<span class="padlock_text"></span> v.22 #1 Legal Issues: Cases of Note – Trademark

by | Mar 29, 2010 | 0 comments

If It Quacks Like a DUKW …
by Bruce Strauch (The Citadel) strauchb@citadel.edu


Boston Duck Tours v. Super Duck Tours, United States Court of Appeals for the First Circuit, 531 F.3d1; 2008 U.S. App. LEXIS 12771 (2008).

The WWII amphibious vehicle DUKW (pronounced “duck”) spawned a post-war water-borne sightseeing business around the US called “duck tours.” In 1994, Boston Duck Tours began business in — you guessed it — Boston. They used renovated DUKWs painted in rainbow colors and blazoned with the company logo. They were the sole company and were well established in the city.

Then in 2001 along came a competitor. Super Duck opened for business using custommade boats called Hydra-Terras with fancy designs that make them virtually unsinkable. Their ad parodies Superman (“It’s a bus. It’s a boat. It’s a Super Duck!”), and their logo is a cartoon duck with muscular arms and a cape.

Boston Duck has a registered trademark with disclaimers for “duck” and “tours” which it cannot possess exclusively apart from the full mark.

Like “Against the Grain” which is also the name of a local surf board shop whose mail sometimes comes here to ATG World Headquarters. Not to mention the barber trade journal of that name we were getting a subscription to for a while.

Super Duck also has a registered mark and sells all kinds of apparel branded with it.

Ooo-kay. So who exactly wants to wear a golf shirt with the name of an amphibious tour on it? Are people just compelled to buy things for grandchildren back home?

At any rate, Boston Duck sued and got Super Duck enjoined from using the term “duck tours” or a cartoon duck as a trademark. Of course you’re already saying “huh?”, so let’s go to the appeal.

Trademarks are not explicitly authorized by the Constitution like copyright and patent, but they provide such benefit in interstate commerce that they are protected by the Lanham Act. See generally 15 U.S.C. §§ 1051-1129. Consumers rely heavily on trademarks when making choices, so naturally producers of shoddy goods love to create confusion by infringing marks.

In suing, you must show (1) your mark is entitled to protection, and (2) the allegedly infringing use is likely to cause consumer confusion. Int’l Ass’n of Machinists and Aerospace Workers, AFL-CIO v. Winship Green Nursing Ctr., 103 F.3d 196,200 (1st Cir. 1996).

You get protection if your mark can function as a source-identifier of goods. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769 (1992). There is a spectrum of distinctiveness running from least to greatest: (1) generic, (2) descriptive, (3) suggestive, (4) arbitrary, or (5) fanciful. Id. At 768. Suggestive: COPPERTONE for sunscreen. (AGAINST THE GRAIN for a journal??). Arbitrary: APPLE for computers (Against the Grain with a tree??). Fanciful: EXXON for petroleum products.

Descriptive marks “convey an immediate idea of the ingredients, qualities or characteristics of the goods.” See Equine Techs., Inc. v. Equitechnology, Inc., 68 F.3d 542, 544 (1st Cir. 1995). SPORTS ILLUSTRATED pretty much tells you what you’ll find between the covers. But it doesn’t really identify the source of the product — Time-Life. Only when the title — dare I say — over time becomes distinct in the public mind as a particular publication of Time-Life does it have “acquired distinctiveness” or “secondary meaning” and receive trademark protection.

A generic term like “car” or “pizza” only tells what it is and not where it came from. See Colt Def. LLC v. Bushmaster Firearms, Inc., 486 F3d 701, 705 (1st Cir. 2007). You’d need DOMINO’S PIZZA for that. Which as you can see is taking us right into the issue of duck tours. The district court found “duck tours” was non-generic and Super Duck Tours would confuse the public.

Eight-Factor Pignons Test
Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482 (1st Cir. 1981) gives us an eight-factor test for …

Good grief! Surely you don’t expect me to go through all eight. Usually a three-prong test is too exhausting. And anyhow, what’s the point of this column if it isn’t abbreviated?

Strength of Boston Duck mark
The “strength” of the mark refers to its placement on the spectrum of distinctiveness.

See above.

The district court did not classify “duck tours” as descriptive, suggestive, or fanciful but simply said it was non-generic and could receive trademark protection. They arrived at this by going to the dictionary and looking up “duck,” which is sure enough generic. Then they looked up “tours.” Yep, generic. Then they put the two together and said “non-generic” descriptor of the offered service based on the tour — I’m not making this up — not involving duck watching or duck hunting.

In fact, two generic words can be put together and be just as generic as ever. See AmkCan Enters., Inc. v. Renzi, 32 F.3d 233, 234 (7th Cir. 1994) ( “yellow pages” generic for the business part of phone directory); American Express Co. v. Mastercard Int’l., 685 F. Supp. 76,78 (S.D.N.Y. 1988) (“gold card” generic for fancy credit card).

And also in fact, “duck tours” is generic for the amphibious sightseeing tours each company provides. Remember, a generic term is one whose impact on the consumer lies in telling the nature of the good and not its source.

Newspapers and the duck tour industry use the word generically in the same way they use “town trolley” or “harbor cruise.” Boston Duck’s Website notes that they did not originate the style of tour; it had been in existence for decades. Of the thirty-six companies worldwide that do this, thirty-two have “duck” in their company name. The public sees this as a product and not a source.

Super Duck could call their business “amphibious tours” but that would imply the boats rolled around on land part of the time. It would not describe the tour service the way the public sees it. See Bayer Co. v. United Drug Co., 272 F. 505, 511 (S.D.N.Y. 1921) (which found “Aspirin” generic because consumers couldn’t accept alternative names for the product).

If Boston Duck got exclusive rights to the term, it would create barriers to entry for other companies and limit competition. See Devan R. Desai & Sandra L. Rierson, Confronting the Genericism Conundrum, 28 Cardozo L. Rev. 1789, 1851 (2007).

So What About the Composite Mark?
The generic “duck tours” has been shoved together with “Boston” which is a weak descriptive term worthy of only minimal protection. Its strength comes from long years of operating in the area during which the company grew from four boats to twenty-four and served over 585,000 customers. So that makes it “reasonably strong” as an identifier of the source of the service.

But can consumers be confused with Super Duck? In the analysis, you drop the generic parts out – duck tours. “Boston” and “Super” both have two syllables, but they look and sound different. Consumer confusion has largely come out of Boston Duck being the sole provider in the market for so long.

And then there’s the two logos – ducks splashing in the water. Nearly every company in the world uses some version of a cartoon duck with water. This again is describing a service and not a source. See Lawrence v. P.E. Sharpless Co., 203 F. 762 (E.D. Pa. 1913) (finding the image of a cow descriptive for dairy products).

With logo as in word marks, “similarity is determined on the basis of the total effect of the designation, rather than a comparison of individual features.” Pignons, 657 F.2d at 487; See also Mcneil Nutritionals, LLC v. Heartland Sweetners, LLC, 511 F.3d 350, 359 (“[F]orceful and distinctive design features should be weighed more heavily because they are more likely to impact the overall impression.”).

Boston had a purple background, yellow cartoon duck, camouflage hat, duck flapping wings making water splash. Super had blue background, white cartoon duck shaped like an actual vehicle with passengers on it; duck in orange cape with powerful arms holding orange flag.

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