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First Circuit Reverses Injunction in Boston Duck’s Case, Finds that “Duck Tours” Is Generic and Descriptive
Boston Duck Tours, LP v. Super Duck Tours, LLC
Nos. 07-2078, 07-2246, United States Court of Appeals for the First Circuit, 06/18/2008
Companies Mentioned: Boston Duck Tours, L.P., Super Duck Tours, LLP
Holding
The U.S. Court of Appeals for the First Circuit reversed a district court’s grant of preliminary injunction in this case involving the disputed term “duck tours.” Plaintiff-appellee’s Boston Duck logo consisted of a duck splashing in water, while defendant-appellant Super Duck’s logo was a cartoon parody of "Superman." Both parties operated sightseeing businesses using amphibious vehicles referred to as "ducks.” According to the First Circuit, the district court failed to consider evidence, such as articles in the media and widespread generic use of "duck" and "duck tours" by other companies providing similar services, demonstrating that the phrase "duck tour" was generic for the type of tours offered by both parties. In this regard, the First Circuit held that Boston Duck failed to establish likelihood of confusion. Accordingly, this finding meant that Boston Duck would not likely succeed on the merits of its trademark infringement claim.
Detailed Summary
In this trademark infringement dispute, defendant-appellant Super Duck Tours ("Super Duck") appealed a preliminary injunction granted in favor of plaintiff-appellee Boston Duck Tours ("Boston Duck"). Opinion, p. 2. Asserting that the phrase “duck tour” and the image of a duck splashing in water were generic, and therefore that there was no likelihood of confusion between Boston Duck’s marks and Super Duck’s marks, appellant requested that the U.S. Court of Appeals for the First Circuit dissolve the injunction requiring the alteration of its trade name and logo. On the other hand, appellee also cross-appealed the order of the U.S. District Court for the District of Massachusetts, arguing that the district court committed clear error by not enjoining Super Duck from using the term “duck” in its trade name. Id.
Both Boston Duck and Super Duck were in the business of offering sightseeing tours via land and water in Boston, using amphibious vehicles commonly referred to as “ducks.” Since 1994, Boston Duck has offered sightseeing tours of the Boston area and Charles River, largely with genuine renovated DUKWs (amphibious army vehicles used in World War II). Andy Wilson, the founder of Boston Duck, started the company after a visit to Memphis, Tennessee in 1992, where he experienced his first tour.
Begun in 2001, Super Duck was also in the business of providing sightseeing tours by land and water. Rather than using renovated DUKWs, Super Duck used custom-made amphibious vehicles called Hydra-Terras containing several features that make the vessels virtually unsinkable. On the other hand, Super Duck opened its business in Portland, Maine in 2001 and operated exclusively there until 2003, when the company ceased its operations in Maine and, seeking a larger New England market, started planning operations in Boston.
In granting Boston Duck’s motion for preliminary injunction, the district court found the term “duck tours” to be nongeneric for amphibious sightseeing tours in the Boston area, and therefore capable of trademark protection. The district court used the eight-part likelihood of confusion test established in Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482, 487 (1st Cir. 1981)(the eight factors consisted of “the similarity of the marks; the similarity of the goods; the relationship between the parties’ channels of trade; the relationship between the parties’ advertising; the classes of prospective purchasers; evidence of actual confusion; the defendant’s intent in adopting its mark; and the strength of the, plaintiff’s mark.” 657 F.2d at 487).
The district court thus concluded that Boston Duck had established a likelihood of success on the merits of its trademark infringement claim. Accordingly, the district court enjoined Super Duck from “using the term ‘duck tours’ or a cartoon duck as a trademark . . . in association with its sightseeing tour service in the greater Boston area.”
In reversing the district court’s finding in favor of Boston Duck, the First Circuit focused on the question whether the term “duck tours” was generic. According to the First Circuit, the district court failed to consider evidence in the record suggesting that the phrase “duck tour” is generic for the amphibious, sightseeing tours offered by both parties. First, the district court overlooked articles in the media and other third party sources that use the phrase “duck tours” generically to refer to amphibious, sightseeing tours. For example, a Boston Globe article from 2002 notes that rather than walking around Portland, Maine on foot, a visitor may use “town trolleys, duck tours, and harbor cruises.” Id., pp. 28-29, citing Beth Greenberg, Tattoos and Views The Best-Known Artists Craft Their Designs in Some of the Region’s Most Interesting Cities, Boston Globe, Oct. 13, 2002, at M13.
Second, the district court overlooked the widespread generic use of “duck” and “duck tours” by other companies around the country that provide the same amphibious sight-seeing services. Based on court records, there were at least 36 companies in operation today that provide tour services in cities around the United States and the world. Of these 36 tours described in the record, 32 included the term “duck” in their company or trade name, and more than 10 use both the terms “duck” and “tour(s)” in their trade name.
Finally, the district court did not consider Boston Duck’s own generic use of the phrase “duck tour,” which provided strong evidence against its claim that the term was primarily associated with its company rather than the services it provides. Id., p. 30. Retail Servs., Inc. v. Freebies Publ’g, 364 F.3d 535, 545 (4th Cir. 2004).
Having concluded that the phrase “duck tours” was generic for the parties’ services, the First Circuit next examined the strength of plaintiff’s composite mark BOSTON DUCK TOURS. In particular, the First Circular concluded that the mark BOSTON DUCK TOURS was highly descriptive of the services Boston Duck offered. The mark combined “duck tours,” a generic phrase entitled to no trademark protection at all, with “Boston,” a weak, descriptive term that deserves minimal protection. Thus, conceptually, BOSTON DUCK TOURS as a composite mark was weak.
The First Circuit thereafter determined whether Boston Duck was likely to succeed on the merits of its trademark infringement claim. Like the district court, it also applied the Pignons factors, but arrived at a different conclusion. Specifically, the First Circuit found that although the companies are direct competitors because their products, potential customers, channels of trade, and advertising all significantly overlapped, these factors alone were insufficient to establish a successful claim of infringement. Id., pp. 45-46, citing Prof’l Golfers Ass’n of Am. v. Bankers Life & Cas. Co., 514 F.2d 665, 669 (5th Cir. 1975).
Further, Boston Duck failed to demonstrate bad faith on the part of Super Duck in adopting the mark SUPER DUCK TOURS. Its evidence of actual trademark confusion between the parties’ marks had little probative value because the confusion shown was largely based on Boston Duck’s lack of competition in its early years and each party’s use of the generic phrase “duck tours” in its mark. Where the parties are direct competitors, the most important factor in the Pignons analysis is the similarity-of-marks inquiry. Id., citing McNeil Nutritionals, LLC v. Heartland Sweeteners, LLC, 511 F.3d 350, 367 (3d Cir. 2007).
Here, the parties’ marks—with greater emphasis placed on the words “Boston” and “Super” – were substantially dissimilar, based on sight, sound, and meaning. To the extent any similarity existed between the composite marks, that similarity was a result of each party’s decision to use a generic phrase to describe its product. Accordingly, the First Circuit concluded that the Pignons factors do not establish a likelihood of confusion between the parties’ composite word marks.
This conclusion meant that Boston Duck failed to establish a likelihood of success on the merits of its trademark infringement claim.
The First Circuit reversed the district court’s grant of a preliminary injunction against Super Duck precluding the use of its word and design marks. It also remanded the matter to the district court for further proceedings consistent with its opinion.
View a PDF of the judicial opinion.Service
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