What — you’ve never seen a DUKW before?
Today the First Circuit plumbed the trademark law distinction between "generic" and "nongeneric" marks. It held that the district court clearly erred when it deemed the phrase "duck tours" nongeneric and so dissolved a preliminary injunction. Boston Duck Tours, LP v. Super Duck Tours, LLC, Nos. 07-2078 & 07-2246 (1st Cir. June 18, 2008).
Blawgletter concedes that the result seems obvious. Except that the duck tours didn’t involve walking around and gawking at waterfowl. No. It dealt instead with sightseeing on land, sea, lake, and river in an amphibious truck — a "DUKW" or "duck" (also magoo or old magoo).
In the 1990s, Boston Duck Tours started running tours in and around the Back Bay area of Boston. It used old DUKWs from the World War II and Korean War eras after spiffing them up. And it registered "BOSTON DUCK TOURS" and its cartoon-duck logo on the Principal Register at the U.S. Patent and Trademark Office, giving the marks a presumption of validity.
But the shadow of Super Duck Tours eventually fell. The Super Duck people, carpetbagging from Portland, Maine, began plying its amphibious trade along the Boston waterfront with custom Hydra-Terras — a newer and larger vehicle/vessel. Its ads (with a "super" duck cartoon logo) shouted: "It’s a bus! It’s a boat! It’s a Super Duck!"
Boston Duck sued Super Duck and got a preliminary injunction on the theory that "duck tours" infringed the Boston Duck Tours trademark. But the First Circuit reversed, holding that the phrase’s "generic" character made the "Boston Duck Tours" mark merely "descriptive" of the company’s services and thus entitled it to "weak" trademark protection. (Generic marks get no protection, and others receive varying degrees — from "descriptive" to "suggestive" to "arbitrary" to "fanciful".)
After reviewing several factors for determining whether Super Duck Tours infringed — including the mark’s weakness, actual consumer confusion, and Super Duck’s intent — the court held the district court clearly erred in finding the "likelihood of confusion" element of a trademark claim. The court also concluded that Boston Duck failed to show that it would likely succeed on its "design" trademark claim because, among other things, the parties’ cartoon-duck logos looked different.