First Circuit Holds “Duck Tours” is a Generic Trademark

Thinking about registering a trademark?  Make sure you have a competent attorney doing your pre-registration trademark search and think about selecting a mark that is not widely used.  Using a widely used mark will likely welcome other users of the same mark.   Showing that generic trademarks can arise from abbreviations, the First Circuit Court of Appeals recently held that the phrase “duck tours,” when used in a composite mark in relation to boat tours, is generic and causes no likelihood of confusion.  This decision reversed the district court’s holding that the “Super Duck” trademark, in connection with boat tours in the Boston area, created a likelihood of confusion with the plaintiff’s “Boston Duck” mark. 

In defining a generic trademark, the court said:

Because they serve primarily to describe products rather than identify their sources, generic terms are incapable of becoming trademarks, at least in connection with the products that they designate. See Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 193-94 (1985). Awarding trademark rights to any user of the term, especially the first user, would harm competitors and consumers alike. Competitors unable to use a common term that describes or designates their product are at a significant disadvantage communicating to potential customers the nature and characteristics of the product. See Vanessa Bowman Pierce, If it Walks like a Duck and Quacks like a Duck, Shouldn’t it be a Duck?: How a "Functional" Approach Ameliorates the Discontinuity Between the "Primary Significance" Tests for Genericness and Secondary Meaning, 37 N.M. L. Rev. 147, 154 (2007). Likewise, consumers will be forced either to pay a higher price to purchase the desired goods from the seller who owns the generic term as a trademark or expend additional time investigating the alternative products available. Id. Therefore, in accord with the primary justifications for protecting trademarks — to aid competition and lower consumers’ search costs — the law does not grant any party exclusive rights to use generic terms as trademarks.  Boston Duck Tours, LP v. Super Duck Tours, LLC, Case Nos. 07-2078, 07-2246 (1st Cir. June 18, 2008).

Both companies used DUKWs (pronounced “ducks”) for their tour boat services, which were used in World War II as amphibious transport vehicles.  The First Circuit found that the district court erred when it relied on the dictionary definition of “duck” in analyzing “duck tours” instead of focusing on the relation between the phrase “duck tours” and the DUKWs with which it is associated.  In looking at the primary significance of the term to the general public, the district court erred in finding that the public would not bridge the gap and associate “duck” with the DUKW tours offered in the area.  The district court further erred by focusing on the individual components of the mark, “duck” and “tours,” instead of examining the mark as a whole.  In finding the term generic, the court looked to Boston Duck’s own generic use of “duck tours,” as well as generic uses of the phrase in the press.  Ultimately, the court found no likelihood of confusion between the two marks because the two marks were sufficiently dissimilar based on sight, sound, and meaning when analyzed without the generic terms (Super vs. Boston).