Internet Trademark Case Summaries

Boston Duck Tours, LP v. Super Duck Tours, LLC

514 F. Supp. 2d 119 (D. Mass. 2007) (granting preliminary injunction), clarified by 2007 U.S. Dist. LEXIS 94681 (D. Mass. Dec. 5, 2007), , rev’d, 531 F.3d 1 (1st Cir. 2008)

Since 1994, plaintiff Boston Duck Tours operated land and water sightseeing services in Boston on brightly-painted amphibious World War II vehicles then known as DUKWs, under the federally registered marks BOSTON DUCK TOURS and a logo depicting a cartoon duck splashing in water. Defendant Super Duck Tours provided similar sightseeing services since 1991 in Portland, Maine on brightly-painted, cartoon duck-adorned, modern amphibious vehicles called Hydra-Terras. In 2003, defendant began to expand into the Boston market by purchasing another tour company, acquiring the necessary permits and licensing, and contracting with a broker to sell the tours. In May 2007, defendant launched its first tour in Boston under the mark SUPER DUCK TOURS. In July 2007, plaintiff sued defendant for trademark infringement, among other claims, and moved for a preliminary injunction against defendant’s use of the SUPER DUCK TOURS mark and its cartoon duck logo. The court granted plaintiff’s preliminary injunction. The court initially found that plaintiff owned protected marks in BOSTON DUCK TOURS and the cartoon duck logo. The court next analyzed the likelihood-of-confusion factors, and held that plaintiff was likely to succeed on its infringement claim because: (1) the overall effect of the parties’ respective word marks and logos were sufficiently similar, (2) both parties offered virtually identical services, (3) both parties marketed and advertised their services through identical channels, (4) plaintiff offered actual confusion evidence of at least 30 customers who called its customer service line within two months after defendant began operations and believed the two companies were the same, and (5) defendant’s intent was “suspect,” as it must have been aware of plaintiff’s success when it entered the Boston market offering a similar service under marks and logos nearly identical to plaintiff’s. Finally, the court rejected defendant’s argument that DUCK TOURS was a generic term for amphibious sightseeing tours. It held that “duck tours” did not describe a broad, general category of services that involved ducks in any way, but rather played on the term for World War II vehicles DUKWs that plaintiff used. The court did not decide whether DUCK TOURS was descriptive, suggestive, or arbitrary, noting that even if descriptive, plaintiff had shown sufficient secondary meaning evidence based on its use of the mark for 13 years. The court next held that the factors of irreparable harm, the balance of harms, and the public interest all weighed in plaintiff’s favor. Plaintiff’s decision to not file suit until defendant actually operated tours in Boston, despite its knowledge years earlier of defendant’s obvious intentions to enter that market, was not unreasonable because it filed within months of when actual consumer confusion started. Further, because defendant had been in operation for only two months, it would not suffer substantial harm. The court thus enjoined defendant from “using the term DUCK TOURS or a cartoon duck as a trademark or service mark in association with its sightseeing tour service in the greater Boston Area.” The court did not enjoin defendant from all use of the term “DUCK(S)” in its mark, but only from use of the word “DUCK” or “DUCKS” in a two-word or three-word trademark in conjunction with either “BOSTON” or “TOURS.”

After issuance of the preliminary injunction, defendant, then renamed SUPER DUCK EXCURSIONS, filed a motion asking whether its continued purchase of the term “boston duck tours” as a search engine keyword under Google’s “sponsored link” advertising program violated the injunction. The court first addressed whether such advertising was a “use” of plaintiff’s mark under the Lanham Act. Relying on the definition of “use” in 15 U.S.C. §1127, the court found that “any use ‘in the advertising of services’ is deemed to be ‘use’ for purposes of determining liability,” and thus held that defendant’s actions constituted “use in advertising.” Noting that courts are split on the question of whether keyword advertising constitutes trademark use, the court sided with the “the emerging view outside of the Second Circuit [that] is in accord with the plain language of the statute. Because sponsored linking necessarily entails the ‘use’ of plaintiff’s mark as part of a mechanism of advertising, it is ‘use’ for Lanham Act purposes.” The court next addressed whether this use violated the injunction. It initially held that its injunction against “use as a trademark” was intended to prevent “any future infringement of the plaintiff’s mark” and “to compel the defendant to adopt a new, non-confusing trademark,” but it was not intended to prohibit all “secondary uses” of plaintiff’s mark. Because defendant adopted a new name, and the sponsored link advertising “distinguished the defendant from plaintiff,” the court found that consumer confusion “was likely diminished rather than increased.” Accordingly, defendant’s sponsored links did not violate the preliminary injunction.

On appeal, the First Circuit reversed the district court’s preliminary injunction and held that the phrase “duck tours” was generic and not entitled to trademark protection. The court criticized the lower court’s reliance “on one dictionary definition of ‘duck’” in determining the public significance of the phrase “duck tours” and stated that the following additional evidence of generic use of the “duck tours” phrase should have been considered: (1) “articles in the media … that use the phrase ‘duck tours’ generically to refer to amphibious sightseeing tours,” (2) widespread, generic use of ‘duck’ and ‘duck tours’ by companies around the country that provide the same amphibious sight-seeing services, and (3) plaintiff’s own generic use, which included statements on its website that “the unique idea of a [d]uck [t]our did not originate in Boston.” Although the court noted the existence of alternative terms such as “amphibious tours,” none were widely adopted in the industry and none “describe[d] the services accurately and concisely.” The court rejected plaintiffs evidence of actual marketplace consumer confusion attributing it to “Boston Duck’s status as the exclusive purveyor of amphibious tours in the Boston area for the past decade,” and not to any source-identifying attributes of the phrase ‘duck tours.’ Moreover, the court viewed several federal trademark registrations that did not disclaim ‘duck tour’ as a generic phrase as unpersuasive because PTO disclaimers are discretionary and “merely a single piece of evidence in the . . . overall genericism analysis.” Finally, although defendant’s prior arguments before the PTO against finding the phrase “duck tour” generic may weigh against it now, they did not preclude or estop defendant from later presenting the contrary argument. With the strength-of-plaintiff’s mark analysis now favoring defendant, the court revisited the remaining likelihood-of-confusion factors. Although the similarity of services, channels of trade, advertising practices, and prospective purchasers factors all favored plaintiff, the court ruled that plaintiff failed to establish a likelihood of confusion because the two marks were “reasonably, although not completely, dissimilar given the differences in the nongeneric portions of the parties’ marks―”Boston” and “Super.” The court deemed plaintiff’s evidence of actual confusion as irrelevant due to its exclusive use of the now-generic “duck tour” mark around Boston during the past decade. Finally, this court saw nothing “suspect” in defendant’s adoption of the now-generic “duck tours” phrase as part of its mark, stating that while “[defendant] benefitted to some degree from [plaintiff] introducing the Boston population to the duck tour product, these effects are natural consequences of having competition in the marketplace.” The appeals court reached the same conclusion of no likelihood of confusion regarding the parties’ composite design marks. Although it found plaintiff’s logo non-generic and “reasonably strong,” it viewed the two logos as “substantially dissimilar” based on the different colors, fonts, and design elements used in them. The court thus reversed the preliminary injunction against defendant and remanded the case to the district court.