by Boston Duck as "duck tours."  Also, there was widespread use of the phrase by other companies offering such tours:  32 of the 36 companies use "duck" in their name, and more than 10 use "duck" and "tours" in their trade name.  Many of the companies use the phrase to characterize the nature of their services as "duck tours."  Finally, Boston Duck itself referred to its services as "duck tours."  Interestingly, much of the evidence of Boston Duck's use of the phrase was supplied by Boston Duck itself in seeking to show its mark was famous.  These three sources of evidence, combined with the lack of an acceptable alternative generic term, led the court to conclude the district court clearly erred in finding the phrase "duck tours" nongeneric.

This conclusion was not affected by the fact that Super Duck had argued to the USPTO in the course of prosecution of its trademark application that the phrase was nongeneric.  This was simply another piece of evidence to weigh.  The court also dismissed Boston Duck's evidence of actual confusion, attributing it to the fact that Boston Duck has operated without competition for over 10 years, as trademark law is not intended to prevent confusion over the use of generic terms.  Because the court found "duck tours" to be generic, that aspect of the word and design marks were given less weight in the likelihood of confusion analysis.

Turning to the issue of likelihood of confusion, the court held Boston Duck was not likely to prevail on the issue.  The court evaluated the eight Pignons factors in turn.

1.    Strength of the mark

Even with the finding that "duck tours" was generic, the court held the composite mark BOSTON DUCK TOURS to be "reasonably strong overall."  There was strong evidence of secondary meaning, so even though the mark was simply a combination of a descriptive term with a generic phrase, this factor favored Boston Duck.

2.    Similarity of the Marks

The court noted that because "duck tours" is generic, that portion of the mark is given less weight.  That left "Boston" and "Super," the remaining pieces, which were different in look and sound, leading the court to determine the marks were dissimilar.

3-6.    Similarity of the Goods, Relationship Between the Parties' Channels of Trade, Relationship Between the Parties' Advertising, and Classes of Prospective Purchasers

For these four factors, the court held they were similar for both parties, and therefore weighed in favor of a finding of likelihood of confusion.

7.    Evidence of Actual Confusion

While there was evidence of actual confusion by prospective customers, as noted previously, the court held this was likely due to the fact that Boston Duck was the only company offering duck tours in the Boston area for over 10 years, and a new competitor would almost guarantee confusion if using the generic "duck tours" phrase.  As a result, this factor was given little weight.

8.    Defendant's Intent in Adopting its Mark

The court held the district court erred in concluding it was likely that Super Duck intentionally adopted its mark to piggy-back off Boston Duck's success. Super Duck had been using the mark in Portland, Maine for many years before moving to the Boston area, and as a result, bad intent could not be inferred.

Considering all the factors in the Pignons analysis, the court concluded that the district court's finding that Boston Duck was likely to succeed on the merits in the context of its word mark was clearly erroneous.

Turning to the design marks, the court noted that the analysis was the same regarding five of the eight factors, specifically those that focus on the parties rather than the marks themselves.  The court then examined whether the image of a duck splashing in water was generic for duck tours.  Here, the court could not conclude the district court's holding that the image was nongeneric was clearly erroneous, but found the image to be "highly descriptive."  The image, combined with the text and evidence of secondary meaning, led the court to hold the design mark to be "reasonably strong, despite the fact that it contains elements that have an inherently weak capacity as source-identifiers."

Regarding the similarity of the marks, the court the individual aspects of the two logos to determine that the marks were generally dissimilar.  Although they both had a cartoon duck and water, the colors, type of lettering, and content of the marks was considered substantially dissimilar. After weighing the factors, the court determined that the district court's determination that there was a likelihood of confusion was clearly erroneous. Boston Duck would not be able to prove likely success on the merits.

Based on its analysis, the court vacated the preliminary injunction and remanded to the district court for further proceedings.

Judge DiClerico filed a lengthy opinion concurring in the judgment.  He used a slightly different analysis, but ultimately came up with the same findings. Judge DiClerico argued "duck tours" should not have been separated from the rest of the trademark for determination of genericism due to the anti-dissection rule.  He analyzed the Pignons factors without directly giving less weight to "duck tours," but still decided that the factors supported an absence of likely confusion, and agreed with the ultimate result.

To read the full decision in Boston Duck Tours, LP v. Super Duck Tours, LLC, click here.

As an interesting side note, apparently in response to the district court's preliminary injunction, Super Duck changed its mark and its logo.  It now uses the mark Super Duck Excursions, and the logo no longer contains a cartoon duck (as seen on its website).  Super Duck's website also contains a disclaimer noting the fact that "[Super Duck is] Not to be Confused with Boston Duck Tours."

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