The United States Court of Appeals for the First Circuit recently handed down its decision in Boston Duck Tours LP v. Super Duck Tours LLC, 531 F.3d 1 (1st Cir. 2008), reversing the district court’s grant of a preliminary injunction because the district court applied the incorrect legal standard for determining that the phrase “duck tours” is not generic for sightseeing tours using amphibious vehicles -- vehicles that can function as both trucks and boats.

“Duck tours” using amphibious vehicles have become increasingly popular in many cities in the United States and abroad. Since 1994, Plaintiff Boston Duck has offered sightseeing tours of the Boston area and Charles River using amphibious vehicles. The term “duck” is derived from the term “Dukw”, which was used to designate certain amphibious vehicles used in the Second World War.

Boston Duck owns several state and federal trademark registrations for the composite word mark BOSTON DUCK TOURS, and for a composite design mark consisting of the company’s name together with a logo featuring the image of a cartoon duck splashing in water. Importantly, both of Boston Duck’s federal registrations were subject to disclaimers for the terms “duck” and “tours”, meaning that Boston Duck does not possess exclusive rights to use either term separately and apart from the composite marks as a whole.

Defendant Super Duck Tours began offering sightseeing tours using amphibious vehicles in 2001 in Maine and began its Boston operation in late 2006-early 2007. Super Duck owns a federal trademark registration for SUPER DUCK TOURS. That mark was registered on the Supplemental Register after the application for registration on the Principal Register was rejected in light of the merely descriptive nature of the mark.

In July 2007. Boston Duck filed a complaint in the district court against Super Duck alleging, inter alia, trademark infringement in violation of Lanham Act Section 32(1). In connection with its complaint, Boston Duck asked the court for a temporary restraining order and preliminary injunction to prevent Super Duck from using the “Duck Tours” term. The district court granted Boston Duck’s motion in part, finding the term “duck tours” to be non-generic for amphibious sightseeing tours in the Boston area, and therefore capable of trademark protection. Further, the district court concluded that Boston Duck had established a likelihood of confusion on the merits of its trademark infringement claim, and enjoined Super Duck from using the term “duck” in a two-word or three-word trademark in conjunction with either “Boston” or “tours.”

Super Duck appealed the district court’s grant of the preliminary injunction, arguing that the phrase “duck tours” and the image of a cartoon duck are generic for the services that both companies provide. Super Duck further argued that because of the district court’s error in inappropriately characterizing the “duck tours” term, the court gave undue weight to the term and the image of a cartoon duck when comparing the parties’ marks. As such, Super Duck argued that the district court improperly found a likelihood of confusion between the BOSTON DUCK TOURS and SUPER DUCK TOURS names.

To succeed on its claim for trademark infringement, the appeals court noted that it was necessary that Boston Duck first establish that its BOSTON DUCK TOURS and its duck design marks were entitled to trademark protection, and then for it to establish that the allegedly infringing use was likely to cause consumer confusion.

With respect to the protectability of the BOSTON DUCK TOURS mark, the starting point was whether the term “duck tours” was generic for amphibious vehicle tour services. A generic term such as “car” or “pizza” is one that does not have the capacity to serve as a source-identifier because it designates the class or “genus” of the goods or services. More specifically, generic terms are incapable of becoming trademarks because they serve primarily to describe products or services, rather than to identify the source of the products or services. The court’s goal in undertaking a genericism analysis is to assess the “‘primary significance’ of the phrase at issue ‘to the relevant public’.” In reaching a conclusion on this issue, courts are instructed to consider several factors, including: “(1) consumer surveys; (2) the use of the term in media publications; (3) use of the term by competitors in the industry; (4) purchaser testimony concerning the term; and (5) the plaintiff’s use of the term.”

The appeals court concluded that the district court erred in finding the “duck tours” phrase not generic because it had based its opinion on the dictionary definition of the term “duck”, which while relevant to the assessment of how the public viewed the term, was merely one of many factors that ought to have been considered. In reaching its conclusion, the appeals court ruled that the lower court had also improperly focused on the separate terms “duck” and “tours”, and not on the entire, combined phrase. By focusing exclusively on the individual elements of the phrase and each word’s respective dictionary definition, the district court had removed the inquiry from its proper context, thereby tainting the overall analysis. Moreover, the appeals court also concluded that the district court had failed to consider evidence in the record suggesting that the phrase “duck tour” was generic for the tour services at issue. Specifically, the appeals court found error in the failure of the district court to consider generic uses of the phrase by the media and other third parties; within the industry itself; and by the plaintiff itself.

Turning to the likelihood of confusion analysis, the appeals court concluded that there was no likelihood of confusion between the word marks BOSTON DUCK TOURS and SUPER DUCK TOURS. The appeals court analyzed the strength of the composite mark BOSTON DUCK TOURS and concluded that despite the generic nature of the “duck tours” element, the mark was reasonably strong in the Boston area as a result of the secondary meaning that the composite mark had acquired. Nonetheless, the court found that the only non-generic portions of the parties’ respective marks (BOSTON and SUPER) looked and sounded completely different; that these terms had different meanings; and that they each described different features of the parties’ products. Further, the court found that there was no evidence of bad faith on the part of the defendant. Interestingly, despite Boston Duck Tour’s allegations that actual confusion had in fact occurred -- evidence that in an ordinary trademark infringement context might even have been determinative -- the court of appeals looked the other way and found it to be “largely irrelevant”. This conclusion was based on the fact that the alleged confusion arose out of the use of the generic phrase “duck tours” and thus was not true trademark “confusion”.

Finally, the appeals court turned to the analysis of the parties’ composite design marks, both of which contained an image of a cartoon duck splashing in water. Unlike the composite word marks discussed above, the appeals court concluded that there was insufficient evidence to conclude that the image of a duck splashing in water was generic for duck tour services. Nonetheless, the appeals court concluded that the splashing duck images used by the parties were highly descriptive for the services provided, and thus that the image had weak source-identifying attributes. This fact, together with what the appeals court called “the designs’ overall dissimilarity” led the court to reverse the lower court’s conclusion that confusion was likely between the parties’ logos.