BOSTON —The First Circuit U.S. Court of Appeals held June 18 that a district court’s likelihood of confusion analysis incorrectly gave too much weight to an erroneous finding that the term “duck tour” is not generic (Boston Duck Tours LP v. Super Duck Tours LLC, Nos. 07-2078, 2246, 1st Cir.; 2008 U.S. App. LEXIS 12771).
As such, the preliminary injunction entered by U.S. Judge Nathaniel M. Groton of the District of Massachusetts barring defendant Super Duck Tours LLC from using the term “duck tours” — and from using “duck” or “ducks” in a two-word or three-word trademark in conjunction with “BOSTON” or “TOURS” in the Boston area — is subject to reversal.
Related Resources
Practice Area Research Materials
Access Case law, Codes, Shepard's® Citations, Secondary Sources and more, for 27 practice areas, for one day, one week or one or more months.
Practice Areas > Intellectual Property Law
Practice resources, codes and statutes, legal subject outlines and more from the Legal Web Site Directory.
Trademark Law Center
One of the dynamic, practice-specific communities featuring tailored multimedia content, the latest news and easy-access to the LexisNexis products and resources you need.
| |
“Because of the lack of adequate alternatives, ‘duck tours’ — the most common and accepted term to describe the services at issue — may not be appropriated for one party’s exclusive use. To grant (plaintiff) exclusive rights to use the phrase in the Boston area would be to erect a barrier of entry into the marketplace,” the court held.
Plaintiff Boston Duck Tours LP and defendant Super Duck each provide sightseeing tours of Boston by land and water using "Hydra Terra" amphibious vehicles. Boston Duck was founded in 1994 and filed a registration for the "Boston Duck Tours" trademark with the U.S. Patent and Trademark Office in 2002. Super Duck launched in Portland, Maine, in 2001; in 2006, Super Duck purchased New England Tours and began offering tours of Boston in May 2007.
After the PTO issued its trademark, Boston Duck sued Super Duck before Judge Groton for 11 counts, including trademark infringement, unfair competition, trademark dilution and intentional interference with business relations. Boston Duck moved for a temporary restraining order (TRO) and a preliminary injunction. After a hearing, the court denied the TRO motion and ordered an expedited briefing period. The court then granted a preliminary injunction, after finding that Boston Duck was likely to succeed in establishing a likelihood of confusion and that it had achieved secondary meaning.
The terms of the order forbade Super Duck from using the term "duck tours" of from using "duck" or "ducks" "in a two-word or three-word trademark in conjunction with either 'BOSTON' or 'TOURS'" in the Boston area. The injunction also precluded Super Duck's use of a cartoon duck trademark or service mark, which Super Duck appealed to the First Circuit.
Copyright 2008, LexisNexis, Division of Reed Elsevier Inc. All rights reserved.
